The Complainant is Calvin Klein Trademark Trust and Calvin Klein, Inc. of New York, New York, United States of America (“United States”), represented by Kestenberg Siegal Lipkus LLP, Canada.
The Respondent is Haoyue Zhang of Shanghai, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Go France Domains, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2016. On December 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 20, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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, and the proceedings commenced on January 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 31, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 1, 2017.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on February 10, 2017. 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.
The language of the proceeding is English. 4. Factual Background
The Complainant is Calvin Klein Trademark Trust, a Business Trust organized under the laws of Delaware. Calvin Klein Trademark Trust is the registered owner of the CALVIN KLEIN trademarks that are the subject matter of this UDRP proceeding. Calvin Klein Inc. is the beneficial owner of the trademarks owned by Calvin Klein Trademark Trust. Calvin Klein Trademark Trust and Calvin Klein Inc. will be collectively referred to hereinafter as the “Complainant”.
The Complainant has been engaged in the production, sale and licensing of men’s and women’s apparel, fragrances, accessories, and footwear, among other things, all in association with one or more of the Calvin Klein Intellectual Properties. Since its formation, the Complainant has used and registered several of its marks in the United States and throughout the world.
The Complainant has proven to be the owner of the renowned CALVIN KLEIN mark which enjoys protection through many registrations worldwide.
The Complainant is inter alia the owner of the following trademarks:
CALVIN KLEIN (device), US registration No 1,633,261, Registered on January 29, 1991;
CALVIN KLEIN, US registration No. 1,086,041, Registered February 21, 1978.
The Complainant is also the owner of numerous domain names containing and/or consisting of the CALVIN KLEIN trademark, including registered on June 9, 1997, registered on January 23, 2005, registered on March 23, 1999 and registered on May 16, 2005.
The disputed domain name was registered by the Respondent on September 26, 2016.
The Complainant’s trademark registrations predate the registration of the disputed domain name.
The disputed domain name redirects to a page where the sole message “website soon available” is displayed. 5. Parties’ Contentions A. Complainant
The Complainant claims that the disputed domain name is identical to the Complainant’s CALVIN KLEIN registered trademarks; that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name; and that the Respondent registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Procedural Matter
The Complaint has been submitted in English and the Complainant has requested that the language of the proceeding be English. The Complainant has also provided supporting arguments.
The Panel notes that the concerned Registrar has confirmed that the Registration Agreement in this case is in English. Consequently, the language of the proceeding is English.
There is therefore no need to evaluate the arguments provided by the Complainant in support of their request. 6.2 Substantive Matter
In order for the Complainant to obtain the transfer of the disputed domain name, paragraphs 4(a)(i) – (iii) of the Policy require that the Complainant must demonstrate to the Panel that:
(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
The Complainant has established rights in the CALVIN KLEIN trademark. The disputed domain name is clearly identical to the Complainant’s CALVIN KLEIN trademark save for the “.shop” Top-Level Domain.
UDRP panels have generally disregarded the generic Top-Level Domain (“gTLD”) suffix under the confusing similarity test for purposes of the Policy.
If the gTLD suffix from the disputed domain name is removed, the Panel finds that the disputed domain name is identical to the Complainant’s CALVIN KLEIN trademark.
Therefore, the Panel finds the disputed domain name to be confusingly similar to the trademark CALVIN KLEIN in which the Complainant has rights.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
This Panel finds that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent has no connection or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademark. The Respondent does not appear to engage in any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services for the reasons described in section 6.2.C below. In addition, the Respondent does not appear to be commonly known by the disputed domain name or by a similar name. Moreover, the Respondent has not replied to the Complainant’s contentions, claiming any rights or legitimate interests in the disputed domain name.
Finally, this Panel agrees with the previous panel’s finding in Calvin Klein Trademark Trust and Calvin Klein Inc. v. Wang Yanchao,WIPO Case No. D2014-1413, that “the Complainant and its CALVIN KLEIN marks enjoy a widespread reputation and high degree of recognition as a result of its fame and notoriety in connection with men’s and women’s apparel, fragrances, accessories, and footwear products and is a registered trademark in many countries all over the world. Consequently, in the absence of contrary evidence from the Respondent, the CALVIN KLEIN marks [are] not one[s] that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant”.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Considering that the Complainant’s trademark is a renowned trademark that has been registered and used for many decades and thus long predates the disputed domain name’s registration, and in the absence of contrary evidence, the Panel finds that the Respondent knew of the Complainant’s trademarks and deliberately intended to create an association with the Complainant and its business; that the Respondent must have had actual knowledge of the Complainant’s trademarks at the time of the registration of the disputed domain name.
In fact, this Panel shares the opinion with the panel in the Calvin Klein Trademark Trust and Calvin Klein Inc. v. Wang Yanchao, supra, that “the Complainant and its CALVIN KLEIN marks enjoy a widespread reputation and high degree of recognition … omissis. Consequently, in the absence of contrary evidence from the Respondent, the CALVIN KLEIN marks [are] not one[s] that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant”.
In addition, owing to the fact that the Respondent has not denied the assertions of bad faith made by the Complainant in this proceeding, it is reasonable to assume that if the Respondent had legitimate purposes for registering and using the disputed domain name he would have at least indicated them.
The Panel finds that the passive holding of the disputed domain name is further evidence of bad faith registration and use.
The Panel finds that based on the record, the Complainant has demonstrated the Respondent’s bad faith pursuant to paragraph 4(a)(iii) 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.
Fabrizio Bedarida
Sole Panelist
Date: February 17, 2017
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