The Complainant is Calvin Klein Trademark Trust & Calvin Klein, INC., United States of America (“United States”), represented by Kestenberg Siegal Lipkus LLP, Canada.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States / Cyan Yo, China.
The disputed domain name <calvinkleinman.com> is registered with Dynadot, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2020. On April 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 24, 2020, 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 April 24, 2020, 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 April 24, 2020.
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 April 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 17, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 18, 2020.
The Center appointed Gareth Dickson as the sole panelist in this matter on May 22, 2020. 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 is engaged in the production, sale and licensing of men’s and women’s apparel, fragrances, accessories and footwear. It has used its CALVIN KLEIN trade mark since as early as 1968 and as a result it has developed considerable goodwill in the CALVIN KLEIN mark, to the point that it is one of the most famous trade marks in the apparel industry.
The Complainant is the owner of a number of trade mark registrations for CALVIN KLEIN around the world, including United States trade mark registration number 1086041, registered on February 21, 1978, (the “Mark”).
The disputed domain name was registered on March 5, 2020. It currently directs Internet users to a webpage offering the domain name for sale, for a price of USD 990.
The Complainant submits that the disputed domain name incorporates the Mark in its entirety, and that the addition of “man” to the disputed domain name further adds to confusion in light of the Complainant’s design, manufacture and selling of men’s clothing, accessories and fragrance.
The Complainant notes that the disputed domain name was registered more than fifty years after the Complainant first used its marks, and several years after the Complainant began operating its websites at, inter alia, “www.calvinklein.com” and “www.calvinkleinfashion.com”, which were operational and accessible to the Respondent when the disputed domain name was registered.
The Complainant states that the Respondent is not affiliated with the Complainant in any way and that it has not authorised or licensed the Respondent to use and register the Mark in any domain name.
The Complainant notes that the Respondent has attempted to hide its identity by using a privacy service and submits that the Respondent has no proprietary rights or legitimate interest in the Mark because the Respondent is not using the domain name in connection with a bona fide offering of goods or services or making a legitimate noncommercial or fair use. The Complainant further asserts that the Respondent is not commonly known by the Mark.
Since the Respondent is diverting the Complainant’s customers or potential customers to a website currently advertised as being “for sale”, the Complainant concludes that the Respondent likely knew of the Mark and of the Complainant’s interest in it when it registered the disputed domain name, and argues that the registration of the disputed domain name was intended to prevent the Complainant from registering it. It believes that the disputed domain name was acquired for the purpose of sale for valuable consideration in excess of any out-of-pocket expenses relating to the disputed domain name, contrary to paragraph 4(b)(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that:
a) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
c) the disputed domain name has been registered and is being used in bad faith.
These criteria are cumulative. The failure of the Complainant to prove any one of these elements means the Complaint must be denied.
The Panel accepts that the Complainant is the owner of, and therefore has rights in, the Mark.
Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) provides that “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 Panel therefore finds that the disputed domain name is confusingly similar to the Mark, since the Mark is recognisable within the disputed domain name. The addition of “man” in the disputed domain name does not in any way prevent a finding of confusing similarity. Similarly, the addition of the generic Top-Level Domain (“gTLD”) “.com” does not alter this conclusion.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, as explained in section 2.1 of the WIPO Overview 3.0, the consensus view of previous UDRP panels is that where a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
In the current proceeding, the Complainant has established its prima facie case. The Complainant states that it has not given the Respondent permission to use the Mark, in a domain name or otherwise, and submits that the Respondent has not been commonly known by the disputed domain name.
There is no evidence that the Respondent has acquired any common law rights to use the Mark, is commonly known by the Mark or has chosen to use the Mark in the disputed domain name in any descriptive manner or is making any use of the disputed domain name that would establish rights or legitimate interests as a result of a noncommercial or fair use of it.
By not participating in these proceedings, the Respondent has failed to refute the Complainant’s prima facie case that it has met its burden under the second UDRP element.
As clearly stated in section 2.1 of the WIPO Overview 3.0, “a panel’s assessment will normally be made on the basis of the evidence presented in the complaint and any filed response. The panel may draw inferences from the absence of a response as it considers appropriate, but will weigh all available evidence irrespective of whether a response is filed”. Having reviewed and weighed the available evidence, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Panel notes that the disputed domain name was registered many years after the Mark was registered and the Complainant had begun using it, and accepts that the disputed domain name was chosen by reference to the Mark.
As a result, and in the absence of evidence from the Respondent that the similarity of the disputed domain name to the Mark is coincidental or permitted, the Panel must conclude that the Respondent knew of the Complainant’s rights in the Mark when it registered the disputed domain name.
The Panel therefore finds that the Respondent’s registration of the disputed domain name was in bad faith since it attempted to appropriate for the Respondent, without the consent or authorisation of the Complainant or any rights or legitimate interests, rights in the Complainant’s Mark.
The disputed domain name is also being used in bad faith.
The Respondent is offering the disputed domain name for sale with a price tag of USD 990. That figure is likely to be far in excess of the Respondent’s out-of- pocket costs directly related to the domain name, which is one of the examples of bad faith registration and use cited in paragraph 4(b)(i) of the Policy.
Even if the “for sale” holding page could be viewed as a “passive holding” of the disputed domain name, that would not prevent a finding of bad faith use. Section 3.3 of the WIPO Overview 3.0 states that relevant factors to finding bad faith in passive holding include:
“(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’s concealing its identity […], and
(iv) the implausibility of any good faith use to which the domain name may be put.”
The Panel notes that the Mark is well known and is distinctive of the Complainant. It further notes that the Respondent has not participated in these proceedings or sought to explain its registration and use of the disputed domain name, and that the Respondent has sought to conceal its identity through a privacy service. Furthermore, there is no realistic use of the disputed domain name by the Respondent that would not be illegitimate. The addition of “man” in the disputed domain name increases the likelihood that a consumer will associate the disputed domain name with the Mark, given the Complainant’s reputation for men’s apparel. Accordingly, there is no basis for the Panel to conclude that the Respondent’s use of the disputed domain name is justified.
Therefore, and on the basis of the information available to it, the Panel must, and does, find that the Respondent’s use of the disputed domain name is without justification and is inconsistent with the Complainant’s exclusive rights in the Mark. Consideration of these and other factors militates in favour of a finding of bad faith.
The Panel finds that the Respondent has registered and is using the disputed domain name 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 disputed domain name, <calvinkleinman.com>, be transferred to the Complainant.
Gareth Dickson
Sole Panelist
Date: June 5, 2020