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 Musa Kaya of Merkez, Turkey, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2017. On October 26, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 27, 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 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 November 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 26, 2017. On November 7, 2017, the Respondent submitted an email indicating that it would like to work with the Complainant. Accordingly, the Center informed the Parties that if they wish to explore settlement options, the Complainant should submit a request for suspension by November 14, 2017. On November 9, 2017, the Complainant confirmed that it will not settle with the Respondent. On November 10, 2017, the Respondent submitted an email indicating that it has rights in the disputed domain name. On November 27, 2017, the Center informed the Parties of the commencement of the panel appointment process. On the same day, the Respondent submitted a further email indicating that it would like to sell the Complainant’s original products at the disputed domain name.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on December 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 advertising of men’s and women’s apparel, fragrances, accessories and footwear, all in association with the CALVIN KLEIN trademark.
The Complainant is the owner of several trademark registrations amongst which is the United States trademark Registration No. 1,086,041 for the word mark CALVIN KLEIN, registered on February 21, 1978.
The disputed domain name is and was registered on September 30, 2017. The disputed domain name does not resolve to an active webpage. 5. Parties’ Contentions A. Complainant
The Complainant asserts to have been using the CALVIN KLEIN trademark since at least as early as 1968 in connection with its various products, having presently billions of United States dollars in sales. The Complainant further asserts that its products are sold exclusively through the Complainant’s own retails stores, outlet stores and websites, as well as through authorized dealers such as Macy’s, Neiman Marcus, Saks Fifth Avenue and Bergdorf Goodman.
As to the disputed domain name, the Complainant asserts that it is identical to the distinctive and famous CALVIN KLEIN trademark combined with the term “set” which is insufficient to avoid any likelihood of confusion, not impacting the overall impression of the disputed domain name which is dominated by the Complainant’s trademark.
According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name given that:
(i) the Respondent is not affiliated with the Complainant in any way, not having the Complainant authorized the Respondent to use and register its trademarks or to seek the registration of the disputed domain name;
(ii) the Respondent does not have rights over the CALVIN KLEIN trademark which is a famous and well-known mark in use for more than 50 years prior to the registration of the disputed domain name;
(iii) the Respondent has not been commonly known by the disputed domain name;
(iv) the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or in a legitimate noncommercial or fair way;
(v) there is no credible evidence or no credible legitimate basis on which the Respondent is or could be making any legitimate noncommercial or fair use of the disputed domain name.
Moreover, the Complainant contends that the registration of the disputed domain name was done clearly in bad faith given the fame and reputation of the CALVIN KLEIN trademark well before the registration date of the disputed domain name. According to the Complainant, the Respondent is diverting the Complainant’s customers or potential customers to what presently is an inactive website. Furthermore, in reply to a
cease-and-desist letter sent by the Complainant before the beginning of this procedure, the Respondent provided an image of models wearing CALVIN KLEIN underwear asking for a “good price offer to sell” the disputed domain name, what clearly indicates, under the Complainant’s view, that the Respondent was aware of the Complainant’s trademark and only acquired the disputed domain name for the purposes of selling it for valuable consideration in excess of any out-of-pocket expenses. B. Respondent
The Respondent did not formally reply to the Complaint.
On November 7, 2017, the Respondent submitted an email stating that it was not in bad faith and indicating that it would like to work with the Complainant, selling licensed products and not counterfeit ones. On November 10, 2017, the Respondent submitted another email stating that the disputed domain name was its “most natural right”. On November 27, 2017, the Respondent submitted a further email indicating that it would like to sell the Complainant’s original products at the disputed domain name. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(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.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present in order to obtain the transfer of the disputed domain name. A. Identical or Confusingly Similar
The Complainant has established rights in the CALVIN KLEIN trademark duly registered in the United States.
The Panel finds that the disputed domain name merely reproduces the Complainant’s mark with the addition of a common term in the Complainant’s industry which is insufficient to avoid confusing similarity and does not impact the overall impression of the disputed domain name, which is dominated by the Complainant’s trademark. The Complainant’s trademark is clearly recognizable in the disputed domain name.
The first element of the Policy has therefore been established. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate a respondent’s rights or legitimate interests in a disputed domain name. These circumstances are:
(i) before any notice 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 not acquired 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.
In that sense, the Complainant indeed states that there is no relationship between the Parties, not having the Respondent been authorized to use or register its trademarks or to register the disputed domain name.
Also, the absence of any indication that the Respondent owns registered trademarks or trade names corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate with the Panel’s finding of the absence of rights or legitimate interests.
Moreover, in spite of the Respondent’s message to the Center stating that the disputed domain name would be its “most natural right” it failed to provide and evidence or indication whichsoever of what would be this right. The other message sent by the Respondent indicated its willingness to work with the Complainant but such intention does not characterize a right or legitimate interest (other than grounded on the Complainant’s famous trademark).
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
In the present case, the messages sent by the Respondent in reply to the cease-and-desist letter sent by the Complainant clearly indicate that it was willing to sell the disputed domain name for valuable consideration in excess of any out-of-pocket expenses. As a matter of fact, the emails attached to the Complaint state:
- On October 12, 2017:
“thank you for your mail
I would like to think of a good offer to be made by calvin klein officials
otherwise I do not think about selling
I am waiting for your offer”
- On October 14, 2017:
“good price offer to sell”
The following circumstances further corroborate the Panel’s finding of bad faith registration and use of the disputed domain name:
(i) the Complainant’s trademark is well known;
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name; and
(iii) the implausibility of any good faith use to which the disputed domain name may be put.
For the reasons stated above, the Respondent’s conduct amounts, in this Panel’s view, to bad faith registration and use of the disputed domain name. 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 Calvin Klein Inc.
Wilson Pinheiro Jabur
Sole Panelist
Date: December 8, 2017
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