Complainants are Calvin Klein Trademark Trust, United States of America (“United States”) (“Complainant No. 1”) and Calvin Klein, Inc., United States (“Complainant No. 2”) (together “Complainants”), represented by Kestenberg Siegal Lipkus LLP, Canada.
Respondent is Private By Design, LLC, United States / Yong Sik Choi, Republic of Korea.1 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2019. On October 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 Complainants on October 18, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainants to submit an amendment to the Complaint. Complainants filed an amended Complaint on October 18, 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 October 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 14, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 15, 2019. The Center appointed Stephanie G. Hartung as the sole panelist in this matter on December 2, 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 Complainants are companies both organized under the laws of the United States that belong to the Calvin Klein group of companies which is active in the production, sale and licensing of e.g. men’s and women’s apparel, fragrances, accessories, and footwear. Complainants have provided evidence that Complainant No. 1 is the registered owner of numerous trademarks worldwide relating to Complainants’ company name and brand “Calvin Klein”, inter alia, the following: Word mark CALVIN KLEIN, United States Patent and Trademark Office (“USPTO”), registration number: 1,086,041, registration date: February 21, 1978, status: active; Word/device mark CALVIN KLEIN, USPTO, registration number: 1,633,261, registration date: January 29, 1991, status: active. Moreover, Complainants have evidenced that Complainant No. 2 is the registered owner of several domain names including “Calvin Klein”, e.g. the domain name Respondent, according to the disclosed WhoIs information for the disputed domain name, is a resident of the Republic of Korea and registered the disputed domain name on June 26, 2019. By the time of the rendering of this decision, the disputed domain name directs to a typical parking website at “www.calvinklein.buzz” set up by the Registrar and providing the information that Respondent has not yet put up a website itself. Complainants request that the disputed domain name be transferred to Complainant No. 2. 5. Parties’ Contentions A. Complainants Complainants contend to have used the CALVIN KLEIN trademarks intensively since as early as 1968 in connection with Complainants’ high-quality products, the result being that Complainants have meanwhile developed considerable goodwill in their CALVIN KLEIN trademarks and that they are by now well known and famous worldwide and have been so for many years. Complainants submit that the disputed domain name is confusingly similar to Complainants’ CALVIN KLEIN trademark since the disputed domain name incorporates the trademark in its entirety with the Top-Level Domain (“TLD”) “.buzz” not to be taken into consideration. Moreover, Complainants assert that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Complainants’ first use and registration of the CALVIN KLEIN trademarks predate any use Respondent may have made of the disputed domain name, (2) Respondent apparently has no rights or legitimate interests in respect of the disputed domain name and is not commonly known thereunder, and (3) Complainants have not authorized or licensed Respondent to use or register a domain name which incorporates Complainants’ CALVIN KLEIN trademarks. Finally, Complainants argue that Respondent registered and is using the disputed domain name in bad faith since (1) Respondent is diverting Complainants’ customers or potential customers seeking information about Complainants to the website to which the disputed domain name resolves and over which Complainants have no control, (2) there is no plausible actual or contemplated active use of the disputed domain name that would not be illegitimate and would not constitute an infringement of Complainants’ CALVIN KLEIN trademark rights, (3) the disputed domain name leads Internet users to a parking website and it is Respondent’s responsibility for how the disputed domain name is used even if the content of such parking website was generated by a parking company, and (4) Respondent’s registration of the disputed domain name was solely done to prevent Complainants from registering it themselves and it was acquired for the purpose of being sold to Complainants for valuable consideration in excess of any out-of-pocket expenses by Respondent. B. Respondent Respondent did not reply to Complainants’ contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, Complainants carry the burden of proving: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights; and (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainants, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. Further, the Panel may draw such inferences as are appropriate from Respondent’s failure to submit a Response. As a procedural comment, Complainants, belonging to the same Calvin Klein group of companies, both have a specific common grievance against Respondent, since Complainant No. 1 is the registered owner of the CALVIN KLEIN trademarks while Complainant No. 2 apparently is the beneficial owner of those trademarks and servicer of Complainant No. 1 for a variety of merchandise. Therefore, it is appropriate in the case at hand and in line with UDRP panels’ consensus to accept this Complaint filed by multiple complainants against a single respondent (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1). Having said so, the Panel comes to the following decision: A. Identical or Confusingly Similar The Panel concludes that the disputed domain name The disputed domain name obviously incorporates the CALVIN KLEIN trademark in its entirety. Moreover, it has been held in many UDRP decisions and has become a consensus view among panels (see WIPO Overview 3.0, section 1.11) that the applicable TLD in a domain name is generally viewed as a standard registration requirement and as such is disregarded under the first element test, though the meaning of the TLD may be relevant to a panel’s assessment of the second or third element of the URDP. Accordingly, the existence of the TLD “.buzz” does not dispel the finding of identity arising from the entire incorporation of Complainants’ CALVIN KLEIN trademark in the disputed domain name. Therefore, Complainants have established the first element under the Policy set forth by paragraph 4(a)(i). B. Rights or Legitimate Interests The Panel is further convinced on the basis of Complainants’ undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain. Respondent has not been authorized to use Complainants’ CALVIN KLEIN trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark or other rights associated with the name “Calvin Klein” on its own. Finally, Respondent so far apparently has merely used the disputed domain name to direct it to a typical parking website set up by the Registrar providing the information that Respondent has not yet put up a website itself. UDRP panels, however, have recognized that the mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase, does not by itself automatically confer rights or legitimate interests on the respondent in the domain name (see WIPO Overview 3.0, section 2.10.1). Accordingly, Complainants have established a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Given that Respondent has defaulted, Respondent has not met that burden. Therefore, the Panel finds that Complainants have also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy. C. Registered and Used in Bad Faith The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith. As a general rule, previous UDRP panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding (see WIPO Overview 3.0, section 3.3). While UDRP panels will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include e.g.: the degree of distinctiveness or reputation of the complainant’s mark, the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good faith use, or the implausibility of any good faith use to which the domain name may be put. In the present case, Complainants contend, and Respondent has not challenged such contention, that the CALVIN KLEIN trademarks enjoy considerable reputation worldwide. Moreover, this Panel recognizes that the disputed domain name is even identical to Complainants’ CALVIN KLEIN trademarks and that, given the reputation of those trademarks, it is more likely than not that Respondent was fully aware of Complainants and their rights in the CALVIN KLEIN trademarks when registering the disputed domain name and that the latter is directly targeting those trademarks. Finally, the case file brought before this Panel includes no reasonable explanation whatsoever as to why Respondent should rely on the disputed domain name if not to profit from the reputation associated with the CALVIN KLEIN trademarks, and Respondent has brought forward nothing relating e.g. to the intended use of the disputed domain name that would have allowed the Panel to hold for Respondent. As a consequence, the Panel has no difficulty in finding that Respondent has registered and uses the disputed domain name in a manner which at least takes unjustified and unfair advantage of the CALVIN KLEIN trademarks’ reputation and the disputed domain name must, therefore, be considered as registered and being used in bad faith within the larger meaning of paragraph 4(b) of the Policy. Accordingly, the Panel finds that Complainants have also satisfied the third element under the Policy as set forth by 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 Stephanie G. Hartung 1 It is evident from the case file that Private By Design, LLC, United States, is a privacy protection service and that Yong Sik Choi, Republic of Korea, is the underlying registrant of the disputed domain name. Therefore, unless otherwise indicated, the term “Respondent” is used by the Panel in the case at hand to refer to the latter underlying registrant only.
Sole Panelist
Date: December 13, 2019
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