The Complainants are Calvin Klein Trademark Trust and Calvin Klein Inc. of New York, New York, United States of America (“United States”), represented by Kestenberg Siegal Lipkus LLP, Canada.
The Respondent is Huang Jie of Beijing, China, self-represented.
The disputed domain name <calvinklein.ink> (the “Domain Name”) is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2017. On November 16, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 20, 2017, 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 November 20, 2017, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on the same day, but filed a Chinese translation of the Complaint on November 29, 2017. The Respondent submitted an email on November 20, 2017 indicating that it would like to cooperate with the Complainant. Accordingly, the Center informed the Parties that if they wish to explore settlement options, the Complainant should submit a request for suspension by November 25, 2017. On November 20, 2017, the Complainant confirmed that it would not settle with the Respondent. On November 22, 2017, the Respondent submitted a further email in Chinese.
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 in Chinese and English of the Complaint, and the proceedings commenced on November 30, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 20, 2017. The Respondent did not submit any formal response. Accordingly, on December 21, 2017, the Center informed the Parties of the commencement of panel appointment process.
The Center appointed Karen Fong as the sole panelist in this matter on January 2, 2018. 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.
The Complainant, an American headquartered organization, engages in the production, sale and licensing of apparel, fragrances, accessories and footwear through its group of companies under the trade mark CALVIN KLEIN. The CALVIN KLEIN trade mark has been used since 1968. The CALVIN KLEIN trade mark (the “Trade Mark”) is registered all over the world including the United States and China where the Respondent is based (e.g., United States trade mark registration number 1,086,041, registered on February 21, 1978). The Complainant has also a portfolio of domain name registrations comprising the Trade Mark including <calvinklein.com>, <calvinkleinbags.com>, <calvinkleinunderwear.com> and <calvinkleinfashion.com>.
The Complainant’s products are sold exclusively through its own retail stores, outlet stores and websites and through authorized dealers and national specialty stores. The Complainant has advertised and promoted its products extensively in a variety of media throughout the world including print, television and radio advertisements, sponsorship activities, direct mail and on the Internet. Its main website, “www.calvinklein.com” was launched in 1997.
The Respondent, a Chinese national, registered the Domain Name on October 6, 2017. The Domain Name is not connected to an active website. On October 11, 2017, the Complainant’s legal representatives wrote a cease-and-desist letter to the Respondent. An exchange of emails followed in which the Respondent indicated his willingness to transfer the Domain Name for a price commensurate to the value of the Trade Mark, which he considered to be far in excess of the out-of-pocket expenses associated to the registration of the Domain Name offered by the Complainant.
The Complainant contends that the Domain Name is identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not file a formal response to the Complaint. However in his emails to the Complainant and the Center to attempt to settle the matter, his case appears to be as follows:
- He is a fan of the Complainant’s products and therefore would not act in a way which would be detrimental to the Complainant. He also suggests that collecting CALVIN KLEIN domain names is a hobby of his.
While he acknowledges that the Complainant owns the Trade Mark, he has legal rights to the Domain Name which he acquired legally.
- He has seen no evidence that the Complainant’s legal representatives are authorized to act for the Complainant in this matter.
- He is willing to cooperate with the Complainant and share with them consumer information about the Chinese market.
- Any purchase of the Domain Name should be for a price which is more reasonable than the offer to reimburse out-of-pocket expenses
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese.
The Complainant submits that the language of the proceeding should be English. The Complainant contends that the Domain Name is in the English language. Further the Trade Mark, CALVIN KLEIN, has no meaning other than in the English language. The generic Top-Level Domain (“gTLD”) is “.ink”, an internet space for the tattoo industry, is also in the English language. The communications between the Complainant and the Respondent, prior to issuance of the Complaint were conducted in the English language which indicates that the Respondent is able to communicate in the English language.
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, time and costs.
The Panel accepts the Complainant’s submissions. The Respondent has not challenged the Complainant’s request. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English. In all the circumstances, the Panel determines that English be the language of the proceeding.
The Panel is satisfied that the Complainant has established that it has registered rights to the Trade Mark.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to establish if the domain name is identical or confusingly similar to the complainant’s trade mark. The trade mark would generally have to be recognizable within the domain name. In this case the Domain Name integrates the Trade Mark in its entirety. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the gTLD irrespective of the particular gTLD and the ordinary meaning ascribed to a particular gTLD. It is viewed as a standard registration requirement.
The Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non- commercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant contends that the Respondent is not commonly known by the Domain Name or the Trade Mark. The Complainant has no commercial link with the Respondent. It has not granted the Respondent any authorization, licence or any right whatsoever to use the Trade Mark or any mark similar to the Trade Mark as part of the Domain Name. Nor is the Respondent an authorized dealer, licensee or distributor of the Complainant.
The Respondent has acknowledged that he is a fan of the Complainant and has in correspondence with the Complainant’s legal advisers indicated he often buys the Complainant’s products. He in fact bought the Domain Name to open an online store for the Calvin Klein brand which he said will bring user traffic and create more value for the brand and his business. The Respondent appears to be of the mistaken view that by purchasing and owning the Domain Name, he has acquired rights and legitimate interests in the Domain Name, which is not the case especially when the primary purpose is to profit from the acquisition by selling the Domain Name to the Complainant. He has made this clear in the correspondence prior to the commencement of the proceeding and his emails offering to settle the matter. This is not a bona fide offering of goods or services or legitimate noncommercial use.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent was aware of the Complainant’s trade mark when he registered the Domain Name. The Respondent has made that explicitly clear in his correspondence. He is fan of the brand and often purchases goods bearing the Trade Mark. His purpose for registration was to create an online shop for goods bearing the Trade Mark and to increase the value of the brand so that any eventual sale price of the Domain Name to the Complainant will be substantial.
The Panel also concludes that the actual use of the Domain Name is in bad faith. Although the Domain Name is not attached to an active website, it is not a bar to succeeding under this element. The Complainant’s offer to reimburse the Respondent for his reasonable out-of-pocket expenses was considered by the Respondent as “humorous”. He provided the Complainant with examples of “.com” domain names that sold for over USD 1 million as well as others which sold for substantial sums including “.ink” domain names. He made it plain that he wanted a sum substantially in excess of his out-of-the pocket expenses. This is a clear demonstration that the Domain Name has been used in bad faith. The offer to transfer the domain names for sums exceeding the reasonable cost of registration and maintenance falls squarely within the circumstances in paragraph 4(b)(i) of the Policy which is evidence of bad faith. The Respondent has not raised any substantive points to challenge these allegations. Considering the circumstances, the Panel considers that the Domain Name was also used in bad faith.
The above is clearly bad faith under paragraph 4(a)(iii) of the Policy and the Panel concludes that the Respondent’s registration and use of the Domain Name is in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <calvinklein.ink> be transferred to the Complainant.
Karen Fong
Sole Panelist
Date: January 5, 2018