WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Calvin Klein Trademark Trust & Calvin Klein, Inc. v. Kelvin

Case No. D2019-1504

1. The Parties

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 Kelvin, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <calvinklein.host> (the “Disputed Domain Name”) is registered with Registrar of Domain Names REG.RU, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2019. On June 27, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 27, 2019, 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 July 5, 2019, the Center sent an email communication in English and Russian regarding the language of the proceedings. The Complainant confirmed its request that English be the language of the proceedings. The Respondent did not submit a reply regarding the language of the proceedings.

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 of the Complaint in both English and Russian, and the proceedings commenced on July 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 1, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 8, 2019.

The Center appointed Mariya Koval as the sole panelist in this matter on August 16, 2019. 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, being founded in 1968, is an American luxury fashion house, which specializes in production of men’s and women’s apparel, fragrances, footwear and accessories. The Complainant’s global retail sales of branded products exceeded USD 9 billion in 2017 and were distributed in over 110 countries. The Complainant has used its CALVIN KLEIN trademark continuously since at least as early as 1968 in connection with the advertising, offering for sale, and sale of its various products in the United States and elsewhere.

The CALVIN KLEIN trademark is well known and famous for many years. The Complainant has expended millions of dollars in advertising and promoting its products under its CALVIN KLEIN trademark in a variety of media throughout the world, including print, television, and radio advertisements.

The Complainant is the owner of many CALVIN KLEIN trademark registrations (the “CALVIN KLEIN Trademark”) within, inter alia, the United States, including the following relevant ones:

The Complainant has significant online presence. It operates a number of domain name registrations, which incorporates the CALVIN KLEIN Trademark, including:

- <calvinklein.com> (registered on June 10, 1997)
- <calvinkleinbags.com> (registered on May 16, 2005)
- <calvinkleinunderwear.com> (registered on March 24, 1999)
- <calvinkleinfashion.com> (registered on January 24, 2005)

The Disputed Domain Name was registered on June 7, 2019. At the date of this Decision, the Disputed Domain Name does not resolve to any active website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has used its CALVIN KLEIN Trademark continuously since 1968 in connection with the advertising, offering for sale, and sale of its various products in the United States and elsewhere. The Complainant’s use of the CALVIN KLEIN Trademark has resulted in millions of customers worldwide and billions of dollars in sales.

The Complainant further contends that it has also advertised its CALVIN KLEIN Trademark through direct mail and on the Internet, including on the website(s) associated with its domain name(s) referenced above. Such advertising reaches a vast range of consumers; since the Complainant’s “www.calvinklein.com” website first launched in 1997, it has received hundreds of millions of visitors seeking information about the Complainant’s CALVIN KLEIN products.

The Complainant asserts that its numerous federal trademark registrations and widespread use, advertising, and promotion of the CALVIN KLEIN Trademark since 1968 sufficiently establish rights in the trademark.

The Complainant also asserts that the Disputed Domain Name incorporates the Complainant’s CALVIN KLEIN Trademark in its entirety. The addition of the “host” to the Disputed Domain Name through the generic Top-Level Domain (“gTLD”) further adds to confusion given that the Complainant hosts numerous fashion shows.

The Complainant argues that the Respondent has no rights or legitimate interests in the Disputed Domain Name, the Complainant’s first use and first registration of its CALVIN KLEIN Trademark predate any use the Respondent may have made of the Disputed Domain Name as a trade name, domain name, mark, or common name. The Disputed Domain Name was registered in June of 2019, over fifty years after the Complainant first used its trademark. The Complainant also argues that the Respondent was aware of the Complainant’s domain names and web sites 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 Respondent is not affiliated with the Complainant in any way. The Complainant has not authorized the Respondent to use and register its trademarks and service marks, or to seek the registration of any domain name incorporating said mark. Because the Complainant’s federal registrations and use predate the Respondent’s Disputed Domain Name registration, and because the Respondent is charged with constructive knowledge of the Complainant’s CALVIN KLEIN Trademark registrations, the Respondent has no proprietary rights, or legitimate interests, in the Disputed Domain Name.

The Complainant contends that the Respondent has no proprietary rights or legitimate interests in the Disputed Domain Name because the Respondent is not using it in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Complainant has not authorized or licensed the Respondent to use its CALVIN KLEIN Trademark in connection with any services on the Disputed Domain Name.

The Complainant further argues that the Respondent has registered and is using the Disputed Domain Name in bad faith based on the following facts:

- the Respondent is diverting the Complainant’s customers or potential customers seeking information about the Complainant to an inactive website;

- in June, 2019, the Complainant forwarded a cease-and-desist letter to the Respondent, who did not respond; and

- the Respondent’s registration of the Disputed Domain Name was solely done to prevent the Complainant from registering the Disputed Domain Name, which has been inactive since registration, and was acquired for the purpose of selling the domain name for valuable consideration in excess of any out‑of‑pocket expenses.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the complainant must prove that each of the following three elements are present:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which a complainant 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.

6.1. Language of Proceedings

According to paragraph 11 of the Rules the language of the proceeding shall be the language of the Registration Agreement unless the Panel in its discretion determines otherwise.

The Registrar confirmed that the language of the registration agreement for the Disputed Domain Name is Russian.

The Complainant is an American company where English is a national language. The Complainant’s representative is a Canadian company. Accordingly, neither the Complainant nor its representative are able to understand and to communicate in Russian. Forcing the Complainant to translate the Complaint and annexes thereto, would result in unfair additional expenses for the Complainant and would delay this UDRP proceeding.

Also, the Respondent was duly informed about this proceeding by the Center’s communications in English and Russian, but it did not make any submission with respect to the language of proceeding.

The Disputed Domain Name and gTLD are in English. Paragraph 10(c) of the Rules sets out that the Panel shall ensure that the administrative proceeding takes place with due expedition.

Having considered all circumstances of this case, the Panel concludes under paragraph 11(a) of the Rules that English shall be the language of the proceeding.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant owns exclusive rights in the CALVIN KLEIN Trademark, which sufficiently predate the registration of the Disputed Domain Name.

The Disputed Domain Name completely reproduces the Complainant’s CALVIN KLEIN Trademark in combination with the gTLD suffix “.host”. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11, the applicable gTLD in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.

Previous UDRP panels have recognized that incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark; see bridport & cie S.A v. Privatewhois.net, Private Whois bridportadvisory.com, WIPO Case No. D2011-2262.

Accordingly, the Panel finds that the Disputed Domain Name is identical to the Complainant’s Trademark pursuant to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant contends that the Respondent is not affiliated with the Complainant in any way and it has not been authorized by the Complainant to use and register the CALVIN KLEIN Trademark. The Disputed Domain Name completely incorporates the Complainant’s world-known trademark, which at the same time is also the Complainant’s company name.

According to the WIPO Overview 3.0, section 2.5.1, “UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation”.

In accordance with section 2.1 of the WIPO Overview 3.0 while the overall burden of proof in UDRP proceedings is on the Complainant, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. If such prima facie case is made, the burden of production shifts to the Respondent to come forward with relevant evidences demonstrating rights or legitimate interests in the Disputed Domain Name. If the Respondent fails to come forward with such relevant evidence, the Complainant is generally deemed to have satisfied the second element.

There is no evidence that the Respondent appears to own any CALVIN KLEIN trademark, nor is the Respondent commonly known by the Disputed Domain Name. Furthermore, the Panel concludes that in view of the global fame of the CALVIN KLEIN Trademark it is highly unlikely that anybody could legitimately adopt the Disputed Domain Name for commercial use other than for an intent to create confusion with the Complainant.

Also, taking into consideration the reputation of the Complainant’s trademark, it is impossible to assume that the Respondent was unaware of the Complainant's brand and business at the time of registration of the Disputed Domain Name.

Moreover, the website under the Disputed Domain Name is inactive from the registration date, which gives no grounds for considering the use the Disputed Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.

Furthermore, in this case, the Respondent, having a possibility to mention any circumstances for demonstration of its rights or legitimate interests in the Disputed Domain Name, did not submit a response to the Complainant’s cease-and-desist letter, or to the Complaint and accordingly did not contest the Complainant’s prima facie case.

In light of the above, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name. Therefore, the second element in paragraph 4(a) of the Policy has been satisfied by the Complainant.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that indicate bad faith conduct on the part of the respondent, namely:

“(i) circumstances indicating that the respondent has registered or has acquired 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 the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the respondent has registered the disputed 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 the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.”

The Panel finds that the Complainant’s first registration for the CALVIN KLEIN Trademark predates the registration of the Disputed Domain Name by 50 years. The CALVIN KLEIN Trademark has been in commercial use from its first registration until now.

In accordance with section 3.1.4 of the WIPO Overview 3.0, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. In this case the Disputed Domain Name is identical to the Complainant’s well-known CALVIN KLEIN Trademark and was likely registered with the primary intention to disrupt the Complainant’s business or confuse consumers. The Disputed Domain Name, completely reproducing the Complainant’s trademark, is obviously deceptive for the consumers: entering the website under the Disputed Domain Name the users will most likely believe that they are entering the website related to the Complaint’s business in the United States.

The website under the Disputed Domain Name is inactive since its registration date, which also is a factor indicating bad faith. According to the section 3.3 of the WIPO Overview 3.0, from the inception of the UDRP, panels 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.

Having considered all circumstances of this case, and taking into consideration the strong distinctiveness of the Complainant's trademark and fame, the Panel is of the opinion that due to the rights of the Complainant in the CALVIN KLEIN Trademark, as well as its intensive use all over the world, the Respondent was well aware of the Complainant and its well-known trademark at the time of registration of the Disputed Domain Name. Therefore, the Panel is of the opinion that the Respondent has registered the Disputed Domain Name with a good knowledge of the Complainant's trademark and uses it for the purpose of misleading and diverting Internet users to the website under the Disputed Domain Name. This must be considered an inference of bad faith

In view of the foregoing, the Panel finds that the paragraph 4(a)(iii) of the Policy has been satisfied by the Complainant and accordingly, the Disputed Domain Name has been registered and is 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 Name <calvinklein.host> be transferred to the Complainant.

Mariya Koval
Sole Panelist
Date: August 30, 2019