ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Calvin Klein Trademark Trust and Calvin Klein, Inc. v. PKHAKADZE VAKHTANG Case No. D2022-3047 1. The Parties The Complainants are Calvin Klein Trademark Trust and Calvin Klein, Inc. (hereinafter jointly referred to as the "Complainant"), United States of America ("United States"), represented by Kestenberg Siegal Lipkus LLP, Canada. The Respondent is PKHAKADZE VAKHTANG, United Arab Emirates. 2. The Domain Name and Registrar The disputed domain name is registered with Dynadot, LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 18, 2022. On August 18, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 19, 2022, 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 August 22, 2022, 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 August 23, 2022. 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 6, 2022. In accordance with the Rules, paragraph 5, the due date for Response was September 26, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 5, 2022. page 2 The Center appointed Tuukka Airaksinen as the sole panelist in this matter on October 25, 2022. 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 a well-known international fashion label that is engaged in the production, sale and licensing of men's and women's apparel, fragrances, accessories, and footwear, among other things, all under the CALVIN KLEIN mark. The first Complainant is the registered owner, and the second Complainant is the beneficial owner, of the trademark CALVIN KLEIN, which it has used since 1968. The Complainant's trademark is registered inter alia in the United States under No. 1086041 as of February 21, 1978. The disputed domain name was registered on August 12, 2022 and currently resolves to an error page. 5. Parties' Contentions A. Complainant The Complainant's trademark has been used since 1968 and is a well-known and famous trademark in the field of clothing. The Complainant's products are sold through the Complainant's own retail stores, outlet stores and websites including "www.calvinklein.com", and through authorized dealers. The disputed domain name incorporates the Complainant's trademark in its entirety, along with the term "franchisee". The addition of the term "franchisee" intensifies the confusion because it may mislead consumers to believe that the disputed domain name is associated with the Complainant. The Respondent has no rights or legitimate interests in the disputed domain name. The disputed domain name was registered more than fifty years after the Complainant started using its trademark. The Respondent's registration of a domain name wholly incorporating a famous trademark is not supported by legitimate interests. The disputed domain name is not used in connection with bona fide offering of goods or services or legitimate noncommercial use. The disputed domain name has no active website currently. The Complainant has not authorized the Respondent to use the Complainant's trademark in connection with any services on the disputed domain name. The Respondent is diverting Complainant's customers seeking information about the Complainant to an inactive website. The Complainant has no control over the disputed domain name. The passive use of the disputed domain name amounts to bad faith. The MX records of the disputed domain name suggest that there is an increased risk that the Respondent may be sending fraudulent email communications impersonating the Complainant for phishing purposes. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings In order to obtain the transfer of a domain name, a complainant must prove the three elements of paragraph 4(a) of the Policy, regardless of whether the respondent files a response to the complaint or not. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which page 3 the complainant has rights. The second element a complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. The third element a complainant must establish is that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires that the Complainant establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark. According to section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), "[t]he 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". Furthermore, "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. The nature of such additional term(s) may however bear on assessment of the second and third elements". See section 1.8 of the WIPO Overview 3.0. The disputed domain name is confusingly similar to the Complainant's trademark as it includes the Complainant's trademark entirely combined with the term "franchisee". This does not prevent a finding of confusing similarity between the Complainant's trademark and the disputed domain name. This means that the disputed domain name is confusingly similar with the Complainant's trademark and hence the first element of the Policy has been fulfilled. B. Rights or Legitimate Interests Paragraph 4(a)(ii) of the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests to the disputed domain name. It is widely accepted among UDRP panels that once a complainant has made a prima facie showing indicating the absence of the respondent's rights or legitimate interests in a disputed domain name the burden of production shifts to the respondent to come forward with evidence of such rights or legitimate interests. If the respondent fails to do so, the complainant is deemed to have satisfied the second element of the Policy. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270, and section 2.1 of the WIPO Overview 3.0. The Complainant has credibly submitted that the Respondent is neither affiliated with the Complainant in any way nor has it been authorized by the Complainant to use and register the disputed domain name, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and is not commonly known by the disputed domain name in accordance with paragraph 4(c) of the Policy. Moreover, the Panel finds that the composition of the disputed domain name carries a risk of implied affiliation with the Complainant's trademark. See section 2.5.1 of the WIPO Overview 3.0. Accordingly, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. Considering the Panel's findings below, the Panel finds that there are no other circumstances that provide the Respondent with any rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the second element of the Policy is fulfilled. page 4 C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: "(i) circumstances indicating that [the respondent has] registered or ha[s] 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) [the respondent has] 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) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] web site 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] web site or location or of a product or service on [the respondent's] web site or location." The Panel agrees that the Complainant's trademark is a well-known trademark and that the disputed domain name is confusingly similar to it. Hence, the Respondent must have been aware of the Complainant and its trademark when registering the disputed domain name. See section 3.1.4 of the WIPO Overview 3.0. UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or well-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. This is particularly so with domain names that are inherently misleading. See section 3.1.4 of the WIPO Overview 3.0. The disputed domain name resolves to an error page. Accordingly, the disputed domain name is not in active use, see e.g., Accenture Global Services Limited v. Domain eRegistration, WIPO Case No. D2018-1994. This, however, does not prevent the finding of bad faith under the doctrine of passive holding. See section 3.3 of WIPO Overview 3.0. Considering that the Complainant's trademark is well known, that the disputed domain name is confusingly similar to it, that the Respondent has not responded to the Complaint, and that the Respondent has used a privacy protection service to conceal its identity, the Panel has found that there are no obvious good faith or legitimate uses to which the disputed domain name may be put. Therefore, the Panel considers, on balance, that the disputed domain name has been registered and is being used in bad faith. Therefore, the Panel finds that the third element of the Policy is fulfilled. page 5 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, , be transferred to the Complainant. /Tuukka Airaksinen/ Tuukka Airaksinen Sole Panelist Date: November 8, 2022
Full & Egal Universal Law Academy