The Complainants are Calvin Klein Trademark Trust (“First Complainant”) and Calvin Klein Inc. (“Second Complainant”), both of New York, New York, United States of America (“United States”), represented by Kestenberg Siegal Lipkus LLP, Canada.
The Respondent is Private Registration, WhoisGuardS of Nanjing, Jiangsu, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Nanjing Imperiosus Technology Co. Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2016. The next day the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 30, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing its contact details but without disclosing the identity of the underlying registrant. On September 2, 2016, the Center transmitted to the Parties by email in both English and Chinese a request for comment on the language of the proceeding. On the same day the Complainant provided a Chinese translation of the Complaint and reiterated its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint in both English and Chinese, and the proceedings commenced on September 9, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 29, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 30, 2016.
The Center appointed Matthew Kennedy as the sole panelist in this matter on October 7, 2016. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainants produce, sell and license men’s and women’s apparel, fragrances, accessories, footwear and other goods. The First Complainant is the registered owner of multiple trademarks including United States trademark registration no. 1,086,041 for CALVIN KLEIN, registered on February 21, 1978, and Chinese trademark registration no. 1,681,239 for CALVIN KLEIN in a particular script, registered on December 14, 2001. These trademark registrations specify goods including certain types of apparel in class 25. The Complainants operate a number of websites at domain names including , , and , where they provide information and offer products for sale.
The Respondent, a privacy shield, is the WhoIs-listed registrant of record for the disputed domain name. The identity of the underlying registrant was not disclosed in this proceeding by the Registrar. The disputed domain name was registered on May 3, 2011. The disputed domain name resolves to different websites, one of which displays a message purportedly from Google Chrome inviting Internet users to complete a survey and offering chances “to become an instant millionaire FOR JUST $1!”. Another website to which the disputed domain name resolves displays sponsored links allegedly regarding online registration, the Complainant’s products and other products. 5. Parties’ Contentions A. Complainants
The disputed domain name is confusingly similar to the Complainants’ CALVIN KLEIN trademark. The disputed domain name incorporates that trademark but changes the order of the “a” and the “l” in “calvin”, which constitutes so-called “typosquatting”. The addition of the term “preferred” adds to the confusion because the Complainants have an email subscriber program titled the “Calvin Klein Preferred Program”.
The Respondent has no rights or legitimate interests in the disputed domain name. The disputed domain name was registered more than 30 years after the Complainants’ first use their marks, which have been well known and famous for many years. The Respondent is using the disputed domain name as a malicious scam and to divert users to pay-per-click websites which is not a bona fide offering of goods or services. The Respondent is not commonly known by the disputed domain name. The Complainants have not authorized or licensed the Respondent to use or register a domain name that incorporates their CALVIN KLEIN trademark.
The Respondent registered and is using the disputed domain name in bad faith. The disputed domain name diverts the Complainants’ customers or potential customers to a scam website that is used to obtain personal information and credit card numbers and install malicious software, or to pay-per-click websites or to websites that contain links to sites selling underwear, bags, shoes and perfume, depending on the IP address of the device used to access the disputed domain name. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings 6.1 Multiple Complainants
The Complaint was filed by two complainants against a single respondent. The First Complainant is the registered owner of the trademarks at issue while the Second Complainant is the beneficial owner and uses the trademarks on a variety of merchandise. The Panel finds that they have a common grievance against the Respondent and that it is efficient to permit the consolidation of their complaints. Therefore, the Complainants are referred to below collectively as “the Complainant” except as otherwise indicated. 6.2 Language of the Proceeding
Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.
The Complainant requests that the language of the proceeding be English. Its argument is that the disputed domain name resolves to a website in English. The Respondent did not comment on the language of the proceeding.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding takes place with due expedition. Prior UDRP panels have noted that the choice of the language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293.
The Panel observes that the Complaint in this proceeding was filed in English, with a Chinese translation. Communications from the Center to the Parties, including the Notification of Complaint, have been sent in both Chinese and English. The Panel notes that the websites to which the disputed domain name resolves are partly or wholly in English, from which it can be deduced that the Respondent is able to communicate in that language. Further, the Respondent has not expressed any interest in responding to the Complaint or participating in this proceeding in any other way.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. 6.3 Analysis and Findings
The Respondent’s failure to file a formal Response does not automatically result in a decision in favor of the Complainant. Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Complainant has rights in the CALVIN KLEIN trademark.
The disputed domain name incorporates the Complainant’s trademark with only one minor difference. That difference is that the disputed domain name reverses the sequence of the second and third letters of the trademark. This is an obvious misspelling of the Complainant’s trademark, which is the dominant element of the disputed domain name, a practice commonly known as “typosquatting”. Therefore, the Panel does not consider this typographical difference capable of dispelling confusing similarity with the Complainant’s trademark. See Wachovia Corporation v. Peter Carrington,WIPO Case No. D2002-0775; Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator,WIPO Case No. D2008-1302.
The disputed domain name includes two additional elements. One is the word “preferred” but that is merely a dictionary word. A dictionary word is not sufficient to dispel the confusing similarity of the disputed domain name to the Complainant’s trademark. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110. The other additional element is the generic Top-Level Domain (“gTLD”) suffix “.com”. A gTLD suffix generally has no capacity to dispel any confusing similarity of a domain name with a trademark either. See Lego Juris A/S v. Chen Yong,WIPO Case No. D2009-1611; Dr. Ing. H.c. F. Porsche AG v. zhanglei,WIPO Case No. D2014-0080. Consequently, the misspelt Complainant’s trademark is the dominant and only distinctive element of the disputed domain name.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the Respondent has] acquired no trademark or service mark rights; or
(iii) [the Respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel has already found that the disputed domain name is confusingly similar to the Complainant’s CALVIN KLEIN trademark. The Complainant submits that it has not authorized or licensed the Respondent to use or register a domain name that incorporates that trademark. Yet the disputed domain name variously resolves to a website that seeks to mislead users into disclosing information or to a landing page that displays sponsored links, at least some of which are unrelated to the Complainant’s products. Neither use constitutes a bona fide offering of goods or services for the purposes of the Policy, nor a legitimate noncommercial or fair use. Therefore, the Panel does not find that the Respondent has any rights or legitimate interests in the disputed domain name within the meaning of the first and third circumstances of paragraph 4(c) of the Policy.
There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy.
Based on the above, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent did not rebut that case because it did not file a Response.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:
“(iv) by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] website or location or of a product or service on [the Respondent’s] website or location.”
The Respondent registered the disputed domain name in 2011, many years after the Complainant obtained its CALVIN KLEIN trademark registrations, including in China where the Respondent is located. The disputed domain name incorporates the Complainant’s CALVIN KLEIN trademark, albeit with a minor typographical error. The disputed domain name includes the additional element “preferred” which indicates an awareness of the Complainant’s email subscriber program titled the “Calvin Klein Preferred Program”. One of the websites to which the disputed domain name resolves displays links that combine the Complainant’s CALVIN KLEIN trademark with the types of products that the Complainant produces, sells and licenses, such as underwear, perfume and shoes. This all indicates to the Panel that the Respondent was aware of the Complainant, its products and its CALVIN KLEIN trademark at the time that it registered the disputed domain name and that it chose to register that trademark as part of the disputed domain name in bad faith.
The Respondent uses the disputed domain name, which is confusingly similar to the Complainant’s CALVIN KLEIN trademark, in connection with a website that seeks to mislead users into disclosing information or to attract Internet users to a webpage that displays sponsored links, at least some of which are unrelated to the Complainant’s products. Given these circumstances, the Panel considers that this use of the disputed domain name intentionally attempts to attract, for commercial gain, Internet users to the websites by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or of the products on linked websites.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Matthew Kennedy
Sole Panelist
Date: October 9, 2016
Full & Egal Universal Law Academy