Complainants are Calvin Klein Trademark Trust and Calvin Klein, Inc., United States of America (“United States” or “U.S”), represented by Kestenberg Siegal Lipkus LLP, Canada (“Complainants”).
Respondent is “REDACTED FOR PRIVACY, WhoisGuard, Inc.” / Calvin K Carter, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2020. On May 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 14, 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 May 22, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. 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 June 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 22, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 23, 2020. The Center appointed Brian Winterfeldt as the sole panelist in this matter on July 2, 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 Complainant Calvin Klein Trademark Trust is the registered owner of the CALVIN and CALVIN KLEIN trademarks. Complainant Calvin Klein, Inc. is the beneficial owner of the trademarks owned by Complainant Calvin Klein Trademark Trust (hereafter collectively “Complainants”). Complainants engage in the production, sale and licensing of men’s and women’s apparel, fragrances, accessories, and footwear, among other things. Complainants have used their CALVIN and CALVIN KLEIN trademarks (“Complainants’ Marks”) since at least 1968. Complainants own various United States Trademark Registrations for their CALVIN and CALVIN KLEIN marks, including United States Registration Numbers 933,999 (registered on May 16, 1972), 1,086,041 (registered on February 21, 1978), and 1,633,261 (registered on January 29, 1991). Complainants’ fifty-plus years of uninterrupted use of the CALVIN KLEIN trademarks have resulted in millions of customers worldwide and billions of dollars in sales. Complainants also own and operate the websites located at the “calvinklein.com”, “calvinkleinbags.com”, “calvinkleinunderwear.com”, “calvinkleinfashion.com” and “mycalvins.com” domain names, which were all registered between 1997 and 2016. Respondent registered the disputed domain name Complainants assert that the disputed domain name is confusingly similar to Complainants’ CALVIN mark because it fully incorporates the CALVIN mark. Complainants further contend that Respondent has no rights or legitimate interest in the disputed domain name because Complainants’ use and registration of their CALVIN and CALVIN KLEIN marks precede the disputed domain name’s registration and Complainants have never authorized nor licensed Respondent to use Complainants’ Marks in connection with any services using the disputed domain name. Complainants also argue that Respondent cannot claim to be making legitimate noncommercial or fair use of the disputed domain name because it resolves to a parked page displaying PPC links that compete with or capitalize on the reputation of Complainants’ Marks. Furthermore, Complainants also argue that Respondent cannot claim to be making a bona fide offering of goods and services because Complainants, again, have never authorized or licensed Respondent to use Complainants’ Marks in connection with any services on the disputed domain name. Complainants also allege that Respondent is not commonly known by the disputed domain name. Lastly, Complainants contend that the disputed domain name was registered and used in bad faith. According to Complainants, Respondent must have had constructive or actual knowledge of Complainants’ rights in the CALVIN and CALVIN KLEIN marks given their worldwide notoriety, the use of Complainants’ Marks in the disputed domain name’s website and the complete incorporation of the CALVIN mark within the disputed domain name. Complainants allege that Respondent is seeking to divert traffic from customers seeking information about Complainants. Complainants’ further submit that Respondent’s registration of the domain name was done solely to prevent it 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 satisfies Policy ¶ 4(b)(i) and (ii). B. Respondent Respondent did not reply to Complainants’ contentions. 6. Discussion and Findings Paragraph 10(e) of the UDRP Rules grants a panel the power to consolidate multiple domain name disputes. In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) 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 (ii) it would be equitable and procedurally efficient to permit the consolidation. Given that Complaint Calvin Klein, Inc. is the beneficial owner of the trademarks owned by Complainant Calvin Klein Trademark Trust and, thus, have common grievances against Respondent, the Panel permits the consolidation of Complainants claims against Respondent in this proceeding. Under paragraph 4(a) of the Policy, to succeed Complainants must satisfy the Panel that: (i) the disputed 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 disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith. Furthermore, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states: “Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding? Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.” Thus, even though Respondent has failed to address Complainants’ contentions, the burden remains with Complainants to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainants have provided evidence that they have rights in the CALVIN and CALVIN KLEIN trademarks through their corresponding United States registrations. With Complainants’ rights in the CALVIN and CALVIN KLEIN marks established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain (“gTLD”) in which the domain name is registered) is identical or confusingly similar to either of Complainant’s marks. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.” WIPO Overview 3.0, section 1.7. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. Id. Here, the disputed domain name fully incorporates Complainants’ CALVIN mark. The Panel therefore finds that Complainants have satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is identical to Complainants’ CALVIN trademark (and confusingly similar to the CALVIN KLEIN mark). B. Rights or Legitimate Interests Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, the respondent carries the burden of production of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. Paragraph 4(c) of the Policy lists the ways that a respondent may demonstrate rights or legitimate interests in the domain name: (i) before any notice of the dispute, the respondent’s 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is 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. While the overall burden of proof in UDRP proceedings is on the complainant, past 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. WIPO Overview 3.0, section 2.1. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden then shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. Id. In this case, the Panel finds that Complainants have made out a prima facie case. Complainants have established that they have rights in the CALVIN and CALVIN KLEIN marks that long predate the disputed domain name’s registration and Complainants have asserted that they have never authorized Respondent to use any of Complainants’ Marks or any variation thereof. Accordingly, the burden was on the Respondent to show that the disputed domain name was being used in connection with a bona fide offering of goods or services, that Respondent is commonly known by the disputed domain name, or that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. Respondent failed to do so and the evidence on record does not support such claims. The record shows that the disputed domain name resolves to a parked page containing various links that would lead Internet users to websites offering goods similar to those offered under Complainants’ Marks. The record also shows that at least one of those links incorporates Complainants’ CALVIN KLEIN mark entirely. Panels have consistently found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering of goods or services where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. WIPO Overview 3.0, section 2.9. See also, Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267. That the disputed domain name contains PPC links also makes it clear that Respondent is not making legitimate noncommercial or fair use. On its face, Complainants’ assertion that Respondent is not commonly known by the disputed domain name is contradicted by the evidence on record. TThe email communication sent to the Complainant on May 22, 2020, providing the registrant and contact information disclosed by the Registrar, shows that Respondent is, at least allegedly, named Calvin K Carter. That said, insofar as a respondent’s being commonly known by a domain name giving rise to a legitimate interest under the Policy, UDRP panels carefully consider whether a respondent’s claim to be commonly known by the domain name – independent of the domain name – is legitimate. WIPO Overview 3.0, section 2.3. Mere assertions that a respondent is commonly known by the domain name will not suffice; respondents are expected to produce concrete credible evidence. Id. Evidence showing that a respondent is commonly known by the domain name may include: a birth certificate, driver’s license, or other government-issued ID; independent and sustained examples of secondary material such as websites or blogs, news articles, correspondence with independent third parties; sports or hobby club publications referring to the respondent being commonly known by the relevant name; bills/invoices; or articles of incorporation. Panels will additionally typically assess whether there is a general lack of other indicia of cybersquatting. Id. Here, Respondent failed to provide any corroborating evidence that his name is in fact what was provided by him to the Registrar. While such evidence may have been useful to address Complainant’s prima facie case on this element, in the absence of a Response, the Panel cannot rely solely on the information from the Registrar standing alone. See, e.g., Lazzoni Mobilya Ins.Tur. San.Ve Tİc.Ltd. Şti. v. Privacy--Protect.org / Marco Gaetano Lazzoni, WIPO Case No. D2012-0240. The Panel also notes that it has confirmed that the email address provided by the Registrar for the registrant was used in the Notification, and the (postal) Written Notice was signed for. In either event, based on the available evidence, Respondent’s use of the disputed domain name is indicative of cybersquatting. The evidence submitted by Complainants clearly shows that the website to which the disputed domain name resolves displays PPC links relating to goods also covered by Complainant’s Marks, and least one of them incorporates Complainants’ CALVIN KLEIN mark entirely. Without any evidence from Respondent that it has bona fide plans for using the domain name, this suggests that the disputed domain name is aimed at taking advantage of or capitalizing on the reputation and goodwill of Complainants’ Marks. Here, the Panel notes that despite a “Parkingcrew” disclaimer on the webpage annexed to the Complaint, Respondent is responsible for links appearing on the webpage. Therefore, the Panel concludes that Respondent does not have rights or a legitimate interest in the disputed domain name within the meaning of Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found when, by using a disputed domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. Panels have found the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: (i) actual confusion, (ii) seeking to cause confusion (including by technical means beyond the domain name itself) for the respondent’s commercial benefit, even if unsuccessful, (iii) the lack of a respondent’s own rights to or legitimate interests in a domain name, (iv) redirecting the domain name to a different respondent-owned website, even where such website contains a disclaimer, (v) redirecting the domain name to the complainant’s (or a competitor’s) website, and (vi) absence of any conceivable good faith use. WIPO Overview 3.0, section 3.1.4. Other circumstances indicating that the respondent’s intent in registering the disputed domain name was in fact to profit in some fashion or otherwise exploit the complainant’s mark also, among others, include the respondent’s likely knowledge of the complainant’s rights, website content targeting the complainant’s trademark, and failure of a respondent to present a credible evidence-backed rationale for registering the domain name. WIPO Overview 3.0, section 3.1.1. In this case, bad faith can be found in the registration and use of the disputed domain name. Complainant provided ample evidence showing widespread use of the CALVIN and CALVIN KLEIN marks that long predates Respondent’s registration of the disputed domain name. Complainant also provided evidence of the United States trademark registrations it owns for the CALVIN and CALVIN KLEIN marks that were in force at the moment the disputed domain name was registered. Therefore, Respondent was likely aware of Complainants’ Marks when registering the disputed domain name, or knew or should have known that it was identical or confusingly similar to Complainants’ Marks. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973. Furthermore, UDRP panels have also consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4, see also Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000−0163. Furthermore, the website to which the disputed domain name resolves contains links relating to goods similar or identical to those covered by Complainants’ Marks and at least one of those links incorporates Complainants’ CALVIN KLEIN mark entirely. Despite being made aware of the Complaint against it, Respondent failed to present any rationale whatsoever for registering or using the disputed domain name. Therefore, there is sufficient evidence for this Panel to find that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain name was in bad faith, pursuant to paragraph 4(b)(iv) 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 Brian J. Winterfeldt
Sole Panelist
Date: July 14, 2020 <
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