The Complainants are Calvin Klein Inc., United States of America (“U.S.”), and Calvin Klein Trademark Trust, U.S. (collectively, the “Complainant”), represented by Kestenberg Siegal Lipkus LLP, Canada.
The Respondent is 颜文君 (Wen Jun Yan), China. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2021. On April 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 15, 2021, 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 April 15, 2021, 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 in English on April 16, 2021. The amended Complaint was accompanied by a Chinese translation. On April 15, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On April 16, 2021, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding. 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 in English and Chinese of the Complaint, and the proceedings commenced on April 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 12, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 17, 2021. The Center appointed Francine Tan as the sole panelist in this matter on June 1, 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 The Complainant is the owner of the CALVIN KLEIN trade mark which it has used in the U.S. since as early as 1968. The mark has also been registered in the U.S. and throughout the world. In the U.S., the Complainant owns Registration Nos. 1,633,261 (registered January 29, 1991) and 1,086,041 (registered February 21, 1978) for the CALVIN KLEIN trade mark. The Complainant also owns U.S. Trade Mark Registration Nos. 2,069,292 for CK CALVIN KLEIN JEANS (registered on June 10, 1997) and 5,438,800 for CK CALVIN KLEIN PERFORMANCE (registered on April 3, 2018). The Complainant has engaged in the production, sale and licensing of men’s and women’s apparel, fragrances, accessories, and footwear under the CALVIN KLEIN trade mark. The Complainant’s use of the CALVIN KLEIN trade mark has resulted in millions of customers worldwide and billions of dollars in sales. The Complainant has, over the years, expended millions of dollars in advertising and promoting its CALVIN KLEIN-branded products. The Complainant is the owner of a number of domain name registrations which incorporate the CALVIN KLEIN trade mark. These include The disputed domain names were registered in March and April 2021. 5. Parties’ Contentions A. Complainant The disputed domain names are confusingly similar to the CALVIN KLEIN trade mark in which the Complainant has rights. The CALVIN KLEIN trade mark is well known across the world, as a result of the Complainant’s extensive promotional efforts, advertising expenditures and sponsorship activities. The disputed domain names incorporate the Complainant’s CALVIN KLEIN trade mark in its entirety. The incorporation of the words “jeans”, “underwear” and “performance” adds to the confusion, given that the Complainant has maintained a significant presence in the fashion and active wear space and many prominent department stores have carried Calvin Klein Jeans, Calvin Klein Underwear and Calvin Klein Performance active wear for decades. The Respondent has no rights or legitimate interests in the disputed domain names. The Complainant’s first use and first registration of its CALVIN KLEIN mark long predate any use the Respondent may have made of the disputed domain names. The Respondent’s registrations of the disputed domain names wholly incorporating the famous CALVIN KLEIN mark are not supported by any rights or legitimate interests. The Respondent is not commonly known by the name “Calvin Klein”. The Complainant has not authorized nor licensed the Respondent to use or register domain names which incorporate the CALVIN KLEIN trade mark. The Respondent registered and is using the disputed domain names in bad faith. As at the time of filing the Complaint and amended Complaint, the disputed domain names resolved to inactive webpages. The Respondent is a cybersquatter, being associated with approximately 828 domain names featuring similar naming patterns, the majority of which incorporate a famous or well-known trade mark. Examples include: The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Preliminary Issue: Language of the Proceeding The language of the Registration Agreement is Chinese. The Complainant requested that English apply as the language of the proceeding. The disputed domain names are in the English language and contain English names and English words. There is no Chinese script featured in the disputed domain names. The Respondent did not respond to the issue of the language of the proceeding, nor did he object to the use of English as the language of the proceeding. Paragraph 10(c) of the Rules states that “[t]he Panel shall ensure that the administrative proceeding takes place with due expedition”. Paragraph 11(a) of the Rules provides that “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Panel is satisfied that it would be appropriate for English to be the applicable language for the proceeding. The Respondent appears to be familiar with the English language, seeing that the disputed domain names and the Respondent’s portfolio of other domain name registrations include those which relate to famous brands originating from the U.S. and Europe in combination with English words. The choice of the generic Top-Level Domains “.shop” and “.store” are also indicators that the Respondent is familiar with the English language. Taking into account paragraph 10(c) of the Rules and the Respondent’s failure to respond, the Panel finds it appropriate to accept English as the language of the proceeding. 6.2 Substantive Issues A. Identical or Confusingly Similar The disputed domain names all comprise the trade mark CALVIN KLEIN and the descriptive words “jeans”, “underwear” or “performance”. The Complainant has established it has trade mark rights in CALVIN KLEIN as well as in CALVIN KLEIN JEANS, CK CALVIN KLEIN UNDERWEAR and CK CALVIN KLEIN PERFORMANCE. The Panel therefore finds that the disputed domain names are identical and confusingly similar to the said trade marks in which the Complainant has rights. The inclusion of the respective descriptive words does not serve to remove the confusing similarity with the CALVIN KLEIN trade mark. The Panel therefore finds that the first element of paragraph 4(a) of the Policy has been satisfied. B. Rights or Legitimate Interests The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant has trade mark rights in CALVIN KLEIN which predate the registration of the disputed domain names by many years. The Respondent is not an authorized distributor or retailer of CALVIN KLEIN-branded goods, nor has he been authorized by the Complainant to use the CALVIN KLEIN trade mark in a domain name. Neither is there evidence that the Respondent is commonly known by the disputed domain names. The Respondent failed to rebut the Complainant’s prima facie case. The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain names. The second element of paragraph 4(a) of the Policy has been satisfied. C. Registered and Used in Bad Faith The Panel finds that the Complainant has met its burden of proving that the disputed domain names were registered and are being used in bad faith. The fact that the disputed domain names comprise a combination of the Complainant’s CALVIN KLEIN mark and the descriptive words “jeans”, “performance” and “underwear” reflects that the Respondent is very familiar with the Complainant and/or its CALVIN KLEIN and other CALVIN KLEIN-formative trade marks. The registration of the disputed domain names reflects opportunistic bad faith by the Respondent. Although the disputed domain names do not resolve to any active website, that does not prevent a finding of bad faith use and registration. Section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition states that factors which can be considered in applying the “passive holding doctrine” include, inter alia: (i) the degree of distinctiveness or reputation of the complainant’s mark, The Respondent did not file any response or rebuttal evidence, which is no surprise in view of the numerous domain names he has been hoarding, a substantial number of which incorporate the famous trade marks of other brand owners. The Policy is intended to deal with such a typical case of cybersquatting. In view of the worldwide fame of the CALVIN KLEIN trade mark, there is no plausible good faith use to which the disputed domain names may be put. The Panel therefore concludes that the disputed domain names have been registered and used in bad faith. The third element of paragraph 4(a) of the Policy has been satisfied. 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 Francine Tan
(ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and
[…]
(iii) the implausibility of any good faith use to which the domain name may be put.
Sole Panelist
Date: June 10, 2021
Full & Egal Universal Law Academy