The Complainants are Calvin Klein Trademark Trust (the “first Complainant”) and Calvin Klein Inc. (the “second Complainant”) of New York, New York, United States of America, represented by Kestenberg Siegal Lipkus LLP, Canada.
The Respondent is liu mei lin, liu mei lin of Changde, Hunan, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2015. On December 18, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 21, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On December 22, 2015, the Center transmitted an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainants submitted a translated Complaint into Chinese and also requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the 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 both Chinese and English, and the proceeding commenced on December 30, 2015. In accordance with the Rules, paragraph 5, the due date for Response was January 19, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 20, 2016.
The Center appointed Francine Tan as the sole panelist in this matter on January 26, 2016. 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 first Complainant, Calvin Klein Trademark Trust, is a business trust organized under the laws of Delaware. It is the registered owner of the CALVIN KLEIN trade marks that are the subject matter of this proceeding. The second Complainant, Calvin Klein, Inc., is the beneficial owner of the trade marks owned by the first Complainant. (The first and second Complainants are collectively referred to hereinafter as the “Complainant”.)
The Complainant has been engaged in the production, sale and licensing of men’s and women’s apparel, fragrances, accessories, and footwear, etc., all under the CALVIN KELIN trade mark. The Complainant owns United States of America trade mark registrations for its CALVIN KLEIN marks in connection with apparel and other merchandise.
The Complainant owns a number of domain name registrations which wholly incorporate the CALVIN KLEIN trade mark including , , and . The Complainant states it has used and continues to use these domain names in connection with various websites which provide information about the Complainant and its products and services, and from which it offers products for sale.
The disputed domain name was registered on August 28, 2015. 5. Parties’ Contentions A. Complainant
The Complainant has used the CALVIN KLEIN mark continuously since at least as early as 1968 in connection with the advertising, offering for sale, and sale of its various products in the United States of America and elsewhere, including in China where the Respondent is located.
The Complainant’s use of the CALVIN KLEIN trade marks has resulted in millions of customers worldwide and billions of dollars in sales. The CALVIN KLEIN trade mark has been used prominently, continuously and exclusively in connection with the Complainant. The CALVIN KLEIN marks are famous and have been for many years. Over the years, the Complainant has expended millions of dollars in advertising and promoting its products under its CALVIN KLEIN trade mark in a variety of media. The Complainant has advertised its CALVIN KLEIN marks, inter alia, through direct mail and on the Internet, including on the websites associated with its domain names.
Since the Complainant’s “www.” website was first launched in 1997, it has received hundreds of millions of visitors seeking information about the Complainant’s Calvin Klein products. The Complainant’s Calvin Klein products are sold exclusively through the Complainant’s own retail stores, outlet stores and websites and through authorized dealers.
Through the Complainant’s extensive promotional efforts, advertising expenditures and sponsorship activities, the Complainant has been successful in educating the public to associate the CALVIN KLEIN trade mark with the Complainant’s products since long before the time that the Respondent registered the disputed domain name.
In relation to paragraph 4(a)(i) of the Policy: the disputed domain name is confusingly similar to the Complainant’s CALVIN KLEIN trade mark in which it has rights. The disputed domain name incorporates the Complainant’s CALVIN KLEIN trade mark in its entirety. The extension “.pw” is not to be taken into consideration when examining the identity or similarity between the Complainant’s trade mark and the disputed domain name. Further, since Calvin Klein fashion merchandise is marketed to professionals, “.pw” likely adds to confusion since the country code Top-Level Domain infers a relationship between the two: although “.pw” is the territory code belonging to Palau, it is expressly marketed as the “professional web”.
In relation to paragraph 4(a)(ii) of the Policy: the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant’s first use and first registration of its CALVIN KLEIN mark predate any use the Respondent may have made of the disputed domain name as a trade name, domain name, mark, or common name. The disputed domain name was registered more than 30 years after the Complainant first used its CALVIN KLEIN marks. The Complainant registered its domain names and began operating its websites (e.g., “www.” and “www.”) several years before the Respondent registered the disputed domain name. The Respondent was aware of the Complainant’s domain names and websites associated with the same before it registered the disputed domain name because the Complainant’s sites were operational, and thus easily accessible to the Respondent. The Respondent’s registration of a domain name wholly incorporating a famous mark is not supported by legitimate interests. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. The disputed domain name is currently operating as a pay-per-click website. The disputed domain name contains links to several listings, including links to counterfeit Calvin Klein merchandise and several competitors’ merchandise. The Complainant has not authorized or licensed the Respondent to use the CALVIN KLEIN trade mark in connection with any services on the disputed domain name. The Respondent has no proprietary rights or legitimate interest in the trade mark CALVIN KLEIN or the disputed domain name because the Respondent is not commonly known by that name.
In relation to paragraph 4(a)(iii) of the Policy: the Respondent registered and is using the disputed domain in bad faith. The Respondent is diverting the Complainant’s customers or potential customers seeking information about the Complainant to the Respondent’s website which includes links to counterfeit Calvin Klein merchandise. Many Internet users rely on the web browser’s URL to seek information about authorized sources of information and merchandise. The disputed domain name will divert Internet users to unauthorized sources of merchandise bearing the CALVIN KLEIN trade mark having no affiliation with or to the Complainant. The disputed domain name contains links to several websites including, but not limited to, websites containing merchandise of the Complainant’s competitors. The Respondent’s registration of the disputed domain name was done solely to prevent the Complainant from registering the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of the Proceeding
The Registration Agreement in relation to the disputed domain name is Chinese. The Complainant filed a Chinese translation of the Complaint upon receipt of the Center’s email communication of December 22, 2015, but requested that English be the language of the proceeding. The reasons given were that the IP location of the disputed domain name is based in San Jose, California; the disputed domain name links to a website which includes descriptions of brands and headings in the English language; and the disputed domain name has been registered in the English language.
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”.
Paragraphs 10(b) and (c) of the Rules stipulate that:
“In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case”
“The Panel shall ensure that the administrative proceeding takes place with due expedition. […]”
Having considered the circumstances of this case, the Panel determines that English should be the language of the proceeding.
The Panel notes that all of the Center’s communications to the parties have been transmitted in both English and Chinese and the Complainant has also made the effort of providing a Chinese translation of the Complaint. It is the Panel’s assessment that the Respondent has been given a fair opportunity to present its case and to respond, both to the proceeding and the ancillary issue of the language of the proceeding. In respect of both, the Respondent chose not to. In the circumstances, and with a view to ensuring that the administrative proceeding take place with due expedition, the Panel accepts the Complainant’s request and determines that it would be appropriate for English to be the language of the proceeding. There is nothing to suggest that the Respondent has been or will be prejudiced thereby. B. Identical or Confusingly Similar
The Complainant has established it has rights to the CALVIN KLEIN trade mark. The entire mark has been incorporated in the disputed domain name.
The Panel accordingly finds that the disputed domain name is identical to the Complainant’s CALVIN KLEIN trade mark.
Paragraph 4(a)(i) of the Policy has been satisfied. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out specific circumstances (non-exhaustive) whereby a respondent can demonstrate it has rights or legitimate interests in a domain name in dispute. They are:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel is persuaded that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not granted any licence or authorization to the Respondent to use or register the CALVIN KLEIN mark, nor is there any affiliation between them. The Respondent thus has the burden of producing evidence to refute the Complainant’s assertions. However, it has not done so. The Respondent’s failure to respond in this proceeding is a telltale sign and strongly indicative of its lack of rights or legitimate interests in the disputed domain name.
The Panel accordingly finds that the Complainant has established that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(a)(ii) of the Policy has been satisfied. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy cites examples of four circumstances that, 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 has 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 trade mark 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 its web site or other on-line 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 respondent’s web site or location.
It is evident from the evidence submitted that the Respondent is well-acquainted with the Complainant and its CALVIN KLEIN trade mark. The fame of the CALVIN KLEIN trade mark and the manner in which the Respondent has used the disputed domain name are strong indicators that the Respondent has, by using the disputed domain name, acted in bad faith and “intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [its] web site or location or of a product or service on [its] web site or location”. The ultimate aim of the Policy is to address the problem of cybersquatting. The Panel finds this to be such a case.
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy. 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.
Francine Tan
Sole Panelist
Date: January 27, 2016
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