The Complainants are Calvin Klein Trademark Trust and Calvin Klein, Inc., United States of America (“United States”), represented by Kestenberg Siegal Lipkus LLP, Canada.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2019. On December 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 11, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 12, 2019 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 12, 2019. The Center verified that 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 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 6, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 13, 2020. The Center appointed Assen Alexiev as the sole panelist in this matter on January 27, 2020. 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 Complainants are affiliated companies. They are engaged in the production and sale of apparel, fragrances, accessories and footwear under the “CALVIN KLEIN” brand, which was established in 1968. The Complainant Calvin Klein Trademark Trust is the registered owner of the following trademark registrations of the sign “Calvin Klein” (the CALVIN KLEIN trademark”) in the United States: - the CALVIN KLEIN trademark with registration No.1,633,261, registered on January 29, 1991 for goods in International Class 25; and - the CALVIN KLEIN trademark with registration No.1,086,041, registered on February 21, 1978 for goods in International Class 25. The Complainants are also the registrants of the domain names The disputed domain name The Complainants submit that the disputed domain names are confusingly similar to the CALVIN KLEIN trademark. The disputed domain names According to the Complainants, the Respondent has no rights or legitimate interests in the disputed domain names. The Complainants’ CALVIN KLEIN trademark predates with fifty years the registration of the disputed domain names, and the Respondent was aware of this trademark when it registered the disputed domain names. The Complainants also submit that the Respondent is not commonly known by the disputed names, and the Complainants have not authorized the Respondent to use or register domain names that incorporate the CALVIN KLEIN trademark. The Complainants contend that the Respondent has registered and is using the disputed domain names in bad faith. The disputed domain names all lead Internet users to a website featuring various “Related Links” that direct consumers to other webpages with a similar structure of various tabs linking to additional websites. It is likely that the Respondent is thus using the CALVIN KLEIN trademark to divert the Complainant’s customers or potential customers seeking information about the Complainant to the disputed domain names that incorporate the CALVIN KLEIN trademark or to goods or services that have no affiliation to the Complainant. The Complainants further state that there is no plausible actual or contemplated active use of the disputed domain names that would not be illegitimate. Finally, the Complainants point out that the Respondent is a serial cybersquatter who has been found to have acted in bad faith in numerous proceedings under the Policy, including the proceeding in Calvin Klein Trademark Trust & Calvin Klein, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2019-0333. The Complainants request the transfer of the disputed domain names to the Complainant Calvin Klein, Inc. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Procedural issue – Consolidation of the proceeding The Complaint in this proceeding has been filed by two Complainants in respect of four domain names registered by the Respondent. This raises the issue of whether a consolidation of their complaints for the purpose of the present proceeding should be allowed. The Complainants submit that they are part of the same group of companies and both of them has rights in the CALVIN KLEIN trademark. Paragraph 10(e) of the Rules grants a panel the power to consolidate multiple domain name disputes, and paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. As discussed in section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), in assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and whether it would be equitable and procedurally efficient to permit the consolidation. In this proceeding, the two Complainants are part of the same group of companies. One of the Complainants is the registered owner of the CALVIN KLEIN trademark. As discussed in section 1.4.1 of the WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), a trademark owner’s affiliate such as a subsidiary of a parent or of a holding company is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint. Therefore, the other Complainant also has a legal interest in the CALVIN KLEIN trademark, which is used for the purposes of the common business of the Complainants. The Complaint is filed jointly by the two Complainants, so the Panel considers that they have a common grievance against the Respondent. They are represented by the same counsel in this proceeding. In view of the above, it appears to the Panel that a consolidation would not lead to procedural complications, inefficiency, or delays. The Respondent has not filed a Response and has not indicated that it would suffer any prejudice from the consolidation of the complaints, and no potential prejudice is apparent to the Panel. Therefore, the Panel decides to allow the consolidation of the complaints of the two Complainants in a single proceeding against the Respondent. 6.2. Substantive issues Pursuant to the Policy, paragraph 4(a), the Complainants must prove each of the following to justify the transfer of the disputed domain names: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the Respondent has registered and is using the disputed domain names in bad faith. In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case. By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name …” The Respondent has however not submitted a Response in this proceeding and has not disputed the arguments of the Complainants and the evidence that they have put forward. A. Identical or Confusingly Similar The Complainants have provided evidence that the Complainant Calvin Klein Trademark Trust is the registered owner of the CALVIN KLEIN trademark. They also submit that the other Complainant Calvin Klein, Inc. is part of the same corporate group as the Complainant Calvin Klein Trademark Trust. This is sufficient for the Panel to make a finding that the Complainants have established their rights in the CALVIN KLEIN trademark for the purposes of the Policy. See section 1.4.1 of the WIPO Overview 3.0. The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain names. As discussed in section 1.7 of the WIPO Overview 3.0, the threshold test for confusing similarity involves a reasoned but relatively straightforward comparison between the textual components of the complainant’s trademark and the disputed domain name to assess whether the trademark is recognizable within the disputed domain name. If a domain name consists of an obvious or intentional misspelling of a trademark, it will be regarded as confusingly similar to this trademark for the purpose of the first element. See section 1.9 of the WIPO Overview 3.0. As pointed out by the Complainants, the disputed domain names Therefore, the Panel finds that the disputed domain names are confusingly similar to the CALVIN KLEIN trademark in which the Complainants have rights. B. Rights or Legitimate Interests While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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 Complainants contend that the Respondent has no rights or legitimate interests in the disputed domain names, stating that the registration of the CALVIN KLEIN trademark predates by fifty years the registration of the disputed domain names, and the Respondent was aware of this trademark when it registered the disputed domain names. The Complainants also submit that the Respondent is not commonly known by the disputed names, and the Complainants have not authorized the Respondent to use or register domain names that incorporate the CALVIN KLEIN trademark. The Complainants point out that the Respondent is using the disputed domain names to divert the Complainants’ customers or potential customers seeking information about the Complainants to goods or services that have no affiliation to the Complainants. Thus, the Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not submitted any arguments in support of the existence of any rights and legitimate interests in the disputed domain names, and has not denied the allegations of the Complainants or disputed the evidence that they have brought forward. The four disputed domain names are all confusingly similar to the CALVIN KLEIN trademark and appear as misspellings of it. The undisputed evidence in the case file shows that they all resolve to a website featuring various “related links” that direct consumers to other webpages with a similar structure linking to yet other websites. In view of the above, the Panel concludes that by engaging in serial typosquatting targetting the CALVIN KLEIN trademark, the Respondent attempts to improperly capitalize on the reputation and goodwill associated with this trademark by confusing and attracting Internet users seeking the Complainants’ products and redirect them to third party websites. In the Panel’s view, such conduct does not appear as legitimate and does not give rise to rights or legitimate interests in the disputed domain names on the Respondent. Therefore, the Panel finds that the Respondent does not have rights and legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely: “(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.” The four disputed domain names are all confusingly similar to the CALVIN KLEIN trademark and represent a classic example of typosquatting. As discussed in section 6.2.B above, they all resolve to a website featuring various “related links” that direct consumers to other webpages with a similar structure linking to yet other websites. In view of the above and in the lack of a denial by the Respondent of any of the arguments and evidence brought forward by the Complainants, the Panel concludes that the Respondent must have been well aware of the goodwill of the Complainants’ CALVIN KLEIN trademark when it registered the disputed domain names, and that by engaging in serial typosquatting against the CALVIN KLEIN trademark, the Respondent attempts to improperly capitalize on the reputation and goodwill associated with this trademark by confusing and attracting Internet users seeking the Complainants’ products and redirect them to third party websites. Such conclusion is also supported by the fact that the Respondent has been found to have acted in bad faith in numerous other proceedings under the Policy, including a recent case involving another domain name that was also a misspelling of the CALVIN KLEIN trademark. Taking the above into account, the Panel finds that the Respondent has registered and is using the disputed domain names in bad faith. 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 names, Assen Alexiev
Sole Panelist
Date: February 10, 2020
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