The Complainant is Calvin Klein Trademark Trust & Calvin Klein, INC., United States of America (“United States” or “US”), represented by Kestenberg Siegal Lipkus LLP, Canada.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / [?? ?], China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 25, 2021. On August 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 25, 2021, 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 September 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 on September 17, 2021.
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 September 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 10, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 25, 2021.
The Center appointed Petra Pecar as the sole panelist in this matter on November 9, 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 BackgroundThe Complainant is the owner of the CALVIN KLEIN trademark, which it has used in the United States since as early as 1968. The trademark has been registered in the United States and throughout the world. The Complainant owns, inter alia, US trademark registrations for CALVIN KLEIN No. 1,086,041, registered on February 21, 1978 and No. 1,633,261, registered on January 29, 1991.
The Complainant uses the CALVIN KLEIN trademarks in connection with, among other things, the production, sale and licensing of men’s and women’s apparel, fragrances, accessories, and footwear. The Complainant’s use of the CALVIN KLEIN trademark 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 in a variety of media throughout the world, including print, television and radio advertisements.
The Complainant is the owner of a number of domain name registrations which incorporate the CALVIN KLEIN trademark, including
The disputed domain name was registered on July 2, 2021 and the same resolves to a Shopify parking page.
5. Parties’ Contentions A. ComplainantAccording to the Complainant, the disputed domain name incorporates the CALVIN KLEIN trademark in its entirety and includes a hyphen to separate CALVIN KLEIN from the word “store”. The CALVIN KLEIN trademark is well-known across the world as a result of the Complainant’s extensive promotional efforts, advertising expenditures and sponsorship activities. The incorporation of the word “store” adds to the confusion, given that it is closely related to the Complainant’s activities (the Complainant operates both physical and online stores) and that the Complainant also owns the domain name
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant’s first use and registration of its CALVIN KLEIN trademark occurred more than fifty years before the Respondent may have made any use of the disputed domain name. The Respondent’s registration of the disputed domain name incorporating the famous CALVIN KLEIN trademark is not supported by any rights or legitimate interests: the Respondent is not commonly known by the name CALVIN KLEIN nor has the Complainant authorized the Respondent to use or register a domain name which incorporates the CALVIN KLEIN trademark.
Finally, the Complainant submits that the Respondent registered and is using the disputed domain name in bad faith. The Respondent is diverting the Complainant’s customers or potential customers seeking information about the Complainant to a parked Shopify page. Also, the disputed domain name can be used to divert Internet users to a website that the Respondent may activate in the future without the Complainant’s authorization. The Complainant provides further evidence that the Respondent’s email address is associated with additional websites that appear to be infringing on other rights holders’ marks in the respective domains. The Complainant also submits that the Respondent’s registration of the disputed domain name was solely done to prevent the Complainant from registering the domain name, has been inactive since registration, and was acquired for the purpose of selling the disputed domain name for a considerable amount in excess of any out-of-pocket expenses.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsUnder paragraph 4(a) of the Policy, to succeed the Complainant must demonstrate that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the 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.
A. Identical or Confusingly SimilarParagraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. A trademark registration provides a clear indication that the rights in the trademark belong to the Complainant (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.2.1).
The Complainant has provided evidence of its rights in the trademark CALVIN KLEIN on the basis of its trademark registrations in the United States and has indicated that it owns a number of other registrations throughout the world. All of these CALVIN KLEIN trademarks were duly registered long before the Respondent registered the disputed domain name on July 2, 2021.
The disputed domain name consists of the Complainant’s trademark CALVIN KLEIN, together with the descriptive term “store”, presumably in reference to the Complainant’s activities (as the Complainant is the owner of both physical and online stores), a hyphen and the applicable generic Top-Level Domain (“gTLD”) suffix “.com”. Because the Complainant’s CALVIN KLEIN trademark is clearly recognizable within the disputed domain name (additionally emphasized by the hyphen separating the word “store”), the Panel is of the opinion that the inclusion of the additional elements does not prevent a finding of confusing similarity.
There is a general consensus based on decisions by prior UDRP panels that the incorporation of a trademark in its entirety in a domain name can be sufficient to establish that the domain name is confusingly similar to the registered trademark. This is especially relevant when the other elements in the domain name are descriptive. As noted in WIPO Overview 3.0, section 1.8: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”
Finally, the gTLD “.com” does not generally preclude a finding of confusing similarity between the disputed domain name and the complainant’s trademarks in accordance with the well-established practice of previous UDRP panels (see, in particular, section 1.11 of the WIPO Overview 3.0). Therefore, the Panel holds that the combination of the Complainant’s trademark CALVIN KLEIN with the term “store”, separated by a hyphen, and the applicable gTLD suffix “.com” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s CALVIN KLEIN trademark, which remains clearly recognizable in the disputed domain name.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights, meaning that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsIn accordance with paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel finds that there is no relationship, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Panel also finds that there is no indication that the Respondent is commonly known by the disputed domain name. The Respondent is not an authorized distributor or retailer of CALVIN KLEIN-branded goods, nor has it been authorized by the Complainant to use the CALVIN KLEIN trademark in a domain name. Due to its failure to respond to the Complaint, the Respondent failed to provide any evidence indicating otherwise.
Furthermore, the Respondent appears to be engaged in a pattern of conduct in using trademarks of third parties in domain names. As indicated by the Complainant, the email address used by the Respondent for the registration of the disputed domain name is also associated with additional websites that appear to be infringing on other rights holders’ marks in the respective domain names. In accordance with section 2.5.2 of the WIPO Overview 3.0, such behavior cannot be observed as a “fair” use of a domain name to which the Respondent would be entitled or for which it would have a legitimate interest.
The disputed domain name resolves to a Shopify parking page indicating that the website will be completed soon. While the lack of content on the website to which the disputed domain name resolves does not necessarily represent illegitimate activity per se, the Panel finds that such activity does not confer any rights or legitimate interests in the disputed domain name either (see in particular Guinness World Records Limited v. Solution Studio,
WIPO Case No. D2016-0186). The Panel also finds that given the reputation of the CALVIN KLEIN trademark and its distinctiveness, it is difficult to imagine an actual use of the disputed domain name that would not be aimed at free riding on the reputation of the Complainant and its trademarks. For that reason, any use of such domain name would misleadingly divert consumers into thinking that the Respondent is, in some way, connected to, sponsored by or affiliated with the Complainant and its business, or that the Respondent’s activities are approved or endorsed by the Complainant.
Based on the foregoing reason, the Panel concludes that the Respondent deliberately chose to include the Complainant’s CALVIN KLEIN trademark in the disputed domain name in order to achieve commercial gain by misleading third parties, and that such use cannot be considered a legitimate, noncommercial or fair use.
Given the above, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy stipulates that any of the following circumstances, inter alia, shall be considered as evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.
The fact that the disputed domain name comprises a combination of the Complainant’s CALVIN KLEIN trademark and the descriptive word “store” reflects that the Respondent is very familiar with the Complainant and its CALVIN KLEIN trademark. With regard to the bad faith at the time of registration, the Panel notes that it is not likely that the Respondent was not aware of the Complainant and its CALVIN KLEIN trademark. On the contrary, the Panel finds that it is likely that the Respondent was aware of the Complainant and its rights and reputation in the CALVIN KLEIN trademark at the time the disputed domain name was registered. Therefore, the Panel holds that the disputed domain name was registered in bad faith.
The disputed domain name resolves to a Shopify parking page. The fact that the website was not completed and is not active does not prevent a finding of bad faith use and registration. In that sense, the Panel has made an assessment as to whether the lack of actual use of the disputed domain name can lead to a finding of bad faith against the Respondent. The doctrine of so-called “passive holding” where a disputed domain name resolves to a blank, “coming soon”, or similar page has been considered by numerous panels previously. In accordance with section 3.3. of the WIPO Overview 3.0, the relevant factors that should be taken into account when assessing the existence of bad faith in the passive holding of a domain name are the following: (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 concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. It should be borne in mind that it is not required that all the above-listed factors be present in order to establish bad faith use of the disputed domain name.
The Panel is of the opinion that in the case at hand, all factors described in section 3.3. of the WIPO Overview 3.0 are present to some extent: the Complainant’s CALVIN KLEIN trademark should be observed as a trademark that is sufficiently distinctive and that enjoys a fair degree of reputation throughout the world; the Respondent has failed to provide any response to the Complaint and has therefore failed to provide any justification for the registration and use of the disputed domain name; the Respondent has concealed its identity through a privacy shield; and it seems rather unlikely that even if the disputed domain name was put to actual use, such use would be in good faith. Based on the foregoing reasons, the Panel finds that the passive holding of the disputed domain name in the present case should be observed as use in bad faith.
The Panel concludes that the disputed domain name was registered and is being used in bad faith and that consequently, the Complainant has satisfied the requirement under paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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,
Petra Pecar
Sole Panelist
Date: November 23, 2021