WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Calvin Klein Trademark Trust and Calvin Klein, Inc. v. Steven Heiberger and Legacy Development USA Corp.
Case No. D2002-0336
1. The Parties
The Complainants are indicated in the Complaint as Calvin Klein Trademark Trust, a trust company incorporated in the State of Delaware, whose principal place of business is 1100 North Market Street, c/o Wilmington Trust Company, Rodney Square North, Wilmington, Delaware 19890 and Calvin Klein, a corporation incorporated in the State of New York with its principal place of business at 205 West 39th Street, New York, New York 10018, United States of America.
The Respondent is identified in the Complaint as Steven Heiberger and Legacy Development USA Corp. with an address in New York, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name is <calvinkleinonline.com> ("the Domain Name").
The Registrar is Register.com in New York, NY United States of America. In a letter dated April 15, 2002, to the WIPO Arbitration and Mediation Center ("the Center"), Register.com confirmed that the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy") applies to the Domain Name registered by Respondent on September 9, 1999.
3. Procedural History
On April 9, 2002, the Complaint, which is in the format required by the Policy, was filed electronically with the Center. The Complaint certifies that the Respondent and Registrar were duly served by the Complainants. The Center verified that the Complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
On April 13, 2002, a hardcopy of the complaint was received by the Center.
On April 15, 2002, having duly sought and obtained verification from the Registrar, the Center completed a formal compliance checklist.
On April 17, 2002, the Center duly served a Notification of Complaint to the Respondent both electronically and by courier.
On May 13, 2002, having received no response to the Complaint from Respondent within the time specified in the Notification of Complaint, the Center notified the Respondent that it was in default.
On June 3, 2002, the Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date. This Notification informed the parties that the Administrative Panel would be comprised of a single Panelist, Lynda Zadra-Symes of Newport Beach, California, who was appointed by the Center after an invitation had been issued and an acceptance and Declaration of Independence and Impartiality had been duly returned.
4. Factual Background
The Complaint asserted, and provided evidence in support of, the following facts, which Respondent did not dispute and the Panel finds established:
The Respondent registered the Domain Name with Register.com on September 9, 1999, according to the WHOIS report provided by the Complainants.
Complainants Calvin Klein, Inc. is in the business of, among other things, designing, manufacturing, marketing, and retailing a variety of merchandise, including menís, womenís and childrenís apparel, shoes, accessories, underwear, sleepwear, hosiery, socks, swimwear, eyewear, watches, coats, fragrances, cosmetics, home furnishings, jeans, t-shirts, sweatshirts, caps, leather goods, eyeglasses and sunglasses.
The Complainants, Calvin Klein Trademark Trust and Calvin Klein, Inc. (collectively known hereafter as "Calvin Klein") are the record owner and beneficial owner, respectively, of the world famous CALVIN KLEIN trademarks (collectively referred to as the "Calvin Klein Trademarks"). In addition, it appears that Calvin Klein has registered its trademark throughout the world, covering a similarly broad range of products. Complainants, Calvin Klein, also submitted evidence of worldwide trademark registration in an appendix to the complaint. Calvin Klein has been using the Calvin Klein trademarks in the United States and in over 190 countries since 1968, and has developed substantial consumer recognition in that trademark for the goods and services described in its trademark registrations listed below, among others:
Trade Mark Registration No. 1086041, registered on February 21, 1978, renewed March 23, 1998, for "Women`s wearing apparel-namely, skirts, shirts, blouses, jackets, pants, coats, fur-trimmed coats, (( furs, )) vests, dresses, sweaters, (( bathing suits, robes, beach and swimming cover-ups, )) t-shirts, (( tennis and golf dresses, )) shorts, skirts and shirts, warm-up suits, rainwear, capes, (( ponchos, hats, )) scarves, shawls, (( robes, )) belts, walking shorts, tank tops and jump suits"
Trade Mark Registration No. 1633261, registered January 29, 1991, renewed January 26, 2001, for "Women's shoes, boots and slippers; men's and boys' underwear and men's and boys' shorts; women's and girls' underwear (including brassieres and underpants); women's nightgowns; men's hosiery and socks"
Trade Mark Registration No. 2210511, registered December 15, 1998, for "Advertising agencies and developing promotional campaigns for businesses."
Trade Mark Registration No. 2160138, registered May 26, 1998, for "Silverware and cutlery, furniture, hand held mirrors, and furniture mirrors, hair combs and brushes, housewares and glass."
Trade Mark Registration No. 2250072, registered June 1, 1999, for "Carpets, rugs, hard surface coverings for floors, and wall coverings."
The Panel notes that the registration dates of all of the above referenced United States trademark registrations predate the date of registration of the Domain Name by the Respondent.
Calvin Klein also submitted evidence of worldwide trademark registration in an appendix to the Complaint.
5. Partiesí Contentions
The Complaint requests a decision in accordance with paragraph 4(a) of the Policy, that the contested domain name be transferred to the Complainants on the grounds that the said domain name is identical or confusingly similar to a trademark or service mark in which the Complainants has rights; that the Respondent has no rights or legitimate interests in respect of the domain name; and that the said domain name was registered and is being used in bad faith.
The Complainants made the following submissions, which Respondent did not contest:
a. Respondent is not affiliated with Calvin Klein in any way and has not been authorized by Calvin Klein to use the CALVIN KLEIN Trademarks.
b. Upon information and belief, the Domain Name was registered with Register.com in September of 1999, over two years after the <calvinklein.com> domain name was registered, and over 30 years after Calvin Klein began using the CALVIN KLEIN Trademarks. Calvin Klein first became aware of Respondentís domain name, <calvinkleinonline.com>, in November of 2001, at which time it sent a letter to Respondent by certified mail, to inform Respondent that said use infringed upon Calvin Kleinís rights. See Complaint Exhibit D. As described more fully below, Calvin Klein has had additional communications with Respondent, but Respondent has refused to abandon the Domain Name or transfer it to Calvin Klein.
c. The Domain Name is confusingly similar to Calvin Kleinís domain name, <calvinklein.com>, and to the CALVIN KLEIN Trademarks, because it incorporates the entire CALVIN KLEIN trademark, in conjuction with the suffix "online," which means having to do with computers, communication and the internet. Consumers, who are highly familiar with Calvin Klein and its products, are likely to be misled into thinking that www.calvinkleinonline.com is a website through which they can access Calvin Kleinís goods or services online, or that some authorized connection exists between Respondent and Calvin Klein and/or its products.
d. Upon information and belief, Respondent registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring it to Calvin Klein for valuable consideration.
e. The basis of this belief is that on November 26, 2001, someone, who identified himself as Respondentís brother and an attorney, called an attorney for Complainants and demanded $3,500.00 in exchange for transferring the Domain Name to Calvin Klein. Upon information and belief, the demanded amount is far in excess of Respondentís out-of-pocket costs directly related to transfer of the domain name. Calvin Klein sent a letter to Respondent on December 7, 2001, informing Respondent that it would not pay the demanded sum in exhange for the domain name. See Complaint Exhibit E. Calvin Klein received no response to that letter.
f. Not having heard from Respondent, Calvin Klein sent a third letter to Respondent on February 22, 2002, to which Calvin Klein attached a draft of its ICANN complaint. See Complaint Exhibit E. On or about March 10, 2002, an attorney for Complainants Calvin Klein, followed up with Respondent by telephone to see if Respondent would transfer the domain name and thus avoid the necessity for these proceedings. Respondent stated that he would transfer the domain name to Calvin Klein if Calvin Klein agreed to pay Respondent $1,380.00 for modeling services that Respondent claimed to have provided to a Calvin Klein licensee in August of 2000.
g. On or about March 14, 2002, Complainants' representative conveyed to Respondent by telephone that Calvin Klein did not contract for the services at issue, that the services were unrelated to the instant dispute, and that Calvin Klein would not pay for those services in exchange for the domain name. During this telephone call, Respondent requested that Calvin Klein delay filing an ICANN proceeding for one week so that he could have time to consider whether he would voluntarily transfer the domain name to Calvin Klein. Respondent did not contact Calvin Klein after the requested one week period, and since then Respondent has not returned any of the at least five telephone calls made to him by Complainants' representative.
h. On April 2, 2002, Calvin Klein sent a final letter to Respondent, again giving him the opportunity to resolve this dispute without legal proceedings. See Complaint Exhibit E.
i. In addition, Respondent is not currently using, has not used, and upon information and belief has made no preparations to use the Domain Name in connection with the provision of any legitimate goods or services. The Domain Name does not resolve to an active website. See Complaint Exhibit F.
j. Moreover, upon information and belief, Respondent has not been commonly known as <calvinkleinonline.com> or Calvin Klein as an individual, business or other organization.
Respondent did not respond to the Complaint, and has made no submissions to controvert the Complainants' contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, Complainants must prove the following three elements:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the Domain Name has been registered and is being used in bad faith.
This Panel, as directed by paragraphs 14(a), 14(b) and 15(a) of the Rules, shall render the decision on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and principles of law that it deems applicable. The Panel may draw such inferences as it deems appropriate on the basis of Respondent's Response and give such weight as it considers appropriate to the Complainants' undisputed representations.
The Respondent did not submit any response and made no attempt to rebut Complainants' prima facie showing. Thus, the Complainants' representations are undisputed.
A. The Domain Name is Identical Or Confusingly Similar to the CALVIN KLEIN Trademark
There can be no doubt that the domain name <calvinkleinonline.com> is confusingly similar to Complainants' CALVIN KLEIN trademarks. The relevant part of the domain name is "calvinklein." The Panel finds that this part of the domain name is confusingly similar to the numerous trademark registrations including the words CALVIN KLEIN held by the Complainants. In addition, the Panel finds that the whole of the domain name is confusingly similar to those trademark registrations.
By adding the word "online" to Complainantsí trademark, Respondent does not diminish the likelihood of confusion. "The addition of the non distinctive words Ďon lineí does nothing to prevent the confusing similarity of the Domain Names with the Complainantsí trade marks." Barclays Bank PLC v. Mr. Mohammed Hassan, WIPO Case No. 2001-0253.
Accordingly, the Panel finds that the Domain Name is confusingly similar to, and incorporates, the CALVIN KLEIN trademark, to which Complainants has rights.
B. The Respondent Does Not Have A Legitimate Interest in the Domain Name
While no evidence has been submitted to show that Respondent had actual knowledge of the Calvin Klein trademark prior to registration of the domain name, it is difficult to believe that the Respondent could not have been aware of the mark at the time of registration. Calvin Klein has extensively used the trademark in connection with sales and promotion of its goods throughout the world for many years and the CALVIN KLEIN trademarks are world famous.
In addition, the record indicates that Respondent has not used or prepared to use the Domain Name in connection with any bona fide offering of goods or services as contemplated under paragraph 4(c)(i) of the Policy. Respondent is not commonly known by the Domain Name as contemplated under paragraph 4(c)(ii) of the Policy, nor is Respondent making a legitimate non-commercial or fair use of the Domain Name as contemplated under paragraph 4(c)(iii) of the Policy. The Panel notes that, even though almost three years have elapsed since Respondent registered the Domain Name in September 1999, the Domain Name does not resolve to any active website, but only to the register.com holding page.
Accordingly, this Panel finds that Complainants has proved that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. The Respondent Registered and Used the Domain Name in Bad Faith
Paragraph 4(b)(i) of the Policy provides that the following circumstances, amongst others, 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 Respondent registered or 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 Respondent's out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, 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 Respondent's web site or location or of a product or service on Respondent's web site or location.
Each of the four circumstances in paragraph 4(b), if found, is a separate instance of "registration and use of a domain name in bad faith."
The record indicates that Complainants' CALVIN KLEIN trademark is well-known.
The record also indicates that Respondent sought a substantial sum of money, $3,500, from Complainants in return for the transfer of the Domain Name. This sum is far in excess of the expected transfer costs incurred by the Respondent. After Calvin Klein turned down Respondentís initial proposal, the Respondent lowered the amount it was seeking in the telephone conversation with Complainants' representative. It was then seeking $1,380 allegedly owed to Respondent for unrelated services allegedly provided to a Calvin Klein licensee.
These circumstances clearly fall within paragraph 4(b)(i) because they indicate that Respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainants, who is the owner of the trademark, for valuable consideration in excess of Respondent's out-of-pocket costs.
Although the Domain Name does not presently resolve to a website and thus does not appear to be in "use" by Respondent, the circumstances described in paragraph 4(b)(i) are present and sufficiently support a finding that Respondent registered and used the Domain Name in bad faith. In any event, this is a case where the concept of "passive use" referred to in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, would be applicable because the website has been without content for over three years. Considering all the circumstances of the case, it can be said that the Respondent is acting in bad faith. See also Compagnie Générale des Etablissements Michelin-Michelin & Cie v. la bon vie and Gilles Epie, WIPO Case No. D2002-0092, Brown Thomas & Company Limited v. Domain Reservations WIPO Case No. D2001-0592; Voigtländer GmbH v. Scott Hall, WIPO Case No. D2002-0013.
The circumstances present in this case support a finding of bad faith. In particular,
(i) for thirty years, the Complainants has developed significant goodwill in the name CALVIN KLEIN, and substantial goodwill and common law rights have been accumulated by the Complainants;
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name, even when given the chance to respond to this Complaint;
(iii) such information as there is about the Respondent would appear to indicate that the Respondent is likely to be engaged in some form of commercial activity as distinct from non-commercial activity;
(iv) it is highly improbable that the Respondent was unaware of the Complainants' long and established national and international reputation and trademarks rights when the said domain name was registered;
(v) it is unlikely that any use of the said domain name by the Respondent as a website address could be legitimate; any site established by the Respondent under the Domain Name would amount to passing off and/or trademark infringement because it would confuse the public into believing there is some connection between the Domain Name and the Complainants. It would be absurd if the Complainants had to wait for the Respondent to commence such use and commit the torts of passing off and/or trademark infringement before making this Complaint.
Accordingly, the Panel concludes that Respondent has registered and used the Domain Name in bad faith on the grounds that (1) Respondent was aware of Complainants' rights in the CALVIN KLEIN trademark at the time of registration; (2) Respondent has no rights or legitimate interests in the Domain Name; (3) Respondent attempted to sell the Domain Name to the Complainants for substantially more than Respondent's out-of-pocket costs; and (4) the Respondent could not legitimately use the Domain Name, which incorporates Complainants' well-known CALVIN KLEIN trademark.
For all of the foregoing reasons, the Panel decides that the Complainants has met its burden of proof under paragraph 4 of the Policy; the Domain Name is confusingly similar to trademarks in which Complainants has rights; Respondent lacks a legitimate interest in the Domain Name; and Respondent has registered and used the Domain Name in bad faith. Accordingly, this panel concludes that the domain name <calvinkleinonline.com> should be transferred to the Complainants.
Dated: June 28, 2002