Complainant is Calvin Klein Trademark Trust of New York, New York, United States of America (“United States”) represented by Kestenberg Siegal Lipkus LLP, Canada.
Respondent is Peggy Holland of Maryville, Tennessee, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with D, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2019. On April 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 2, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 8, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 8, 2019.
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 Respondent of the Complaint, and the proceedings commenced on April 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 1, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 3, 2019.
The Center appointed John McElwaine as the sole panelist in this matter on May 10, 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
Complainant is Calvin Klein Trademark Trust, a Business Trust organized under the laws of Delaware. Calvin Klein Trademark Trust is the registered owner of the CALVIN KLEIN trademarks that are the subject matter of this UDRP proceeding. Calvin Klein Inc. is the beneficial owner of the trademarks owned by Calvin Klein Trademark Trust. Calvin Klein Trademark Trust and Calvin Klein Inc. will be collectively referred to hereinafter as “Complainant.”
Complainant is a fashion brand headquartered in New York, United States. Complainant engages in the production, sale and licensing of men’s and women’s apparel, fragrances, accessories, and footwear, among other things, all in association with one or more of the Calvin Klein Intellectual Properties.
Since its formation, Complainant has used and owned trademarks in the United States and throughout the world. In the United States, Complainant has registered the trademark CALVIN KLEIN on February 21, 1978, registration number 1,086,041. Additionally, the stylized trademark of CALVIN KLEIN was registered on January 29, 1991, registration number 1,633,261.
Complainant owns domain name registrations that wholly incorporate Complainant’s CALVIN KLEIN marks, including: registered on June 9, 1997, registered on May 16, 2005, registered on March 23, 1999, and registered on January 23, 2005.
Respondent registered the Domain Name on March 27, 2019. The Domain Name is registered with the Registrar. The Domain Name is currently used as a pay-per-click site. 5. Parties’ Contentions A. Complainant
Complainant contends that it has used the CALVIN KLEIN trademark continuously since at least as early as 1968 in connection with the advertising, offering for sale, and sale of its products in the United States and elsewhere. Complainant further contends that its use of the CALVIN KLEIN trademarks has resulted in millions of customers worldwide and billions of dollars in sales. Complainant asserts that the CALVIN KLEIN marks are well known and famous and that it has expended millions of dollars in advertising and promoting its products under its CALVIN KLEIN trademark in a variety of media throughout the world, including print, television, and radio advertisements. Specifically, Complainant asserts that since its formation it has used and registered marks in the following countries: United Kingdom on January 24, 1994, registration number B1,492,382, European Community on January 29,1999, registration number 617,381, and China on December 14, 2001, registration number 1,681,239.
Complainant also contends it has advertised its CALVIN KLEIN trademarks through direct mail and on the Internet and that such advertising reaches a vast range of consumers. Complainant asserts that CALVIN KLEIN products are sold exclusively through Complainant’s own retail stores, outlet stores, and web sites including “www.”, and through Authorized Dealers. Complainant asserts that through extensive promotional efforts, advertising expenditures, and sponsorship activities, it has been successful in educating the public to associate the CALVIN KLEIN trademark with its products.
In this proceeding, Complainant asserts registered trademark rights in the CALVIN KLEIN trademark by virtue of registrations throughout the world long before 2019.
For the first element of the Policy, Complainant contends that the Domain Name is confusingly similar to Complainant’s CALVIN KLEIN trademark because it incorporates the trademark in its entirety. Likewise, Complainant contends that the addition of the terms “booking” and “models” further adds to the confusion because Complainant often participates in campaigns with well-known individuals to advertise its goods. Additionally, Complainant believes that since it had not authorized the Respondent to register this Domain Name, Respondent may reach out by email to unsuspecting individuals who may have the false belief that the Domain Name is associated with Complainant.
Regarding the second element of the Policy, Complainant contends that Respondent does not have any rights or legitimate interests in the Domain Name because Complainant’s first use, and first registration of its CALVIN KLEIN trademark predates any use Respondent may have made of the Domain Name. Also, Complainant asserts based on the fame of the CALVIN KLEIN marks, Respondent’s registration of a domain name wholly incorporating a famous mark is not supported by legitimate interests. Complainant alleges that Respondent has no proprietary rights or legitimate interest in CALVIN KLEIN because Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Further, Complainant alleges that Respondent has no proprietary rights or legitimate interest in “Booking Calvin Klein Models” or the Domain Name, because Respondent is not commonly known by the name and the email address belonging to Respondent has the domain , which has no affiliation with Complainant. Additionally, Complainant asserts that it has not authorized or licensed Respondent to use or register a domain name which incorporates Complainant’s CALVIN KLEIN trademarks.
Lastly, as it pertains to the third element of the Policy, Complainant contends Respondent is diverting Complainant’s customers or potential customers seeking information about Complainant to the Domain Name and therefore is using the Domain Name in bad faith. Moreover, the Domain Name is currently used as a pay-per-click site. Complainant argues that Respondent’s use of the Domain Name is to attract Internet users to the Domain Name by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s Domain Name may satisfy Policy paragraph 4(b)(iv). Finally, Complainant alleges that Respondent’s registration of the Domain Name was solely done to prevent Complainant from registering the Domain Name and was acquired for the purpose of selling the Domain Name for valuable consideration in excess of any out-of-pocket expenses, and therefore may satisfy Policy paragraph 4(b)(i) and (ii). B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Even though Respondent has defaulted, paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, complainant must still prove its assertions with evidence demonstrating:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The domain name has been registered and is being used in bad faith.
Because of Respondent’s default, the Panel may accept as true the reasonable factual allegations stated within the Complaint and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited v. AnonymousSpeech LLC and Global House Inc.,WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International,WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires complainant show that the domain name is identical or confusingly similar to a trademark or service mark in which the respective complainant has rights. Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1. Here, Complainant has provided evidence of ownership of registrations for the mark CALVIN KLEIN in the United States, United Kingdom, China, and multiple other countries around the world for more than 40 years prior to the registration of the Domain Name. The Panel finds that Complainant owns valid trademark rights in the CALVIN KLEIN mark which predate the registration of the Domain Name.
While the Domain Name is not identical to the CALVIN KLEIN mark, it does incorporate Complainant’s trademark in its entirety, similar to how Complainant’s already registered domain names wholly incorporate the trademark. The only difference with the Domain Name and Complainant’s trademark is the addition of the words “booking” and “models”, each of which exhibit an apparent descriptive characteristic in relation to Complainant’s CALVIN KLEIN trademark. Considering that Complainant often participates in advertising campaigns for its goods, namely, men’s and women’s apparel, fragrances, accessories, and footwear, using models and Complainant’s own practice of using domain names incorporating the CALVIN KLEIN trademark and descriptive terms in furtherance of said advertising activities, Respondent created a confusing similarity between the Domain Name and Complainant’s trademark by mimicking Complainant’s advertising practices. It is well established, and the Panel agrees, that the addition of descriptive wording to a trademark in a domain name does not avoid a finding of confusing similarity. See Mastercard International Incorporated v. Dolancer Outsourcing Inc.,WIPO Case No. D2012-0619; Air France v. Kitchkulture,WIPO Case No. D2002-0158; F. Hoffmann-La Roche AG v. Bobik Marley, WIPO Case No. D2007-0694; Deceuninck nvand Thyssen Polymer GmbH v. Dmitriy Beloussov, WIPO Case No. D2007-0347.
Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainant’s CALVIN KLEIN trademark in which Complainant has valid trademark rights. Therefore, Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Under the Policy, paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Name. Complainant needs only make a prima facie showing on this element, at which point the burden of production shifts to Respondent to present evidence that it has rights or legitimate interests in the Domain Name. If Respondent has failed to do so, Complainant is deemed to have satisfied its burden under paragraph 4(a)(ii) of the Policy. See Vicar Operating, Inc. v. Domains by Proxy, Inc./ Ekin Bot Systems, Inc.,WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party,WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi,WIPO Case No. D2000-0252.
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name:
“(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.”
Complainant contends and the Panel agrees that: (i) Complainant’s use and registration of the CALVIN KLEIN trademark predates any use Respondent may have made of the Domain Name as a trade name, domain name, mark, or common name; (ii) Respondent’s registration of a domain name wholly incorporating a famous mark is not supported by legitimate interests (iii) Respondent has not used the Domain Name in connection with a bona fide offering of goods or services; (iv) Complainant has not authorized or permitted Respondent to register the Domain Name; and (v) Respondent is not commonly known by the Domain Name.
As discussed herein, the Domain Name was registered in 2019, more than fifty years after Complainant first used its CALVIN KLEIN trademark. Also, Complainant registered domain names incorporating its CALVIN KLEIN trademark and began operating its web sites several years before Respondent registered the Domain Name. Therefore, the Panel finds, based on the record, that Complainant’s use, and registration of the CALVIN KLEIN trademark predates any use Respondent may have made of the Domain Name.
Furthermore, it is inconceivable, given the fame of Complainant’s CALVIN KLEIN trademark, and based on the uncontested facts of the record, that Respondent can establish rights or legitimate interest in a domain name incorporating a third-party’s well-known trademark. See Red Bull GmbH v. Premiere-PTC-Network,WIPO Case No. D2008-1077.
The Panel also finds that Respondent is not making bona fide use of the Domain Name under paragraph 4(c), as the Domain Name links to what appears to be a “parked” page. This Panel agrees with the viewpoint that to register domain names and park them to earn rental revenue by allowing a third party to use the domain name is not by itself to be considered a bona fide use of the domain name in connection with the offering of goods or services by the registrant of that domain name. Trade Me Limited v. Vertical Axis Inc.,WIPO Case No. D2009-0093. However, the Panel recognizes that parking webpages may be permissible in some circumstances, as discussed in paragraph 2.9 of WIPO Overview 3.0. None of those factors are present here. There is no evidence that the Domain Name consists of dictionary or common words or phrases that support the pay-per-click links genuinely related to the generic meaning of the domain name at issue. Instead, the Domain Name appears to have been registered with the intent that confused Internet users searching for Complainant will be directed to Respondent’s parked webpage for commercial gain. Such activity does not provide a legitimate interest in that domain name under the Policy. See M.F.H. Fejlesztõ Korlátolt Felelõsségû v. Satoshi Shimoshita,WIPO Case No. D2014-1726.
As it pertains to Complainant’s allegation that Respondent is not authorized by Complainant to use the CALVIN KLEIN trademarks, although Respondent has been properly notified of the Complaint by the Center, Respondent failed to submit any response on this point. The silence of a respondent may support a finding that it has no rights or legitimate interests in respect of the domain name. See Alcoholics Anonymous World Services, Inc., v. Lauren Raymond,WIPO Case No. D2000 0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S.,WIPO Case No. D2000-0011. Additionally, previous UDRP panels have found that when respondents have not availed themselves of their rights to respond to complainants, it can be a further inference in appropriate circumstances that respondents have no rights nor legitimate interests in the domain name at issue. See AREVA v. St. James Robyn Limoges,WIPO Case No. D2010 1017; Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim,WIPO Case No. D2003-0269.
Lastly, Complainant’s assertions combined with the WHOIS registrant information indicate that Respondent is not commonly known by the Domain Name under Policy paragraph 4(c)(iii) and, therefore, has no proprietary rights or legitimate interest in the CALVIN KLEIN trademark. The Registrant has the name Peggy Holland and is not commonly known by the name “Calvin Klein”. Also, the email address belonging to Respondent with the domain has no affiliation with Complainant.
Based on the foregoing, Complainant has made a prima facie showing of Respondent’s lack of any rights or legitimate interests and Respondent has failed to come forward to rebut that showing. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent’s default as it considers appropriate. The Panel finds that Respondent does not have rights or legitimate interests in the Domain Name and that Complainant has met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Names in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
Complainant contends that Respondent’s registration and use of the Domain Name was in bad faith because: (i) Respondent knew or should have known of Complainant’s CALVIN KLEIN trademark and Respondent registered the Domain Name to attract Internet users to the Respondent’s web site by creating a likelihood of confusion with the Complainant’s CALVIN KLEIN trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s Domain Name in order to divert traffic to Respondent’s web site hosted at the Domain Name, which contains pay-per-click advertisements; and (ii) Respondent registered the Domain Name to prevent Complainant from registering the Domain Name, and was acquired for the purpose of selling the Domain Name for valuable consideration in excess of any out-of-pocket expenses.
Bad faith registration can be found where a respondent “knew or should have known” of a complainant’s trademark rights and nevertheless registered a domain name in which it had no rights or legitimate interests. See Accor v. Kristen Hoerl,WIPO Case No. D2007-1722. Based on Complainant’s submissions, which were not rebutted by Respondent, Respondent must have known of Complainant’s CALVIN KLEIN trademark when Respondent registered the Domain Name because, Complainant’s sites were operational, and thus easily accessible to Respondent at the time Respondent registered the Domain Name. Furthermore, and as detailed above, Respondent is not commonly known by the Domain Name and does not have any rights or legitimate interests in the Domain Name. Accordingly, on the record there is no explanation or legitimate interests to justify Respondent’s choice to register the Domain Name. With no response from Respondent, this claim is undisputed, and the Panel can infer bad faith.
Paragraph 4(b)(iv) of the Policy provides that bad faith use may be shown if “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online 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”. As discussed herein, Respondent registered the Domain Name, which is confusingly similar to Complainant’s CALVIN KLEIN mark and additionally incorporates the trademark in its entirety. Respondent likely generates revenues for each click-through of the links. Such use appears to be for no other reason than to trade off the goodwill and reputation of Complainant’s trademarks or otherwise create a false association with Complainant. This Panel agrees with the previous panel’s finding in Calvin Klein Trademark Trust and Calvin Klein Inc. v. Wang Yanchao,WIPO Case No. D2014-1413, that “the Complainant and its CALVIN KLEIN marks enjoy a widespread reputation and high degree of recognition as a result of its fame and notoriety…and is a registered trademark in many countries all over the world. Consequently, in the absence of contrary evidence from Respondent, the CALVIN KLEIN marks [are] not one[s] that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.”
Accordingly, the Panel finds that Respondent registered the Domain Name and used the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy and therefore satisfies paragraph 4(a)(iii) of the Policy. 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 Domain Name be transferred to Complainant.
John C McElwaine
Sole Panelist
Date: May 20, 2019
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