WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Calvin Klein Trademark Trust and Calvin Klein, Inc. v. Privacy Protection / Sahir Zehri, Carolina Shop
Case No. D2021-2797
1. The Parties
The Complainants are Calvin Klein Trademark Trust, United States of America (“United States” or “US”) and Calvin Klein, Inc., United States (collectively, the “Complainant”), represented by Kestenberg Siegal Lipkus LLP, Canada.
The Respondent is Privacy Protection, United States / Sahir Zehri, Carolina Shop, Indonesia.
2. The Domain Name and Registrar
The disputed domain name <calvinklein.bar> is registered with Sav.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 25, 2021. On August 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 26, 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 August 30, 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 on August 30, 2021.
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 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 27, 2021. On September 3, 2021, the Center received an email communication from the Respondent. The Respondent did not submit any formal
Response. Accordingly, the Center notified the Parties that it would proceed with panel appointment on October 1, 2021.
The Center appointed Fabrice Bircker as the sole panelist in this matter on October 20, 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
The Complainant is engaged, since 1968, in the production, sale and licensing of men’s and women’s apparel, fragrances, accessories, and footwear, among other things. It operates its business under the brand CALVIN KLEIN. This brand is protected through many trademark registrations, such as:
- United States trademark registration No. 1,086,041 for CALVIN KLEIN in class 25, filed on March 15, 1976, registered on February 21, 1978, and regularly renewed since then;
- United States trademark registration No. 1,633,261 for CALVIN KLEIN in class 25, filed on October 30, 1989, registered on January 29, 1991, and regularly renewed since then;
- European Union trademark registration No. 617,381 for CALVIN KLEIN in classes 9 and 25, filed on August 21, 1997, registered on January 29, 1999, and regularly renewed since then.
Besides, the Complainant is the registrant of several domain names including “Calvin Klein”, such as <calvinklein.com>, which has been registered since June 10, 1997 and directs to the Complainant’s official website.
Nothing is known about the Respondent excepting that, according to the information provided by the Registrar, it is located in Indonesia.
The disputed domain name was registered on August 10, 2021. It resolves to a parking page of the Registrar.
5. Parties’ Contentions
A. Complainant
Identical or Confusingly Similar
The Complainant submits that the disputed domain name is confusingly similar to its CALVIN KLEIN trademark because it incorporates the said trademark. The Complainant adds that if “bar” was considered a word to be appended to the trademark, the addition of this word further adds to confusion given that it “refers to a selling place” and leads Internet users to believe that the disputed domain name redirects to a website marketing the Complainant’s merchandise.
Rights or Legitimate Interests
The Complainant puts forward that its first use and first registration of its CALVIN KLEIN trademark predate any use that the Respondent may have made of the disputed domain name.
The Complainant also submits that 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, at the time the Respondent registered the disputed domain name.
Furthermore, the Complainant states that the Respondent is not affiliated with it in any way. In addition, the Complainant mentions that it has not authorized the Respondent to use and register its trademarks, or to seek the registration of any domain name incorporating it.
In addition, the Complainant contends that its CALVIN KLEIN marks are well known and famous and have been used for many years.
The Complainant also argues that the Respondent has no rights or legitimate interests in “Calvin Klein” because 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 Complainant also contends that the Respondent is not commonly known by the name “Calvin Klein”.
As a conclusion, the Complainant considers that the Respondent has no rights or legitimate interests in the disputed domain name.
Registered and Used in Bad Faith
The Complainant puts forward that the Respondent is diverting the Complainant’s customers or potential customers seeking information about the Complainant to a parked page at the disputed domain name. The Complainant adds that it has no control over the use of the disputed domain name using its primary intellectual property.
The Complainant also argues that many Internet users rely on the web browser’s URL to seek information about authorized sources of information and merchandise. Therefore, the disputed domain name will divert Internet users to the website that the Respondent will activate in the future without the Complainant’s authorization.
In addition, the Complainant contends that 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. Besides, the Complainant adds that CALVIN KLEIN is a well-known and famous trademark, and that the use of the disputed domain name to resolve to a parked page is in bad faith.
The Complainant also submits that the Respondent is using the disputed domain name to attract Internet users by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the disputed domain name.
Further, the Complainant contends that the Respondent is using the disputed domain to direct Internet users to a parked page that states: “Coming Soon - this domain is parked courtesy of sav.com”, what demonstrates that the disputed domain name is being used passively, what amounts to bad faith use.
At last, the Complainant submits that the Respondent has registered the disputed domain name solely to prevent the Complainant from registering it, and that the disputed domain name was also acquired for the purpose of selling it for valuable consideration in excess of any out-of-pocket expenses.
Considering the above, the Complainant asserts that the disputed domain name was registered and is being used in bad faith.
As a remedy, the Complainant requests the transfer of the disputed domain name (without mentioning which of the two complaining companies has to be the beneficiary of the transfer).
B. Respondent
The Respondent did not formally reply to the Complainant’s contentions.
However, on September 3, 2021, the Respondent sent a communication to the Center indicating that it had “already sent a request to the [R]egist[r]ar for the domain to be deleted”.
6. Discussion and Findings
6.1 Preliminary Issue – Language of the Proceeding
Pursuant to paragraph 11(a) of the Rules “[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”.
In the present case, the Registrar has indicated that the language of the Registration Agreement for the disputed domain name is English, and the Complaint was filed in English.
As a consequence, the language of the proceeding shall be English, and the Panel shall render its decision in English, in accordance with paragraph 11(a) of the Rules.
6.2 Substantive Issues
Paragraph 4(a) of the Policy provides that for obtaining the transfer or the cancellation of the disputed domain name, the Complainant must establish each of the following three elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules provides that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraphs 10(b) and 10(d) of the Rules also provide that “[i]n 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” and that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”.
Besides, the Respondent’s failure to reply to the Complainant’s contentions does not automatically result in a decision in favor of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules (see section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
Taking the foregoing provisions into consideration the Panel finds as follows.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to its trademark.
Taken into account the copies of the US trademarks registrations certificates provided by the Complainant and the Panel’s own consultation of the US trademark database1 where the Complainant’s trademarks appear renewed and active, the Panel finds that the Complainant holds trademark rights for CALVIN KLEIN, in particular through the US registrations No. 1,086,041 and No. 1,633,261 detailed in Section 4. above.
Besides, there is no difficulty in finding that the disputed domain name, <calvinklein.bar>, is identical to the CALVIN KLEIN trademark since it consists in the mere reproduction of the said trademark in its entirety and because it is of common practice among the UDRP panels that generic Top-Level Domains (“gTLDs”) may be ignored for the purpose of assessing the identity or confusingly similarity under the first element, as they play a technical function.
Consequently, the first element under the Policy set for by paragraph 4(a)(i) is fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the Respondent], [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 trademark 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 trademark or service mark at issue.
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out 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 (see WIPO Overview 3.0, section 2.1).
In the present case, the Complainant contends that it has not given its consent for the Respondent to use its CALVIN KLEIN trademark in a domain name registration or in any other manner.
Besides, there is nothing in the record of the case likely to indicate that the Respondent may be commonly known by the disputed domain name.
Furthermore, the disputed domain name is not being used. It resolves to the Registrar’s parking page which notably displays the message “coming soon”.
In view of all the above, the Panel finds that the Complainant has discharged its burden of proof that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The burden of production now shifts to the Respondent to show that it does have rights or legitimate interests in the disputed domain name.
The Respondent, which has not formally replied to the Complainant’s contentions, has not come forward with any explanation that demonstrates any rights or legitimate interests in the disputed domain name.
In addition, it results from the record of the case that when the Respondent has learnt the introduction of the Complaint, it has requested the Registrar to delete the disputed domain name. In the Panel’s view, this is strong evidence of absence of rights or legitimate interests in the disputed domain name.
Moreover, the nature of the disputed domain name being identical to the Complainant’s trademark carries a high risk of implied affiliation with the Complainant (see WIPO Overview 3.0, section 2.5.1).
Taking all the above into consideration, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has satisfied the second element in paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain name in bad faith.
The circumstances listed in paragraph 4(b) of the Policy are only examples and therefore are not exhaustive of the situation of bad faith.
Registration in Bad Faith
The Panel notes that:
- the disputed domain name reproduces the Complainant’s CALVIN KLEIN trademark in its entirety;
- the use of the CALVIN KLEIN trademark predates the registration of the disputed domain name by more than 50 years;
- the Complainant contends that the CALVIN KLEIN trademark enjoys considerable reputation worldwide and is distinctive. This has not been challenged by the Respondent and many UDRP Panels have already recognized the globally well-known nature of the CALVIN KLEIN trademark (e.g., Calvin Klein Trademark Trust & Calvin Klein, INC. v. 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), WIPO Case No. DCC2021-0007, Calvin Klein Trademark Trust, Calvin Klein, Inc. v. Rashed Al Ali, WIPO Case No. D2020-0654, Calvin Klein Trademark Trust and Calvin Klein, Inc. v. Private By Design, LLC / Yong Sik Choi, WIPO Case No. D2019-2483).
In light of the above, the Panel finds that the Respondent registered the disputed domain name in bad faith, with the Complainant’s CALVIN KLEIN trademark in mind.
Use in Bad Faith
The disputed domain name is not being used by the Respondent, as it resolves to a parking page of the Registrar notably displaying a “coming soon” message.
However, in some situations, the non-use of a domain name does not prevent a finding of bad faith.
This point is notably dealt in section 3.3 of the WIPO Overview 3.0, which states: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding.
While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine 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 or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”
In the present case, all these criteria are met:
- the CALVIN KLEIN trademark which is reproduced entirely in the disputed domain name is globally well known;
- the Respondent did not formally reply to the Complainant’s contentions and even tried to delete the disputed domain name through the Registrar when being informed of this Complaint;
- the Respondent concealed its identity through the use of a privacy service at the time of registering the disputed domain name;
- it is implausible to this Panel that any good faith use to which the disputed domain name may put.
In these circumstances, the Panel concludes that the passive holding of the disputed domain name amounts to bad faith.
Accordingly, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, so paragraph 4(a)(iii) of the Policy is satisfied.
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, <calvinklein.bar>, be transferred to the Complainant2 .
Fabrice Bircker
Sole Panelist
Date: October 26, 2021
1 It is well accepted that the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the Rules, enable a panel to undertake limited factual research into matters of public record if it considers such information useful to assessing the case merits and reaching a decision. This may notably include accessing trademark registration databases (see WIPO Overview 3.0, section 4.8).
2 The Complaint is silent as to which of the two complaining companies has to be the beneficiary of the transfer in case of success. Consequently, the Panel orders the transfer of the disputed domain name without any further specification, so that the Complainant remains free to determine which of the two companies has to be the beneficiary of the transfer.