The Complainants are Calvin Klein Trademark Trust and Calvin Klein, Inc., (collectively, the “Complainant”) United States of America (“United States”), represented by Kestenberg Siegal Lipkus LLP, Canada.
The Respondent is Huang Yan Liang (黄彦亮), HeFei ShuShan District Big Platano Network Application Studio (合肥市蜀山区大香蕉网络应用工作室), China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) in English on June 24, 2021. On June 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 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 June 28, 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 and Chinese on June 28, 2021. On June 28, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On June 28, 2021, the Complainant confirmed its request that English be the language of the proceeding. On June 29, 2021, the Respondent requested that Chinese be 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 of the Complaint in English and Chinese, and the proceeding commenced on July 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 25, 2021. The Respondent did not file a formal Response, but sent an email communication to the Center on July 8, 2021. The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on August 3, 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 The Complainant Calvin Klein Trademark Trust is a business trust organized under the laws of Delaware in the United States and the registered owner of the trade mark CALVIN KLEIN (the “Trade Mark”). The Complainant Calvin Klein, Inc. is a company incorporated in Delaware in the United States and the beneficial owner of the Trade Mark. The Complainant has since 1968 registered and used the Trade Mark in the United States and worldwide. The Complainant Calvin Klein Trademark Trust is the owner of numerous registrations in jurisdictions worldwide for the Trade Mark, including United States Registration No. 1,086,041, with a registration date of February 21, 1978. B. Respondent The Respondent is an individual resident in China. C. The Disputed Domain Name The disputed domain name was registered on July 29, 2017. D. Use of the Disputed Domain Name According to the evidence submitted by the Complainant, the disputed domain name was previously resolved to a “404 Not Found, web maintenance” web page, but by clicking on the “back to home page” icon on the web page, Internet users were redirected to an English language website promoting and making available for download Apps for circumventing intellectual property protection under the website banner “CALVINKLEIN_Helping overseas Chinese to lift IP geographical restrictions [Official website]” and the heading “The official unlocking tool for the European Cup live broadcast” (the “Website”). The disputed domain name is currently not resolved to any active website. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is identical or confusingly similar to the Trade Mark; the Respondent has no rights or legitimate interests in respect of the disputed domain name; and the disputed domain name has been registered and is being used in bad faith. B. Respondent The Respondent contends that the evidence of the Website submitted by the Complainant is false evidence and denies having ever resolved the disputed domain name to the Website. The Respondent also accuses the Complainant’s representatives and the Registrar of collusion and asks that the Center put the Complainant’s agency on a blacklist. The Respondent submits further that, if the Trade Mark is well-known worldwide, including in China, then the Complainant should have taken steps to register the disputed domain name itself. 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(a), in the absence of an agreement between the Parties, or unless specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. 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 order to ensure fairness to the Parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the Parties and undue delay to the proceeding. The Complainant has requested that the language of the proceeding be English, for the following reasons: (i) the disputed domain name includes Latin characters and does not contain Chinese script; (ii) “.cc” is the country code Top-Level Domain (“ccTLD”) for the Cocos (Keeling) Islands, an Australian territory. Though there is no official language in Cocos Island, spoken languages are predominantly Malay and English, and English is the de facto language of communication in government; (iii) the Amended Complaint has been submitted in both English and Chinese language; and (iv) it would be fair that the language of proceeding be in English and not prejudicial to either of the Parties. The Respondent has requested that the language of the proceeding be Chinese, consistent with the language of the Registration Agreement. The Respondent also requested the Complainant to file further evidence and submissions in support of its language request, and submitted that the Chinese language version of the Amended Complaint was apparently translated using online translation tools. In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, prejudice to either of the Parties, time and costs. The Panel notes that, according to the evidence filed by the Complainant, the disputed domain name was previously indirectly resolved to an English language Website. Furthermore, although the Respondent takes issue with the Chinese version of the Amended Complaint, the Panel notes the Respondent has in any event been able to file his informal response in Chinese language. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be significantly prejudiced, should English be adopted as the language of the proceeding. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English. 6.2. Substantive Elements of the Policy The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail. A. Identical or Confusingly Similar The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration. Disregarding the ccTLD for Cocos (Keeling) Islands “.cc”, the disputed domain name is identical to the Trade Mark. The Panel therefore finds that the disputed domain name is identical to the Trade Mark and that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name: (i) before any notice to the respondent of the dispute, the respondent’s use 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) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the respondent has acquired no trade mark or service mark rights; or (iii) the 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 the trade mark or service mark at issue. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption. The Respondent has failed to show that he has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, according to the evidence submitted by the Complainant, the disputed domain name has been used in respect of the Website, to promote and provide for download apps for unlawfully circumventing intellectual property rights. The Panel does not find the Respondent’s submissions with respect to the Website convincing and notes in particular that the Respondent has provided no evidence to support its serious assertion that the Complainant has submitted false evidence. Even if the Respondent’s denials in respect of the Website are to be believed, then the disputed domain name has not been used for any active website. There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name; and there has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. In addition, the panel notes that “.cc” is the ccTLD for the Cocos (Keeling) Islands, but there is no evidence before the Panel to suggest that the Respondent, a Chinese national, has anything to do with the Cocos (Keeling) Islands. The Panel notes that the disputed domain name is identical to the Trade Mark, and carries a high risk of implied affiliation. The Panel finds that the Respondent has failed to produce any evidence to rebut the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Respondent lacks rights or legitimate interests in the disputed domain name and that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Given the notoriety of the Complainant and of its Trade Mark in the clothing and fashion field; the distinctiveness of the Trade Mark; the fact the Trade Mark has no meaning in the Chinese language; the fact the disputed domain name is identical to the Trade Mark; the lack of any connection between the Respondent and the Cocos (Keeling) Islands; and the lack of any substantiated credible explanation from the Respondent, the Panel finds, in all the circumstances, that the requisite element of bad faith has been made out. The Panel considers it is inconceivable the Respondent was not aware of the Complainant’s Trade Mark at the time he registered the disputed domain name. Furthermore, even if the Respondent is to be believed and the disputed domain name has not been used in respect of the Website, the Panel considers there is no plausible actual or contemplated active use of the disputed domain name that would not be illegitimate and constitute an infringement of the Complainant’s rights in the Trade Mark. For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. 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 Sebastian M.W. Hughes
Sole Panelist
Dated: August 17, 2021
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