WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Calvin Klein Trademark Trust and Calvin Klein, Inc. v. Fatih Tuzun, Blackrua / Whois Agent, Whois Privacy Protection Service, Inc.
Case No. D2015-0821
1. The Parties
The Complainant is Calvin Klein Trademark Trust and Calvin Klein, Inc. of New York, New York, United States of America, represented by Kestenberg Siegal Lipkus LLP, Canada.
The Respondent is Fatih Tuzun, Blackrua of Antalya, Turkey / Whois Agent, Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America.
2. The Domain Name and Registrar
The disputed domain name <calvinkleinparfum.com> is registered with Name.com LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 11, 2015. On May 12, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 14, 2015, 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 May 15, 2015 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 May 15, 2015.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on May 19, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 8, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 9, 2015.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on June 12, 2015. 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 Complainants are respectively the registered owner and the beneficial owner of the mark CALVIN KLEIN, a famous brand in the premium segment of the global apparel market.
The Complainants have used the CALVIN KLEIN trademark since as early as 1968.
The Complainants own numerous trademark registrations for CALVIN KLEIN in the United States and worldwide.
The Complainants also own multiple domain names comprising the CALVIN KLEIN trademark, including the domain name <calvinklein.com>, <calvinkleinbags.com>, <calvinkleinunderwear.com>, and <calvinkleinfashion.com>.
The Respondent registered the disputed domain name on March 17, 2015.
The Panel accessed the disputed domain name on June 20, 2015, when there was no active page linked to it, apart from the statement "This Account Has Been Suspended".
5. Parties' Contentions
The Complainants make the following contentions:
- The disputed domain name is identical or confusingly similar to a trademark in which the Complainants have rights. The Complainants' numerous federal trademark registrations and widespread use, advertising, and promotion of the CALVIN KLEIN mark since 1968 sufficiently establish rights in the mark pursuant to UDRP. The term "parfum" adds to the confusion since the Complainants market and sell perfume in a large variety of different styles (including Calvin Klein's Eternity, Euphoria, Beauty, Downtown, Obsession, Escape and others).
- The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainants' first use and first registration of its CALVIN KLEIN mark 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 2015, more than thirty years after the Complainants first used their marks. In addition, the Complainants' CALVIN KLEIN marks are well-known. The Respondent's registration of a domain name wholly incorporating a famous mark is not supported by legitimate interests. The Respondent also has no proprietary rights or legitimate interests in the term "calvinkleinparfum" 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 disputed domain name was linked to a website providing information about cellular phones products and services. The Complainants have not authorized or licensed the Respondent to use the CALVIN KLEIN trademark in connection with any goods or services on the disputed domain name. Since the drafting of this Complaint, the Respondent's account has been suspended and the website is not currently active. The disputed domain name diverts Internet users seeking the Complainants' website to the Respondent's affiliated website which has nothing to do with the Complainants, or perfume, and as such does not constitute a bona fide offering of goods or services. The Complainants have no reason to believe that the Respondent is commonly known by "Calvin Klein". The Respondent has purposefully privatized his/her contact information.
- The disputed domain name was registered and is being used in bad faith. The Respondent is diverting the Complainants' customers or potential customers seeking information about the Complainants to the website which the disputed domain name resolves. Many Internet users rely on the web browser's URL to seek information about authorized sources of information and merchandise. The disputed domain name will divert Internet users to unauthorized sources of counterfeit merchandise bearing the CALVIN KLEIN trademark. Given the popularity of the famous CALVIN KLEIN trademark, there is no doubt that the disputed domain name was selected by the Respondent because there would be a high level of traffic directed to his website, for people that were looking to find the Complainants and/or the Complainants' perfume products. The Respondent is using the disputed domain name to attract Internet users by creating a likelihood of confusion with the Complainants' trademark as to the source, sponsorship, affiliation or endorsement of the disputed domain name. The Respondent's registration of the disputed domain name was done to prevent the Complainants from registering and using it.
The Respondent did not reply to the Complainants' contentions.
6. Discussion and Findings
Calvin Klein Trademark Trust and Calvin Klein, Inc. have common rights in the CALVIN KLEIN trademark, being therefore both accepted as the Complainants in the present case.
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove 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; and
(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.
A. Identical or Confusingly Similar
The Panel has no doubt that "Calvin Klein" is a term directly connected with the Complainants' activities in the clothing and the perfume businesses worldwide.
Annex D to the Complaint shows registrations of CALVIN KLEIN trademarks obtained by the Complainants since 1978.
The trademark CALVIN KLEIN is wholly encompassed within the disputed domain name.
The disputed domain name differs from the Complainants' trademark basically by the addition of the word "parfum" after the words "calvin klein", as well as the generic Top-Level Domain ("gTLD") denominator ".com".
Previous UDRP decisions have demonstrated that descriptive additions do not alter the underlying meaning of a domain name, so as to avoid confusing similarity. This has been held in many UDRP cases (see e.g., Inter-IKEA Systems B. V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; AltaVista Company v. S. M. A., Inc., WIPO Case No. D2000-0927).
It is also well established that the addition of a gTLD extension such as ".com" is irrelevant when determining whether a domain name is confusingly similar to a complainant's trademark.
As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainants' trademark, and that the Complainants have satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
Based on the Respondent's default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainants have not licensed nor authorized the use of its trademark to the Respondent, and the Panel finds no indication that the Respondent is commonly known by the disputed domain name.
The present record provides no evidence to demonstrate the Respondent's intent to use or to make demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainants have proven the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location.
When the disputed domain name was registered by the Respondent (in 2015) the trademark CALVIN KLEIN was already evidently well known worldwide and directly connected to the Complainants' activities in the clothing and perfume businesses.
The disputed domain name encompasses the trademark CALVIN KLEIN, together with the descriptive word "parfum".
Therefore, the Panel concludes that it would not be feasible to consider that the Respondent – at the time of the registration of the disputed domain name – could not have been aware of the Complainants' trademark, as well as that the adoption of the expression "calvinkleinparfum" could be a mere coincidence.
Actually, in doing so, the Respondent:
(i) creates a likelihood of confusion with the Complainants' trademark; and
(ii) potentially obtains revenue from this practice; and
(iii) deprives the Complainants from selling their products to prospective clients who are clearly looking for the Complainants.
It is true that presently the disputed domain name does not resolve to any active webpage.
However, UDRP panels have frequently found that the apparent lack of so-called active use of the domain name (passive holding) does not prevent a finding of bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 3.2; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; and Polaroid Corporation v. Jay Strommen, WIPO Case No. D2005-1005.
The passive and non-collaborative posture of the Respondent, (a) not presently using the disputed domain name, (b) not indicating any intention to use it, and (c) not at least providing justifications for the use of a third party well-known trademark together with a descriptive term that indicates one of its main products, certainly cannot be used in benefit of the Respondent in this Panel's opinion.
Such circumstances, including (d) the lack of any plausible interpretation for the adoption of the expression "calvinkleinparfum" by the Respondent, and (e) the evidence provided by the Complainant demonstration of previous use of the disputed domain name in connection with unrelated advertisement of cell phone products and/or services, are enough in this Panel's view to characterize bad faith registration and use in the present case.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainants have also satisfied the third element of the Policy.
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 <calvinkleinparfum.com> be transferred to the Complainant, namely Calvin Klein Trademark Trust.
Date: June 26, 2015