Complainants are Calvin Klein Trademark Trust and Calvin Klein, Inc., United States of America (hereinafter “USA” or “U.S.”), represented by Kestenberg Siegal Lipkus LLP, Canada.
Respondent is Chen Zong Zheng (陈宗正), China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2020. On December 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 18, 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 Complainants on December 18, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainants to submit an amendment to the Complaint. Complainants filed the amended Complaints in English and Chinese on December 18, 2020. On December 18, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. Although Complainants provided an amended Complaint in Chinese, Complainants confirmed the request that English be the language of the proceeding on December 18, 2020. Respondent did not comment on the language of the proceeding. The Center verified that the Complaint together with the amended Complaints 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 in English and Chinese of the Complaint, and the proceedings commenced on January 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 8, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 9, 2021. The Center appointed Yijun Tian as the sole panelist in this matter on March 4, 2021. 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 A. Complainant Complainants, Calvin Klein Trademark Trust and Calvin Klein, Inc., were incorporated in the USA. Complainant, Calvin Klein Trademark Trust, is the registered owner of the trademarks CALVIN KLEIN. Complainant, Calvin Klein, Inc., is the beneficial owner of the trademarks which are used by it for a variety of merchandise. For the purposes of this Decision, Complainants are hereinafter referred to as “Complainant”. Complainant has been engaged in the production, sale and licensing of men’s and women’s apparel, fragrances, accessories, and footwear, among other things. Complainant has registered a number of trademarks for CALVIN KLEIN in various jurisdictions, including trademark registrations in the U.S. (the trademark registration number 1086041, registered February 21, 1978), trademark registrations in China (the trademark registration number 1681239, registered December 14, 2001), and trademark registrations in the European Union (the trademark registration number 617381, registered January 29, 1999). Complainant also owns numerous domain names, which contain the CALVIN KLEIN marks, such as Respondent is Chen Zong Zheng (陈宗正), China. Respondent registered the disputed domain name Complainant contends that the disputed domain name is confusingly similar to the CALVIN KLEIN marks. Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. Complainant contends that Respondent’s registration and use of the disputed domain name is in bad faith.. Complainant requests that the disputed domain name Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons: (a) The disputed domain name is in the English language; (b) The generic Top-Level Domain (“gTLD”) is in the English language. Later, Complainant provided a translated version of the amended Complaint in Chinese but Complainant confirmed its request that English be the language of the proceeding. Respondent did not comment on the language of the proceeding, nor did he object to the use of English as the language of the proceeding. Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) further states: “Noting the aim of conducting the proceedings with due expedition, paragraph 10 of the UDRP Rules vests a panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case. Against this background, panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.” (WIPO Overview 3.0, section 4.5.1; see also L’Oreal S.A. v. MUNHYUNJA,WIPO Case No. D2003-0585). On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker. However, considering the following circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in his or her ability to articulate the arguments for this case. The Panel notes in particular that: (a) the disputed domain name (b) Complainant is a company from the USA, and Complainant will be spared the burden of working in Chinese as the language of the proceeding; (c) the Center has notified the language of the proceeding to the Parties in both Chinese and English, however Respondent did not comment on the language of the proceeding; (d) Complainant has provided a Chinese translation of the amended Complaint; (e) the Center has notified Respondent of the proceeding in both Chinese and English, and informed Respondent that it would accept a Response in either English or Chinese, however Respondent has chosen not to file a Response in this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English. 6.2. Substantial Issues Paragraph 4(a) of the Policy requires that Complainant prove each of the following three elements to obtain an order that the disputed domain name should be transferred: (i) The disputed domain name registered by Respondent 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 has been registered and is being used in bad faith. On the basis of the evidence introduced by Complainant and in particular with regards to the content of the relevant provisions of the Policy (paragraphs 4(a) - (c)), the Panel concludes as follows: A. Identical or Confusingly Similar The Panel finds that Complainant has rights in the CALVIN KLEIN marks acquired through registration. The CALVIN KLEIN marks have been registered worldwide including registrations in the U.S., China, as well as the European Union. The disputed domain name “The applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. The practice of disregarding the TLD in determining identity or confusing similarity is applied irrespective of the particular TLD (including with regard to ‘new gTLDs’) […].” (WIPO Overview 3.0, section 1.11). Thus, the Panel finds that disregarding the gTLD suffix “.fit”, the disputed domain name is identical to the CALVIN KLEIN marks. The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name: (i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) Respondent has been commonly known by the disputed domain name, even if Respondent has acquired no trademark or service mark rights; or (iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s trademarks. The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; WIPO Overview 3.0, section 2.1 and cases cited therein). According to the Complaint, Complainant is a leading company that engaged in the production, sale and licensing of men’s and women’s apparel, fragrances, accessories, and footwear, among other things. Complainant’s 40-plus years of uninterrupted use of the CALVIN KLEIN trademark has resulted in millions of customers worldwide and billions of dollars in sales. Complainant has registered trademark rights in CALVIN KLEIN in the European Union since 1999, in China since 2001, and in the U.S. since 1978, which long precede Respondent’s registration of the disputed domain name (in 2020). Moreover, Respondent is not an authorized dealer of Calvin Klein-branded products or services. The Panel finds that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifts the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610; Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455). Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name: a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the words “calvin klein” in the disputed domain name. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the CALVIN KLEIN marks or to apply for or use any domain name incorporating the CALVIN KLEIN marks, and Respondent has, through the use of an identical domain name, created a likelihood of confusion with the CALVIN KLEIN marks. b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name in 2020, long after the CALVIN KLEIN marks became internationally known. The disputed domain name is identical or confusingly similar to Complainant’s CALVIN KLEIN marks. c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. The website resolved by the disputed domain name is currently inactive. The Panel finds that Respondent has failed to produce any evidence to rebut Complainant’s prima facie showing on Respondent’s lack of rights or legitimate interests in the disputed domain name. Moreover, the nature of the disputed domain name carries a high risk of implied affiliation with Complainant (WIPO Overview 3.0, section 2.5.1). The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely: (i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or (ii) Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or (iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on the website or location. Registration in Bad Faith The Panel finds that Complainant has a widespread reputation in the CALVIN KLEIN mark with regard to its products. Complainant has registered its CALVIN KLEIN mark internationally, including registration in the U.S. (since 1978) and registration in China (since 2001). As mentioned above, Complainant’s 40-plus years of uninterrupted use of the CALVIN KLEIN trademark has resulted in millions of customers worldwide and billions of dollars in sales. Therefore, it is not conceivable that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the disputed domain name (in 2020). The Panel therefore finds that the CALVIN KLEIN mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra). Thus, the Panel concludes that the disputed domain name was registered in bad faith. Use in Bad Faith The disputed domain name As discussed above, Complainant’s CALVIN KLEIN marks are widely known particularly in the fashion industry. Taking into account all the circumstances of this case, the Panel concludes that the current inactive use of the disputed domain name by Respondent is also in bad faith. In summary, in the absence of evidence to the contrary from Respondent, the choice of the disputed domain name that is identical or confusingly similar to Complainant’s well-known trademarks and the non-use of the disputed domain name are indicative of registration and use of the disputed domain name in bad faith. The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy. 7. Decision For all 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 Yijun Tian
Sole Panelist
Dated: March 28, 2021
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