The Complainants are Calvin Klein Trademark Trust & Calvin Klein, Inc. (collectively, the Complainant) of New York, New York, United States of America (the “United States”), represented by Kestenberg Siegal Lipkus LLP, Canada.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / Carolina Rodrigues, Fundacion Comercio Electronico of Panama City, Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2018. On December 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 21, 2018, 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 December 21, 2018 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 December 22, 2018.
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 December 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 17, 2019.
The Center appointed James Bridgeman as the sole panelist in this matter on January 22, 2019. 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 has a long established worldwide reputation in the production, sale and licensing of men’s and women’s apparel, fragrances, accessories, and footwear using the CALVIN KLEIN mark.
The Complainant has a large portfolio of registrations for the CALVIN KLEIN mark in the United States and throughout the world including:
United States Trademark CALVIN KLEIN , registration number 1,633,261, registered on January 29, 1991;
United States Trademark CALVIN KLEIN, registration number 1,086,041, registered on February 21, 1978.
The Complainant has an established Internet presence which it has established through the registration and use of a number of Internet domain name registrations which wholly incorporate the Complainant’s CALVIN KLEIN marks, including: , , , and .
In the absence of any Response, there is no information available about the Respondent except for what has been provided in the Complaint and the Registrar’s response to the enquiry from the Center requesting information about the registrant.
The Respondent has been the unsuccessful defendant in numerous cases under the Policy including the following: The Commissioners for HM Revenue and Customs v. Domains By Proxy, LLC DomainsByP/ Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2018-2348; The British United Provident Association Limited v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2018-1755; The Terminix International Company Limited Partnership v. Registration Private / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2018-2112; ZB, N.A. v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico.WIPO Case No. D2018-1959; Philip Morris USA Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2018-1616; The British United Provident Association Limited (“Bupa”) v. Registration Private, Domains By Proxy, LLC, DomainsByP / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2018-1117; SAP SE v. Domains by Proxy LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2018-1090.
The Respondent may also have been the respondent in Serco Group Plc v. Administrator Dom, Muscari Holding Limited / Carolina Rodrigues,WIPO Case No. D2018-0185; Trader Joe’s Company v. Domain Admin, Whois Privacy Corp. / Carolina Rodrigues,WIPO Case No. D2016-1147; LateRooms Limited v. Carolina Rodrigues,WIPO Case No. D2016-0931; BlackBerry Limited v. Carolina Rodrigues,WIPO Case No. D2016-0707; Lojas Renner S.A. and Maxmix Comercial Ltda. v. Carolina Rodrigues,WIPO Case No. D2016-0421; Mr. Lionel Andres Messi Cuccittini v. Carolina Rodrigues, Privacy Limited, WIPO Case No. D2015-2103; Dymatize Enterprises, LLC v. Carolina Rodrigues,WIPO Case No. D2015-1776; Banco Bradesco S/A v. Carolina Rodrigues / Domain Admin,WIPO Case No. D2015-0678; Banco Bradesco S/A v. Carolina Rodrigues,WIPO Case No. D2015-0445; Doserno Trading Limited and Red Diamond Holdings Sàrl v. Carolina Rodrigues, FCS Holdings Corp,WIPO Case No. D2012-0506.
The disputed domain name was registered on December 10, 2018 using a privacy service and resolves to a website that is on a list of blocked websites by an antivirus programme used by the Complainant. The identity of the Respondent was disclosed by the Registrar in the course of this Complaint. 5. Parties’ Contentions A. Complainant
The Complainant relies on its above-mentioned portfolio of registrations for the CALVIN KLEIN trademark and submits that it is been engaged into production, sale and licensing of men’s and women’s apparel, fragrances, and footwear among other things is used the CALVIN KLEIN trademark continuously in association with this business since as early as 1968. Over these years, the Complainant has expended millions of dollars in advertising and promoting its products under the CALVIN KLEIN trademark in a variety of media throughout the world, including print, television and, radio advertisements.
The Complainant’s business model is that its CALVIN KLEIN branded products are sold exclusively through the groups on retail stores, outlet stores and websites including the “www.” website and through authorised dealers which include some of the largest chains of retail outlets in the United States.
The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s CALVIN KLEIN Mark. It incorporates the Complainant’s trademark in its entirety, merely changing the order of the letters “v” and “i”. The Complainant submits that this is a clear case of “typosquatting” when the Respondent has slightly misspelled the Complainant’s name, brand and trademark and incorporated the misspelled letter into a domain name in order to divert Internet traffic.
In making the comparison between the disputed domain name and the Complainant’s trademark, the Complainant submits that it is not necessary to take the gTLD “.com” extension into account.
The Complainant submits that the Respondent has no rights or legitimate interest in the disputed domain name; that the Respondent has no proprietary rights in the Complainant’s well-known and famous CALVIN KLEIN trademark; that the Respondent is not commonly known by that name; and that Complainant’s first use and registration of CALVIN KLEIN as a trademark, brand and incorporation into its portfolio of Internet domain names, including and , long predate the registration of the disputed domain name.
The Complainant alleges that the Respondent is using the disputed domain name, which is confusingly similar to the Complainant’s trademark for the purposes of diverting Internet traffic through typosquatting and such use is not legitimate.
The Complainant alleges that the disputed domain name was registered and is being used in bad faith. When the Complainant’s customers and potential customers seeking information about the Complainant access the website to which the disputed domain name resolves, they are led to a chrome-extension download page which contains potentially dangerous content. In support of this assertion the Complainant has submitted a printout of the website to which the disputed domain name resolves. The document submitted by the Complainant appears to be antivirus interception which inter alia provides a window which states “Website blocked The webpage is on the list of websites with potentially dangerous content. Access to it has been blocked”.
The Complainant submits that it has no control over the use of the disputed domain name which is taking advantage of the Complainant’s intellectual property rights. In this regard the Complainant delivered a cease and desist letter to the Respondent on or about December 17, 2018 to which received no reply.
The Complainant submits that there is no plausible actual or contemplated active use of the disputed domain name that would not be illegitimate and constitute an infringement of the Complainant’s rights. Furthermore the Complainant argues that the Respondent’s use of the disputed domain name creates a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
Additionally the Complainant refers to the above-mentioned list of cases which have been successfully brought against the Respondent under the Policy and alleges that this pattern of registration is indicative of bad faith registration and use in this case. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to establish 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 furnished convincing evidence of its ownership of the CALVIN KLEIN trademark through the above-mentioned United States trademark registrations.
The disputed domain name is similar to and almost identical to the Complainant’s trademark. The only difference between the two is that in the disputed domain name the letters “i” and “v” are reversed in sequence. This gives the initial appearance of identity and would take advantage of a typing error that would take the two letters in the wrong sequence.
In the circumstances this Panel finds that the disputed domain name is confusingly similar to the CALVIN KLEIN trademark in which the Complainant has rights. The Complainant has therefore succeeded in the first element of the test in paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has convincingly argued that the Respondent has no proprietary interests in the disputed domain name which is almost identical and confusingly similar to the Complainant’s trademark. Furthermore the Respondent has not been commonly known by the disputed domain name and it would appear that the disputed domain name is being used to resolve to a website which has been identified by an antivirus program as containing potentially dangerous content.
In such circumstances it is well established that the burden of production shifts to the Respondent to prove the existence of rights or legitimate interests. In the present case there has been no Response or communication from the Respondent and therefore the Respondent has failed to discharge the burden of production and the Complainant therefore succeeds in this second element of the test in paragraph 4(a)(ii) of the Policy also. C. Registered and Used in Bad Faith
This Panel accepts the Complainant’s submission that because of the similarity between the disputed domain name and the Complainant’s CALVIN KLEIN trademark in circumstances where the disputed domain name was on the balance of probabilities registered in an exercise of typosquatting to divert Internet traffic away from the Complainant, there is no conceivable possibility that the disputed domain name was registered for any good faith purpose.
It appears that the website to which the disputed domain name resolves contains potentially dangerous content.
Furthermore on the balance of probabilities the Respondent has been the unsuccessful party in a large number of cases brought under the Policy including the above list. This is indicative of a pattern of bad faith registrations which allows this Panel in all the circumstances to find that the disputed domain name was registered and is being used in bad faith.
This Panel finds therefore that the Complainant has succeeded also in the third and final element of the test in paragraph 4(a)(iii) of the Policy. The Complainant is therefore entitled to succeed in this Complaint and be granted the reliefs for which it is applied. 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.
James Bridgeman
Sole Panelist
Date: January 27, 2019
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