The Complainants are Calvin Klein Trademark Trust and Calvin Klein Inc. of New York City, New York, United States of America (“United States”), represented by Kestenberg Siegal Lipkus LLP, Canada.
The Respondent is Huang Wei Jia (黄蔚佳) of Shanghai, China. 2. The Domain Names and Registrar
The disputed domain names , , , are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (the “Registrar”). 3. Procedural History
The Complaint was filed in English and Chinese with the WIPO Arbitration and Mediation Center (the “Center”) on June 20, 2017. On June 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 22, 2017, 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 Respondent sent email communications in Chinese to the Center on June 23, 2017, including a request of Chinese be the language of the proceeding. On June 27, 2017, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested English be the language of the proceeding on June 27, 2017. The Respondent requested for a model Response in Chinese on June 24 and 27, 2017. In response to a request of amendment by the Center, the Complainant filed an amended Complaint in English and Chinese (the translation was done by Google Translate) on June 27, 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 July 5, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 25, 2017.
The Response was filed with the Center on June 28, 2017 (before the proceedings formally commenced). On July 3, 2017, the Complainant filed an unsolicited Supplemental Filing in English and Chinese. The Respondent responded on the same day. After the proceedings formally commenced the Respondent asked the Center if it should file a new Response. The Center requested Respondent’s Confirmation that the Response was final and the Respondent answered making reference to another case involving the Complainant.
The Center appointed Douglas Clark as the sole panelist in this matter on August 1, 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 has numerous registrations in other countries, including in China (registration no. 1,681,239) (collectively, the “CALVIN KLEIN Mark”).
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 Respondent registered the disputed domain names on May 27, 2017 and June 1, 2017. The disputed domain names resolve to pages offering the disputed domain names for sale. 5. Parties’ Contentions A. Complainant
Identical or confusingly similar
The Complainant argues that the disputed domain names are made up of the registered trademark CALVIN KLEIN with in two cases, the letters “ck”, an abbreviation for Calvin Klein, or the generic terms “jeans”. Three of the disputed domain names are combined with the generic Top-Level Domain (“gTLD”) “我爱你”, which means “I love you” in Chinese. One domain name is combined with the gTLD “.vip”. They are, therefore, confusingly similar to the Complainant’s registered trademark CALVIN KLEIN.
No rights or legitimate interests
The Complainant submits the Respondent has no connection with the Complainant or any of its affiliates and is not commonly known by the disputed domain names. It is not using the disputed domain names for bona fide offerings of goods or services.
Registered and used in bad faith
The Complainant submits that there is no plausible or contemplated use for the disputed domain names that would not lead to confusion by internet users. All the disputed domain names incorporate CALVIN KLEIN. Consumers will think there is some link with the Complainant. The Complainant served a cease and desist letter to the Respondent on or about June 1, 2017 and the Respondent registered the disputed domain names , and after the letter was sent, showing the Respondent clearly knew what it was doing in registering above mentioned disputed domain names. Further, the Respondent has offered to sell the disputed domain names to the Complainant for RMB1 750,000, which is far in excess of out-of-pocket expenses. B. Respondent
The Respondent’s responses may be summarised as follows:
1. The Complainant has been seeking to put unfair pressure of the Respondent to transfer the disputed domain names.
2. The Complainant did not register the disputed domain names itself, and should be deemed to have abandoned its rights to register them.
3. The Respondent has not registered a “.com” domain name but a general domain name.
4. The domain names have not been used for business, for profit and have not infringed. They have not been used to sell products and are being owned legally.
5. International trademarks have 38 classes. Calvin Klein cannot, based on registration in one class, claim a monopoly for all classes. Klein means dwarf. Can Apple Inc prevent all uses of apple?
6. Calvinklein.我爱你 means “I love Calvin Klein”. What is the reason for this infringing? If this is the case, “I love god” and “I love you” should also be prohibited.
7. The Complainant offered to buy the disputed domain names from the Respondent. This shows Complainant acknowledged the Respondent was the lawful owner.
8. In an initial email the Respondent claimed to have registered the disputed domain names to commemorate a friend with the same name, but provided no details of the friend. 6. Discussion and Findings Procedural Issues 6.1 Language of proceedings
The Complainant requested the language of proceedings be English because, the domain name is in the English language, and one of the gTLD’s is in English. The Complainant filed a Google Translate translation of the Amended Complaint. Its Supplemental Submission was filed in English and Chinese.
The Respondent requested the language of proceedings be Chinese, but nevertheless filed a Response and Supplemental submission indicating it clearly understood the Complaint. (The Panel makes no finding in this case if it is sufficient to file a machine translation of a Complaint as was done here.)
Given the pleadings have all been filed and each party has understood the other party’s submissions, the Panel will accept the various pleadings in English and Chinese. It will render its decision in English. 6.2 Supplemental Submissions
In general, supplemental submissions are discouraged, see section 4.6 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). However, in the circumstances of this case and so both parties may feel their submissions have been considered in full, the panel will accept and has considered the submissions. 6.3 Substantive Decision A. Identical or Confusingly Similar
The disputed domain names are made up of the registered trademark CALVINKLEIN and “ck” or “jeans” and the gTLDs “我爱你” or “.vip”. The disputed domain names are therefore confusingly similar to the trademark CALVIN KLEIN.
The Panel notes the Respondent’s submission that the Complainant should not be able to claim protection because it has a registration in one class, when there are multiple classes in which trademarks may be registered. The ownership of a trademark is generally considered to be a threshold standing issue. The location of the trademark, its date of registration (or first use) and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP. These factors may however bear on a panel’s further substantive determination under the second and third elements. (See section 1.1.2 of WIPO Overview 3.0).
The first element of the paragraph 4(a) of the Policy is therefore satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out ways in which a respondent may establish it has rights and legitimate interests. These are:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent has not presented any evidence to establish rights or legitimate interests under these heads. The Respondent claimed to have registered the disputed domain names to commemorate a friend of the same name, but gave not details of that friend. Without any evidence to support this assertion, it cannot establish rights or legitimate interests.
The Respondent claims that the Complainant cannot have a complete monopoly on the use of CALVIN KLEIN. However, this also does not give the Respondent any rights or legitimate interests.
The Respondent also claims that the Complainant has abandoned its rights because it has not sought to register the disputed domain names. This does not give the Respondent any rights or legitimate interests. It is financially and administratively impossible for a right holder to register every possible variation of their trademarks as domain names. The mere fact they have not registered a domain name cannot mean they have abandoned their right to it. Similarly, the fact that a trademark registrant seeks to recover a domain name by making an offer to buy the domain name for a nominal amount reflecting out-of-pocket expenses does not indicate trademark owner recognizes the rights of the owner of the domain name. They are simply seeking to resolve the matter as expeditiously as possible.
The panel, therefore, finds the Respondent has no rights and legitimate interests in the disputed domain names.
The second element of paragraph 4(a) of the Policy is therefore satisfied. C. Registered and Used in Bad Faith
The Panel finds that the disputed domain names were registered in bad faith and are being used in bad faith.
The Respondent does not deny its knowledge of the Complainant. It is offering to sell the disputed domain names on-line and offered to sell the disputed domain names to the Complainant for RMB 1,750,000 (about USD 250,000).
This case falls with paragraph 4(b)(i) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name”.
RMB 1,750,000 is clearly more than the Respondent’s out-of-pocket expenses in registering the disputed domain names.
Further, this case clearly falls with Paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The fact the disputed domain names do not currently resolve to any pages offering goods or services does not preclude a finding that they have been used in bad faith. It is well established that passive use or non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding. (WIPO Overview 3.0, section 3.3).
The third element of the paragraph 4(a) of the Policy is therefore satisfied. 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 names, , , and be transferred to the Complainant Calvin Klein Inc.
Douglas Clark
Sole Panelist
Date: August 18, 2017
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