WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PVH Corp., Calvin Klein, Inc., Calvin Klein Trademark Trust, Tommy Hilfiger Licensing, LLC v. Zhao Zhong Xian, nashan, Liu Hong Bao
Case No. D2017-0465
1. The Parties
The Complainant is PVH Corp. of New York, New York, United States of America; Calvin Klein, Inc. of New York, New York, United States of America; Tommy Hilfiger Licensing, LLC of Amsterdam, Netherlands; Calvin Klein Trademark Trust of New York, New York, United States of America, represented by Kestenberg Siegal Lipkus LLP, Canada.
The Respondent is Zhao Zhong Xian of Shenyang, Liaoning, China; nashan of Shenyang, Liaoning, China; Liu Hong Bao of Shenyang, Liaoning, China.
2. The Domain Names and Registrar
The disputed domain names <calvinklein.site>, <tommyhilfiger.club>, <tommyhilfiger.site> and <tommyhilfiger.website> are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn)
(the “Registrar”).
3. Procedural History
The Complaint was filed in English and Chinese with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2017. On March 7, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 8, 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 March 9, 2017, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant provided a Chinese language translation of the Complaint but also requested that English be the language of the proceeding on the same day. The Respondent did not comment on the language of the proceeding by the specified due date.
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 English and Chinese of the Complaint, and the proceeding commenced on March 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 5, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 6, 2017.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on April 11, 2017. 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.
On May 4, 2017, the Panel issued a Panel Order requesting the Complainant to provide, by May 11, 2017, evidence to confirm exactly which entities are the registered owners of the CALVIN KLEIN and TOMMY HILFIGER trade marks; and the relationship between the Complainants and such entities, including details of any licence agreements. The Panel Order also allowed for the Respondent to file submissions in reply by May 13, 2017.
On May 4, 2017, the Complainant filed submissions in response to the Panel Order. The Respondent did not file any submissions in reply.
4. Factual Background
A. Complainant
The First Complainant, PVH Corp., (the “Complainant”) is a company incorporated in the State of New York in the United States of America and one of the largest apparel companies in the world; is the parent company of the Third Complainant, Calvin Klein Trademark Trust, and of the Fourth Complainant, Tommy Hilfiger Licensing, LLC; and is the ultimate beneficial owner of a diversified portfolio of brands, including CALVIN KLEIN and TOMMY HILFIGER (the “Trade Mark(s)”).
The Second Complainant, Calvin Klein Inc., is the beneficial owner of the CALVIN KLEIN Trade Marks owned by the Third Complainant, Calvin Klein Trademark Trust; and the Fourth Complainant, Tommy Hilfiger Licensing, LLC, is the owner of the TOMMY HILFIGER Trade Marks.
The First Complainant has used its CALVIN KLEIN Trade Mark since as early as 1968 in respect of men’s and women’s clothing, fragrances, accessories and footwear. The Third Complainant is the owner of numerous registrations worldwide for the CALVIN KLEIN Trade Mark, including United States of America registration No. 1,086,041, registered on February 21, 1978.
The First Complainant has used its TOMMY HILFIGER Trade Mark since as early as 1985 in respect of men’s and women’s clothing, fragrances, and home furnishings. The Fourth Complainant is the owner of numerous registrations worldwide for the TOMMY HILFIGER Trade Mark, including United States of America registration No. 2162940, registered on August 26, 1997.
B. Respondent
The Respondent is apparently an individual resident in China.
C. The Disputed Domain Names
The disputed domain names <calvinklein.site>, <tommyhilfiger.club>, <tommyhilfiger.site> and <tommyhilfiger.website> were registered on October 10, 2016; November 11, 2016; October 20, 2016; and November 12, 2016, respectively.
D. Passive Use of the Disputed Domain Names
The disputed domain names have not been used.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the disputed domain names are identical or confusingly similar to the Trade Marks, the Respondent has no rights or legitimate interests in respect of the disputed domain names, and the disputed domain names have been registered and are being used in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
The language of the registration agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. However, paragraph 11(a) of the Rules allows the panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Complainant has requested that the language of the proceeding be English, on the grounds the disputed domain names are English language domain names.
The Respondent, having received the Center’s communication regarding the language of the proceeding in both Chinese and English, did not make any submissions regarding the language of the proceeding. Having received notice of the proceeding in both Chinese and English, the Respondent chose not to file a response.
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 considers that the mere fact the disputed domain names are English language domain names does not support the likely possibility that the Respondent is conversant in English. However, the Panel considers that, in light of the Respondent’s decision to take no part in this proceeding, and as the Respondent has been provided with the Complainant’s Chinese language translation of the Complaint, the Respondent will not be prejudiced if the language of the proceeding is English.
In all the circumstances, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.
6.2 Consolidation of Complainants
Past UDRP decisions suggest that a complaint may be brought by multiple complainants where (i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants’ individual rights in a similar fashion; and (ii) it would be equitable and procedurally efficient to permit the consolidation (see paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
In the present proceeding, the Complainants are related entities, under the ultimate control of the First Complainant. The First Complainant is the ultimate beneficial owner of the Trade Marks. The Complainants have common grievances against the Respondent, and the Respondent has engaged in common conduct that has affected the Complainants’ rights in a similar fashion.
In all the circumstances, the Panel determines, under paragraph 10(e) of the Rules, that consolidation of the Complainants is procedurally efficient and equitable to all the Parties, is consistent with the Policy and Rules, and comports with prior relevant UDRP decisions in respect of this issuesup>1 .
6.3 Consolidation of Respondents
Past UDRP decisions suggest that consolidation of multiple respondents may be appropriate, under paragraphs 3(c) and 10(e) of the Rules, where the particular circumstances of a given case indicate that common control is being exercised over the disputed domain names or the websites to which the disputed domain names resolve, and where consolidation would be fair and equitable to all parties (see paragraph 4.16 of WIPO Overview 2.0).
In the present proceeding:
1. The WhoIs history for the disputed domain names shows that all of the disputed domain names were previously registered in the name of Zhao Zhong Xian with the same email address;
2. The Complainants’ email communications with respect to the disputed domain name <calvinklein.site> (now registered to “nashan”) were responded to by an individual using the same email address used for the prior WhoIs searches;
3. The Respondents have similar overlapping contact details;
4. The disputed domain names were registered within approximately one month;
5. The disputed domain names all use the same registrar; and
6. The disputed domain names have all been passively held.
In all the circumstances, the Panel concludes sufficient evidence has been adduced to enable the conclusion to be drawn that common control is being exercised over the disputed domain names. In all the circumstances, the Panel determines, under paragraph 10(e) of the Rules, that consolidation of the Respondents is procedurally efficient and equitable to all the Parties, is consistent with the Policy and Rules, and comports with prior relevant UDRP decisions in respect of this issuesup>2 .
6.4 Substantive Elements of the Policy
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Marks acquired through use and registration.
The disputed domain names comprise one or other of the Trade Marks in its entirety and are, excluding the generic Top-Level Domains (“gTLDs”) (in accordance with previous UDRP decisions), identical to the relevant Trade Mark.
The Panel therefore finds that the disputed domain names are identical or confusingly similar to the relevant Trade Mark. Accordingly, the first element under paragraph 4(a) of the Policy has been made out.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to the respondent of the dispute, 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 trade mark 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 trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Marks. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain names or that the disputed domain names have been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain names have not been used.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names; and there has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.
The Panel finds that the Respondent has failed to produce any evidence to rebut the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, and therefore finds that the requirements of paragraph 4(a)(ii) are met.
C. Registered and Used in Bad Faith
Given the notoriety of the Complainant and of its Trade Marks (including in China, where the Respondent is based), the lack of any explanation from the Respondent, and the passive use of the disputed domain names, the Panel has no hesitation in concluding the requisite element of bad faith has been made out. The Panel considers it is inconceivable the Respondent was not aware of the Complainant’s well-known Trade Marks at the time of registration of the disputed domain names.
For all the foregoing reasons, the Panel concludes that the disputed domain names have been registered and are being used in bad faith.
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 names <calvinklein.site>, <tommyhilfiger.club>, <tommyhilfiger.site> and <tommyhilfiger.website> be transferred to the Complainant.
Sebastian M.W. Hughes
Sole Panelist
Dated: May 19, 2017
1 The Panel shall refer to the Complainants in the singular for the remainder of this Decision.
2 The Panel refers to the Respondents in the singular throughout this Decision, with the exception of Section 6.3.