The Complainants are Calvin Klein Inc. and Calvin Klein Trademark Trust of New York, New York, United States of America (“United States”), represented by Kestenberg Siegal Lipkus LLP, Canada. For purposes of this decision, the Complainants are hereinafter referred to as the “Complainant”.
The Respondent is Oneandone Private Registration / Ethan Croft of Alamo, California, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with 1&1 Internet SE (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 9, 2017. On February 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 14, 2017 and February 18, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 20, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 22, 2017.
The Center verified that the Complaint together with the amended 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 February 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 16, 2017. The Center received an email communication from the Respondent on March 16, 2017, in which he stated that he was not interested in selling the Disputed Domain Name. The Center received an additional email from the Respondent on March 27, 2017, 11 days after the Response was due, in which the Respondent asked why he was receiving communications about the proceeding.
The Center appointed Lynda M. Braun as the sole panelist in this matter on March 27, 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. 4. Factual Background
The Complainant is engaged in the production, sale and licensing of men’s and women’s fragrances, accessories, and footwear, among other things, under various CALVIN KLEIN trademarks. The Complainant has used the CALVIN KLEIN trademark continuously since 1968. The Complainant owns valid and subsisting trademarks on the Principal Register of the United States Patent and Trademark Office, including United States Reg. No. 1,086,041, registered on February 21, 1978, and United States Reg. No. 1,633,261, registered on January 29, 1991. In addition, the Complainant owns 43 other registered trademarks for the CALVIN KLEIN trademarks and related marks in the United States (collectively, the “CALVIN KLEIN Mark”).
Moreover, the Complainant owns numerous domain names incorporating the CALVIN KLEIN Mark, such as , , , and . The Complainant has used and continues to use these domain names in connection with various websites that provide information about the Complainant’s products and services. The Complainant has expended a great deal of time, effort and money advertising, promoting and marketing its products, resulting in billions of dollars of sales worldwide. Thus, the CALVIN KLEIN Mark has become famous in connection with the Complainant’s goods.
The Respondent registered the Disputed Domain Name on December 2, 2016. The Disputed Domain Name resolves to an inactive web page.
On December 16, 2016, the Complainant sent a cease-and-desist letter to the Respondent, demanding that the Respondent cease using the Complainant’s CALVIN KLEIN Mark and transfer the Disputed Domain Name to the Complainant. The Complainant received no reply to that letter. 5. Parties’ Contentions A. Complainant
The following are the Complainant’s contentions:
- The Disputed Domain Name is confusingly similar to the Complainant’s CALVIN KLEIN Mark.
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- The Respondent registered and is using the Disputed Domain Name in bad faith.
- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy. B. Respondent
In reply to the Center’s formal notification of the Complaint, the Respondent stated that he is “currently not interested in selling [his] domain.” He subsequently asked “who are you and why am I getting messages from you?” to which the Center replied, referring the Respondent to the Center’s notification of the Complaint. The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name was registered and is being used in bad faith. A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
It is uncontroverted that the Complainant has established rights in the CALVIN KLEIN Mark based on longstanding use as well as its trademark registrations for the CALVIN KLEIN Mark in the United States. The Disputed Domain Name consists of the CALVIN KLEIN Mark in its entirety along with the descriptive term “model”, followed by the generic Top-Level Domain (“gTLD”) “.com”. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a descriptive or generic word. See AllianzGlobalInvestorsofAmerica, L.P. andPacificInvestmentManagementCompany (PIMCO) v. Bingo-Bongo,WIPO Case No. D2011-0795; see also Hoffmann-LaRoche, Inc. v. Wei-ChunHsia,WIPO Case No. D2008-0923.
Finally, the addition of a gTLD such as “.com” in a domain name may be technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See ProactivaMedioAmbiente, S.A. v. Proactiva,WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a primafacie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a primafacie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
In this case, the Panel finds that the Complainant has made out a primafacie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s primafacie case. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its CALVIN KLEIN Mark, nor does the Complainant have any type of business relationship with the Respondent. Finally, the name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights.
Accordingly, the second element of paragraph 4(a) has been met by the Complainant. C. Registered and Used in Bad Faith
This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.
First, bad faith may be found where the Respondent knew or should have known of the Complainant’s registration and use of the CALVIN KLEIN Mark prior to registering the Disputed Domain Name. See FaçonnableSASv. Names4sale,WIPO Case No. D2001-1365. Such is true in the present case in which the Respondent registered the Disputed Domain Name long after the Complainant obtained its trademark registrations for the CALVIN KLEIN Mark in the United States. The fame of the CALVIN KLEIN Mark makes it disingenuous for the Respondent to claim that he was unaware that the registration of the Disputed Domain Name would violate the Complainant’s rights. See Expedia, Inc. v. EuropeanTravelNetwork,WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights in the complainant’s trademarks).
Second, the Respondent’s registration of the Disputed Domain Name that is confusingly similar to the Complainant’s well-known trademark is sufficient evidence of bad faith registration and use. See EbayInc. v. Wangming,WIPO Case No. D2006-1107; VeuveClicquotPonsardin, MaisonFondéeen 1772 v. ThePolygenixGroupCo.,WIPO Case No. D2000-0163 (use of a name connected with such a well-known service and product by someone with no connection to the service and product suggests opportunistic bad faith).
Third, the Respondent’s bad faith can be inferred from its lack of reply to the cease-and-desist letter sent by the Complainant to the Respondent prior to commencing this proceeding. See Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications,WIPO Case No. D2001-0210.
Finally, inactive or passive holding of the Disputed Domain Name by the Respondent may amount to bad faith use. See AdvanceMagazinePublishersInc. andLesPublicationsCondéNastS.A. vChinaV,WIPO Case No. D2005-0615; Sociétépourl’OeuvreetlaMémoired’AntoinedeSaintExupéry – SuccessionSaintExupéry – D’Agayv. PerlegosProperties,WIPO Case No. D2005-1085. It has long been held in UDRP decisions that the passive holding of a domain name that incorporates a well-known trademark without a legitimate Internet purpose may indicate that the Disputed Domain Name is being used in bad faith under paragraph 4(a)(iii) of the Policy. See TelstraCorporationLimitedv. NuclearMarshmallows,WIPO Case No. D2000-0003; JupitersLimitedv. AaronHall,WIPO Case No. D2000-0574. Here the Panel has considered and found bad faith use by the Respondent due to the passive holding of the Disputed Domain Name, for the following reasons, namely:
(i) the CALVIN KLEIN Mark has a strong reputation and is widely known, and the registration and use of such a well-known trademark by the Respondent with no connection to the trademark owner and no authorization nor legitimate right to use the trademark is a strong indication of bad faith;
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the Disputed Domain Name; and
(iii) the Respondent has taken active steps to conceal its true identity by operating under a name that is not a registered business name.
Accordingly, the third element of paragraph 4(a) has been met by the Complainant. 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.
Lynda M. Braun
Sole Panelist
Date: April 4, 2017
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