The Complainant is Calvin Klein Trademark Trust & Calvin Klein, Inc. of New York, New York, United States of America (“United States”), represented by Kestenberg Siegal Lipkus LLP, Canada.
The Respondent is Domain Administrator, Fundacion Privacy Services LTD of Panama City, Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2019. On February 13, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 14, 2019, 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 February 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 12, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 13, 2019.
The Center appointed Marilena Comanescu as the sole panelist in this matter on March 20, 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.
The language of the proceeding is English. 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 worldwide including:
- the United States Trademark CALVIN KLEIN (stylized), registration number 1,633,261, registered on January 29, 1991 for goods in IC 25; and
- the United States Trademark CALVIN KLEIN, registration number 1,086,041, registered on February 21, 1978 for goods in IC 25.
The Complainant holds and uses a number of Internet domain name registrations which wholly incorporate the CALVIN KLEIN mark, such as the following: , , and .
Previous panels have found that the Complainant’s mark has acquired an extensive and worldwide reputation and has become well known. See Calvin Klein Trademark Trust, Calvin Klein Inc. v. Camille Walters,WIPO Case No. D2018-1107 and cases cited therein.
The disputed domain name was registered on September 20, 2005 and, according to the evidence provided in the Complaint, it was used in connection with a Chrome-extension download page, which contains links to various pages and potentially dangerous content.
Before commencing the present procedure, on February 7, 2019, the Complainant sent a letter to the Respondent asking for the voluntarily transfer of the disputed domain name to the Complainant. No response was received. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its well-known trademark CALVIN KLEIN with a slight misspelling, the Respondent has no rights or legitimate interests in the disputed domain name, and 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
In view of the Respondent’s default, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel will further analyze the potential concurrence of the above circumstances. A. Identical or Confusingly Similar
The Complainant holds rights in the CALVIN KLEIN trademark.
The disputed domain name incorporates the Complainant’s trademark CALVIN KLEIN in its entirety, with a minor alteration, the replacement of the letter “c” composing the mark with the letter “k” in the disputed domain name. However, such misspelling does not prevent a finding of confusing similarity as the Complainant’s trademark is clearly recognizable within the disputed domain name.
Numerous UDRP panels have considered that a domain name which consists of a common, obvious or intentional misspelling of a trademark to be confusingly similar to the relevant mark for the purpose of the first element. See section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g., “.net”, “.info”, “.com”, “.org”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name.
Given the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark CALVIN KLEIN, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Complainant asserts that the Respondent does not hold any trademark rights, license or authorization whatsoever to use the mark CALVIN KLEIN, that the Respondent is not commonly known by the disputed domain name and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services.
Under the Policy, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. See section 2.1 of the WIPO Overview 3.0.
The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case.
There is nothing in the record suggesting that the Respondent has ever been commonly known by the disputed domain name.
The Respondent has used the disputed domain name in connection with a Chrome-extension download page, which contains links to various pages and potentially dangerous content. Having in view all the circumstances of this case, such use is not the equivalent of an activity falling under the circumstances listed by paragraph 4(c) of the UDRP as demonstrating the Respondent’s rights or legitimate interests in the disputed domain name.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
The Complainant holds trademark rights since 1978 and it is well known in its field of activity. The disputed domain name was created in 2005 and incorporates the Complainant’s mark with an obvious misspelling. For the above, the Panel finds that the disputed domain name was registered in bad faith, knowing the Complainant and targeting its trademark.
The Respondent has choosen to remain silent to both the Complainant’s letter prior to commencing these proceeding and to the present Complaint and thus, it did not give any explanation for choosing the disputed domain name.
According to the records in the file, the Respondent has used the disputed domain name in relation to a website associated with Chrome-extension download page listing sponsored links related to third parties websites. The commercial activities for pay-per-click pages can be legitimate activities particularly when they involve dictionary word domain names, but it does not necessarily confer rights to use for that purpose a domain name identical or confusingly similar to another party’s trademark.
In the present case, the Respondent has registered the disputed domain name incorporating the Complainant’s distinctive and well-known mark in the fashion sector, and has not participated in the present proceeding to put forward arguments in its support, therefore the Panel concludes that the provision of paragraph 4(b)(iv) of the Policy which provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location” applies in the present case and is evidence of registration and use in bad faith. Internet users searching for the Complainant would acces the website corresponding to the disputed domain name considering it belongs or is somehow associated with or endorsed by the Complainant.
For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii). 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.
Marilena Comanescu
Sole Panelist
Date: March 27, 2019
Full & Egal Universal Law Academy