WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Calvin Klein Inc. and Calvin Klein Trademark Trust v. Papikian Enterprises
Case No. D2001-1301
1. The Parties
The complainants are Calvin Klein Trademark Trust, a trust company incorporated under the laws of the State of Delaware with its principal place of business at 1100 North Market Street, c/o Wilmington Trust Company, Rodney Square North, Wilmington, Delaware 19890 and Calvin Klein, Inc., a company incorporated under the laws of New York with its principal place of business at 205 West 39th Street, New York, New York 10018 (collectively, the "Complainant"). The Complainant is represented by Frankfurt Garbus Kurnit Klein & Selz, PC of 488 Madison Avenue, 9th Floor, New York, New York 10022.
The respondent is Papikian Enterprises, an entity with a mailing address of 1734 N. Ogden Drive, Los Angeles, CA 90046 (the "Respondent"). The administrative contact for Respondent is Galoust Papikian of the same mailing address as Respondent.
2. The Domain Name and Registrar
The disputed domain name is <calvinklein-sale.com> (the "Disputed Domain Name"), registered with Tucows Inc. of 96 Mowat Avenue, Toronto, ON M6K 3M1 (the "Registrar") on October 2, 2000.
3. Procedural History
Complainant filed a complaint (the "Complaint") with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on October 25, 2001. The initial fixed fee was paid to the Center and the Center sent an Acknowledgment of Receipt of Complaint on November 2, 2001.
The Center verified that the Complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Uniform Policy"), the ICANN Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules"), and the WIPO Center Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), in accordance with Paragraph 4(a) of the Uniform Rules, and Paragraph 5 of the Supplemental Rules. The Administrative Panelist (the "Panel") is satisfied that the Complaint satisfied the Rules and Supplemental Rules.
The Center issued a Request for Registrar Verification to Tucows Inc. on November 5, 2001, and received the Registrar's response on the same date. The Registrar's response indicated that the Disputed Domain Name was registered to Papikian Enterprises of 1734 N. Ogden Drive, Los Angeles, CA 90046, and stated that the domain name was currently, and would continue to be, on hold for the duration of this dispute.
A Formal Notification of the Complaint and Commencement of the Administrative Proceeding (the "Commencement Notification") was communicated by the Center to the Respondent and the Registrar both by courier and email on November 7, 2001. The Panel has seen the courier receipt and is satisfied that the delivery of the Commencement Notification is in conformity with the relevant requirements under Paragraph 2 and Paragraph 4 of the Uniform Rules and the relevant provisions of the Supplemental Rules.
The Center did not receive any response from Respondent on or before November 27, 2001, which was the last date for Respondent to submit a Response under Paragraph 5 of the Uniform Rules and the relevant provisions of the Commencement Notification. A Notification of Respondent's Default (the "Default Notification") was communicated by the Center to Respondent by email on November 28, 2001. The Panel is satisfied that the Default Notification was effectively delivered to Respondent as required by relevant provisions of the Uniform Rules and the Supplemental Rules.
Complainant has elected to designate a single-member Administrative Panel in accordance with Paragraph 3(b)(iv) of the Uniform Rules. By failing to submit a Response on time, Respondent waived the right to designate a three-member Administrative Panel under Paragraph 5(b)(iv) of the Uniform Rules. Based on a Statement of Acceptance and Declaration of Impartiality and Independence, duly signed by the Panel and dated December 5, 2001, the Panel was duly appointed by the Center on December 6, 2001. A Notification of Appointment of the Panel and Projected Decision Date was communicated by the Center to both Complainant and Respondent on December 6, 2001. On December 20, 2001, the Panel issued Administrative Panel Procedural Order No. 1 (the "Procedural Order") in which the Complaint was determined to be defective and the Panel requested that the defect be remedied by the submission of further information. Complainant responded to the request for further information to cure the defect by submitting a response on January 4, 2002 (the "Complainant's Response"). Respondent failed to submit a timely formal response to either the Procedural Order and/ or Complainant's Response prior to the stipulated deadline of January 9, 2002. The date scheduled for the issuance of the Panel's decision is January 14, 2001.
4. Factual Background
Under Paragraph 5(e) of the Uniform Rules, "[i]f a Respondent does not submit a response, in the absence of exceptional circumstances, the panel shall decide the dispute based upon the complaint." In this case, Respondent failed to respond to both the initial Complaint, and the subsequent Procedural Order. However, on December 21, 2001, Respondent communicated with the WIPO Case Manager assigned to this case, indicating his intent to "withdraw from the domain name <ck-sale.com>." The Panel presumes that Respondent's reference to <ck-sale.com> refers to the Disputed Domain Name, as <ck-sale.com> does not exist. Although this communiqué did not constitute a formal response, it also did not challenge any of the statements made by Complainant. Therefore, as Respondent failed to submit any formal response to these Proceedings, and as Respondent's informal correspondence does not indicate that Respondent contests the facts as presented by Complainant, in the absence of any exceptional circumstances, under Paragraph 5(e) of the Uniform Rules the Panel adopts the following facts, asserted in the Complaint and Complainant's Response to the Procedural Order, as undisputed facts, and decides the dispute between Complainant and Respondent based upon the following undisputed facts:
(i) Complainant is owner of the federally-registered CALVIN KLEIN trademarks (the "Trademarks"), and has used the Trademarks in connection with goods since at least as early as 1968. Complainant has used the Trademarks, of which there are over 50, continuously, exclusively and extensively in connection with the business of designing, manufacturing, marketing and retailing a variety of merchandise, including women's and children's apparel, jeans, accessories and home furnishings.
(ii) The Trademarks are well-known trademarks with which the public has come to associate the goods provided by Complainant.
(iii) Complainant has not authorized Respondent to use the Trademarks, nor is Respondent affiliated with Complainant in any way.
(iv) Complainant registered the domain name <calvinklein.com> on June 10, 1997, with Network Solutions Inc. as registrar.
(v) Respondent registered the domain name <calvinklein-sale.com> on October 2, 2000, with Tucows, Inc. as registrar.
(vi) On July 12, 2001, Complainant sent a cease and desist letter to Respondent via certified mail to the address of record for Respondent, requesting that Respondent stop using the Disputed Domain Name, and transfer the Disputed Domain Name to Calvin Klein, Inc.
(vii) On August 3, 2001, Complainant sent a second cease and desist letter to Respondent, enclosing the first such letter, and this was also transmitted via certified mail.
(viii) On August 22, 2001, Complainant sent a third cease and desist letter to Respondent, requesting that Respondent stop using the Disputed Domain Name, and transfer the Disputed Domain Name to Calvin Klein, Inc. This letter made reference to two telephone conversations between Complainant and Respondent on August 6 and 8, 2001, as part of the prior communications between the parties, to which this letter claimed to follow-up.
(ix) On December 21, 2001, Respondent sent an email communication to both the WIPO Case Manager, and Complainant, which indicated Respondent's intent to withdraw its ownership of the Disputed Domain Name. On December 28, 2001, an attorney for Complainant telephoned Respondent to request that Respondent correspond with the Registrar regarding Respondent's withdrawal of the domain name. Respondent did not comply with Complainant's request.
5. Parties' Contentions
Complainant asserts that:
(i) The Disputed Domain Name is identical or confusingly similar to Complainant's domain name, <calvinklein.com>, and to over 50 of Complainant's federally registered trademarks. The Disputed Domain Name fully incorporates the CALVIN KLEIN trademark. Because of the confusing similarities between Complainant's trademark and the Disputed Domain Name, web-based consumers are likely to believe that they can purchase goods directly from Calvin Klein, or that there is an authorized connection between Calvin Klein and Respondent.
(ii) Respondent does not have any rights or legitimate interest in the Disputed Domain Name because: (i) Respondent is not currently using, has not used and upon Complainant’s information and belief has made no preparations to use the Disputed Domain Name in connection with the provision of goods and services; (ii) Respondent has not commonly been known by the Disputed Domain Name or Calvin Klein as an individual, business or other organization; and (iii) Respondent has not been authorized by Complainant to use the Trademarks and is not affiliated with Complainant in any way.
(iii) The Disputed Domain Name has been registered and is being used by Respondent in bad faith. Upon Complainant’s information and belief, Respondent acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring it to Calvin Klein for valuable consideration. As the basis for this belief, Complainant cites the fact that during a conversation between Complainant and Respondent on August 23rd 2001, Respondent stated that he would transfer ownership of the domain name in exchange for payment of US $10,000, an amount which, upon Complainant’s information and belief, exceeded Respondent's related out-of-pocket costs.
Pursuant to Paragraph 5(e) of the Uniform Rules, in the absence of a Response from the Respondent, "the Panel shall decide the dispute based upon the complaint." The Panel will independently determine the merits of the Complaint on the basis of all evidence available.
6. Discussion and Findings
(i) The Disputed Domain Name is identical to the trademark in which Complainant has rights.
The Disputed Domain Name: (i) is confusingly similar to Complainant's trademark, CALVIN KLEIN, and (ii) fully incorporates Complainant's trademark into it. Complainant has trademark rights in the United States that date at least as far back as 1968. Respondent registered the Disputed Domain Name in October 2000. Here, the Complainant clearly has rights to the CALVIN KLEIN mark.
The Panel finds for the Complainant on the first element, that Respondent's domain name is identical or confusingly similar to the trademark in which the Complainant has rights.
(ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
Paragraph 4(a)(ii) of the Uniform Policy inquires as to whether or not the Respondent has any rights or legitimate interests vested in the Domain Name. Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of such rights or legitimate interests: (i) use of, or preparations to use, the Domain Name in connection with a bona fide offering of goods or services; (ii) the fact that the Respondent has commonly been known by the Domain Name; and (iii) legitimate non-commercial or fair use of the Domain Name.
Under the facts as presented in this case, and in accordance with the Uniform Policy paragraph 4(a)(ii) as stated above, Respondent does not appear to have any rights or legitimate interest in respect of this domain name.
Respondent has not been commonly known as <calvinklein-sale.com> or Calvin Klein as an individual, business or other organization, nor has Respondent been authorized to use the Trademarks.
The Panel finds for the Complainant on the second element, that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
On the facts of this case, as asserted by Complainant, the Panel finds that Respondent registered the Disputed 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 [its] documented out-of-pocket costs directly related to the domain name," as is required under Paragraph 4(b)(i) of the Uniform Policy. The basis for this finding is a telephone conversation in which Respondent offered to sell the Disputed Domain Name to Complainant for a price of US $10,000, an amount which far exceeds Respondent's costs associated with the Disputed Domain Name.
The Panel therefore finds that the Disputed Domain Name was registered and is being used in bad faith.
In light of the foregoing, the Panel hereby determines that the Disputed Domain Name is confusingly similar to a well-known trademark for which Complainant has rights, that Respondent lacks rights to or a legitimate interest in the Disputed Domain Name, and that the Respondent registered the Disputed Domain Name in bad faith. Accordingly, pursuant to paragraph 4(i) of the Uniform Policy, and paragraph 15 of the Uniform Rules, the Panel hereby orders that the Disputed Domain Name <calvinklein-sale.com> be transferred to the Complainant.
Timothy D. Casey
Dated: January 14, 2002