The Complainant is Calvin Klein Trademark Trust, United States of America (“United States”), and Calvin Klein, Inc., United States, represented by Kestenberg Siegal Lipkus LLP, Canada.
The Respondent is Rashed Al Ali, United Arab Emirates. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2020. On March 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 19, 2020, 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 March 23, 2020 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 March 24, 2020. 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 March 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 14, 2020. The Respondent submitted a response on April 12, 2020. The Complainant submitted a supplemental filing on April 13, 2020. The Center received another email communication from the Respondent on April 14, 2020 in response to the Complainant’s supplemental filing. The Center appointed Alistair Payne as the sole panelist in this matter on April 22, 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 Complainant has produced, sold and licensed apparel, fragrances, accessories and footwear since 1968 both in the United States and worldwide. The Complainant owns trade mark registrations worldwide for its CALVIN KLEIN mark but in particular, United States trade mark registration 1086041, registered on February 21, 1978. The Complainant also owns a number of domain name registrations incorporating its mark, including: The disputed domain name was registered on February 12, 2020. The disputed domain name diverts to a blank placeholder site featuring the legend “website coming soon! Please check back soon to see if the site is available”. 5. Parties’ Contentions A. Complainant The Complainant submits that it owns registered trade mark rights for its CALVIN KLEIN mark as set out above. The Complainant says that the disputed domain name wholly incorporates its mark and that the addition of the abbreviation “app” in the disputed domain name further adds to potential confusion, considering that the Complainant already has a substantial online and social media presence. As a result, says the Complainant, the disputed domain name is confusingly similar to the Complainant’s registered CALVIN KLEIN trade mark. The Complainant submits that it has used the CALVIN KLEIN mark continuously since 1968 in connection with advertising and the sale of its products which has resulted in attracting millions of customers worldwide and in billions of dollars of sales both through retail shop sales and through its websites at the domain names listed above. As a result, the Complainant says that its CALVIN KLEIN mark is truly well-known or famous and that by the date of the registration of the disputed domain name the Respondent must have been aware of its trade mark and of its various domain names and websites which were all accessible at that time. It says further that the Respondent is not affiliated with the Complainant in any way and has not authorised the Respondent to use its CALVIN KLEIN mark, whether by licence or otherwise. Nor, says the Complainant, has it authorised the Respondent to register the disputed domain name. The Complainant also submits that the Respondent is not commonly known by the CALVIN KLEIN name or mark and has no proprietary rights or legitimate interests in the disputed domain name because it is not using it in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. It notes in this regard that the disputed domain name redirects to a holding page without content and that the Respondent has elected to remain anonymous under the name “Sharjah, AE”. As far as bad faith is concerned, the Complainant says that the Respondent is diverting the Complainant’s customers or potential customers to an inactive website, outside the Complainant’s control without the Complainant’s authorization and that this amounts to passive use in bad faith. It notes that it delivered a cease and desist letter to the Respondent on March 3, 2020 and that there is no plausible, actual or contemplated active use of the disputed domain name that would be legitimate and which would not constitute an infringement of the Complainant’s rights. Further, the Complainant submits that the registration of the disputed domain name was solely done to prevent the Complainant from registering it, that it has been inactive since registration and was acquired for the purpose of selling it for a valuable consideration in excess of any out-of-pocket expenses in terms of paragraphs 4(b)(i) and (ii) of the Policy. B. Respondent The Respondent acknowledges that he was aware of the CALVIN KLEIN mark when he registered the disputed domain name but says that he has no intention of using it for products or services associated with the Complainant’s mark, without the Complainant’s authorization. The Respondent submits that the disputed domain name was available for sale and he acquired it with a particular business idea in mind, namely to create an application for the Complainant that would, for example, be the basis for an application for dealers and distributors to place their orders from around the world and to notify them about new products, or to create an application as a platform for shopping for the Complainant’s potential customers worldwide. The Respondent suggests that this idea would be very beneficial for the Complainant and that in spite of the Complainant’s existing online presence this is an “applications” era and that the Complainant only became aware of the disputed domain name and its potential significance in this regard after the Respondent’s registration. In summary, the Respondent says that the idea to register the disputed domain and to create such a site for the Complainant was his and that the disputed domain name should either remain registered to him while diverting to an inactive site, or the Complainant should have to pay a “fair price” by acquiring the disputed domain name from him. In addition, the Respondent notes that the website to which the disputed domain name resolves is inactive and that it can only be found by special search and that ordinary customers would not be diverted to any sites associated with the disputed domain name. 6. Discussion and Findings The Complainant submitted a supplemental filing on April 13, 2020 and the Respondent filed a further email communication in response on April 14, 2020. Neither of these supplemental filings add anything to the parties’ respective cases and accordingly the Panel exercises its discretion not to admit them to the record. A. Identical or Confusingly Similar The Complainant has demonstrated that it owns United States trade mark registration 1086041, registered on February 21, 1978 for CALVIN KLEIN. The disputed domain name wholly incorporates the Complainant’s trade mark together with the commonly used abbreviation “app” meant to refer to an application. Previous UDRP panels have found that the wholesale incorporation of a trade mark into a domain name in similar circumstances amounts to confusing similarity. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered CALVIN KLEIN trade mark and that the Complaint succeeds under this element of the Policy. B. Rights or Legitimate Interests The Panel accepts that the CALVIN KLEIN mark is extremely well reputed worldwide and through its various domain names and websites has developed a substantial online presence. Indeed, the Respondent has acknowledged in his response that he was well aware of the Complainant’s mark and web presence when he registered the disputed domain name. The Complainant has submitted that the Respondent has no affiliation with it and has not authorised the Respondent to use its CALVIN KLEIN mark, whether by licence or otherwise. The Complainant has also submitted that the Respondent is not commonly known by the CALVIN KLEIN name or mark and has no proprietary rights or legitimate interests in the disputed domain name because it is not using it in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. The Complainant notes in this regard that the disputed domain name redirects to a holding page without content. The Respondent has attempted to rebut the prima facie case made out under this limb of the Policy by submitting that the disputed domain name was available for sale and he acquired the disputed domain name with a particular business idea in mind, namely to create an application for the Complainant that would, for example, be the basis for an application for dealers and distributors to place their orders from around the world and to notify them about new products, or to create an application as a platform for shopping for the Complainant’s potential customers worldwide. Not only is the Respondent’s approach in trying to make a plainly commercial use of the disputed domain name that incorporates the Complainant’s trade mark entirely misconceived (as further discussed below) but, in any event, at the date that this Complaint was filed, the disputed domain name redirected to an empty parking page without there being any other evidence of the Respondent actually making any bona fide or legitimate use of the disputed domain name. As a result, the Panel finds that the Respondent has not rebutted the prima facie case made out by the Complainant under this head, that the Respondent has no rights or legitimate interests in the disputed domain name and the Complaint therefore also succeeds under this element of the Policy. C. Registered and Used in Bad Faith The Respondent registered the disputed domain name on February 12, 2020. By that time the Complainant’s CALVIN KLEIN mark was very well known globally as a result of very substantial use and advertising. In fact the Respondent expressly acknowledged in his Response that he was well aware of the Complainant’s mark and web presence when he registered the disputed domain name, so there is no question but that he was well aware of the Complainant’s mark at the date of acquisition of the disputed domain name. In spite of this knowledge, the Respondent appears to have considered that he was free to acquire the disputed domain name with impunity for the purposes of either selling it to the Complainant and/or developing an application under it expressly for the purposes of the Complainant’s business. This of course amounts to precisely the type of cybersquatting conduct that the Policy seeks to proscribe. To date, the disputed domain name remains parked. The Complainant asserts that this amounts to passive use by the Respondent in bad faith. The factors that UDRP panels have previously considered to amount to a passive holding in bad faith are set out at section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), and include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details and (iv) the implausibility of any good faith use to which the disputed domain name may be put. The Panel has already found that the Complainant’s mark is extremely well reputed. The Respondent’s frank explanation for his acquisition and potential use of the disputed domain name is entirely misconceived in circumstances that both activities were conceived without the Complainant trade mark owner’s permission. In addition, the Respondent’s plan for use of the disputed domain name, either to re-sell to the Complainant or to use for the development of an “app” that would be subsequently promoted to the Complainant on some commercial basis, is entirely misconceived, as discussed earlier and in no way amounts to bona fide use of the disputed domain name. In these circumstances the Panel considers that the Complainant has made out the requirements for a finding of passive holding in bad faith. The Complainant also submits that the registration of the disputed domain name was solely done to prevent the Complainant from registering it, that it has been inactive since registration and was acquired for the purpose of selling it for a valuable consideration in excess of any out-of-pocket expenses in terms of paragraphs 4(b)(i) and (ii) of the Policy. The Respondent has acknowledged in the Response that he acquired the disputed domain name with the Complainant in mind and that he fully intended on selling the disputed domain name to the Complainant at a “fair price”. Based on the Respondent’s stated commercial and business ambitions, the Panel infers that this means that the Respondent intended to negotiate a price well beyond its out-of-pocket expenses in acquiring the disputed domain name. The Panel finds that this is a case that clearly fulfills the requirements of paragraph 4(b)(i) of the Policy in that the Respondent acquired the disputed domain name for the purpose of selling or renting or otherwise transferring it to the Complainant for valuable consideration in excess of the Respondent’s out‑of‑pocket costs directly related to the disputed domain name. This amounts to evidence of registration and use of the disputed domain name in bad faith. As a result, the Panel finds that the Complaint also succeeds under this element 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 disputed domain name Alistair Payne
Sole Panelist
Date: May 4, 2020
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