WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Calvin Klein Trademark Trust and Calvin Klein, Inc. v. Perfect Privacy, LLC / Matthew Singleton, IAAPublications

Case No. D2016-2516

1. The Parties

The Complainants are Calvin Klein Trademark Trust and Calvin Klein, Inc. (collectively, the “Complainant”) of New York, New York, United States of America (“United States” or “U.S.”), represented by Kestenberg Siegal Lipkus LLP, Canada.

The Respondent is Perfect Privacy, LLC of Jacksonville, Florida, United States / Matthew Singleton, IAAPublications of Wakefield, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <calviinklein.com> is registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2016. On December 14, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 December 16, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on December 19, 2016.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 20, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 9, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 10, 2017.

The Center appointed Irina V. Savelieva as the sole panelist in this matter on January 18, 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.

4. Factual Background

The Complainant has been engaged in the production, sale and licensing of men’s and women’s apparel, fragrances, accessories, and footwear in association with one or more of the Complainant’s CALVIN KLEIN trademarks. Since its formation, the Complainant has used and registered several of its trademarks in the United States and throughout the world.

Specifically in the United States, the Complainant has used its CALVIN KLEIN trademark since 1968 (the Complainant attaches the copies from the United States Patent and Trademark Office’s showing, inter alia, the Complainant’s trademark registration No. 1,086,041, registered on February 21, 1978, as Annex D to the Complaint). As a result of such use, customers in the United States and worldwide have come to associate the CALVIN KLEIN trademark with the Complainant’s products. Accordingly, the Complainant has developed considerable goodwill in the CALVIN KLEIN trademarks.

The Complainant also owns a number of domain name registrations which wholly incorporate the Complainant’s CALVIN KLEIN trademarks, including: (1) <calvinklein.com>, (2) <calvinkleinbags.com>, (3) <calvinkleinunderwear.com>, and (4) <calvinkleinfashion.com>. The copies of information reproduced from WhoIs databases regarding these referenced domain name registrations are attached as Annex E to the Complaint. Since their registration, the Complainant has used and continues to use these domain names in connection with its various websites, which provide information about the Complainant and its products and services as well as offer its products for sale.

Over the 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 has also advertised its CALVIN KLEIN marks through direct mail and on the Internet, including on the websites associated with its domain names above. Such advertising reaches a vast range of consumers. By way of example, 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 disputed domain name was registered on October 19, 2016, and resolves to a web page stating, “Looks Like This Domain Isn’t Connected To A Website Yet!”.

5. Parties’ Contentions

A. Complainant

(a) Identical or Confusingly Similar

The trademark on which this Complaint is based is CALVIN KLEIN. The Complainant’s numerous trademark registrations and widespread use, advertising, and promotion of the CALVIN KLEIN marks since 1968 sufficiently establish rights in the trademark pursuant to paragraph 4(a)(i) of the Policy.

The disputed domain name <calviinklein.com> incorporates the Complainant’s CALVIN KLEIN trademark but adds an “i” in the name “Calvin”. This is a clear case of typosquatting wherein the Respondent has slightly misspelled the CALVIN KLEIN trademark to divert Internet traffic. The practice of typosquatting has been regarded in previous UDRP decisions as creating domain names confusingly similar to the relevant mark (see Edmunds.com, Inc. v. Digi Real Estate Foundation, Case No. D2006-1043). The generic Top-Level Domain (“gTLD”) “.com” is not taken into consideration when examining the identity or similarity between the previous marks and the disputed domain name.

Accordingly, the disputed domain name is confusingly similar to the Complainant’s trademark.

(b) Rights or Legitimate Interests

The Respondent has no proprietary rights or legitimate interest in the name “Calviin Klein” 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 is parked and has not been set up by the Respondent. The Complainant has not authorized or licensed the Respondent to use the CALVIN KLEIN trademark in connection with any services in connection with the disputed domain name. The Respondent has no proprietary rights or legitimate interest in “Calviin Klein” or the disputed domain name because the Respondent, Matthew Singleton, is not commonly known by that name.

For the reasons discussed above, the Respondent has no rights or legitimate interests in the disputed domain name.

(c) Registered and Used in Bad Faith

The Respondent registered and is using the disputed domain 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 the website to which the disputed domain name resolves (parked/inactive site). The Complainant has no control over the use of the disputed domain name using its primary intellectual property, CALVIN KLEIN trademark. Many Internet users rely on the web browser’s URL to seek information about authorized sources of information and merchandise and the disputed domain name will divert Internet users to an unauthorized website having no affiliation with or to the Complainant.

The Complainant respectfully submits that there is no plausible actual or contemplated active use of the disputed domain name that would not be illegitimate and constitute an infringement of the Complainant’s rights. Previous UDRP panels with similar factual circumstances have held this passive use amounts to bad faith (see Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry- Succession Saint Exupéry – D’Agay v. Perlegos Properties, WIPO Case D2005-1085).

The Complainant also submits that it cannot control the use of any domain names currently owned by the Respondent. The Complainant further submits that bad faith can be inferred from the fact that no legitimate active use has been made and that previous forums have concluded that a respondent’s failure to make active use of its domain name in the months after its registration indicated that the respondent registered the disputed domain name in bad faith. Further, there is nothing preventing the Respondent from using the disputed domainname in emails to potential customers and/or models with an alleged affiliation with or to the Complainantthat does not exist. This is especially dangerous to the Complainant and its brand.

For the above reasons, the Respondent’s registration and use of the disputed domain name is in bad faith.

B. Respondent

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

6. Discussion and Findings

The Respondent was given notice of this proceeding in accordance with the Rules both in electronic and paper forms.

However, the Respondent failed to file a response to the Complaint and has not sought to answer to the Complainant’s assertions, evidence or contentions in any other manner. The Panel finds that the Respondent has been given a fair opportunity to present its case and finds no exceptional circumstances indicating why it could not do so; the Panel will proceed to a decision based on the Complaint in accordance with paragraph 5(f) of the Rules.

The Respondent’s default does not automatically result in a decision in favor of the Complainant. The Complainant must still prove the elements required by the Policy. In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain names, the Complainant must prove that the three following elements are satisfied:

(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 was registered and is being used in bad faith.

Pursuant to paragraph 15(a) of the Rules the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, the Panel may draw such inferences as it considers appropriate from the Respondent’s failure to reply to the Complainant’s assertions and evidence or to otherwise contest the Complaint. In the circumstances, the Panel’s decision is based upon the Complainant’s assertions and evidence and inferences drawn from the Respondent’s failure to reply.

A. Identical or Confusingly Similar

The Complainant has registered the CALVIN KLEIN trademark in numerous jurisdictions, including the U.S., United Kingdom of Great Britain and Northern Ireland and Europe, and is well known all over the world. The Complainant submits that the disputed domain name is identical or confusingly similar to its trademark. The disputed domain name incorporates the CALVIN KLEIN trademark in its entirety.

The Panel refers to a number of past UDRP decisions, which confirm that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002 and Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd., WIPO Case No. D2000-0802).

The adding of the letter “i" in the name “Calvin” is a clear case of typosquatting whereby the Respondent has slightly misspelled the CALVIN KLEIN trademark seemingly to divert Internet traffic. The practice of typosquatting has been regarded in previous UDRP decisions as creating domain names confusingly similar to the relevant trademark.

In addition, the disputed domain name almost entirely copies the Complainant’s registered domain name <calvinklein.com>.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark CALVIN KLEIN.

The Panel finds that the Complainant has satisfied its burden of proof under paragraph 4(a) of the Policy as to the first element of the Policy.

B. Rights or Legitimate Interests

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name.

Even though the Respondent has not filed a response to the Complaint and has not contested the Complainant’s assertions, the Panel will need to consider whether the Respondent’s use of the disputed domain name would indicate the Respondent’s rights or legitimate interests in the disputed domain name.

According to paragraph 4(c) of the Policy, the following circumstances, if proved, demonstrate a respondent’s rights or legitimate interests in a domain name:

(i) the respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; 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 complainant’s marks.

A respondent may show its rights or legitimate interests by producing evidence to support the circumstances under paragraphs 4(c)(i)-(iii) of the Policy.

By not responding to the Complainant’s contentions, the Respondent in this proceeding has not attempted to demonstrate its rights or legitimate interests.

The Panel further notes that there is no evidence that before any notice of the dispute with the Complainant, that the Respondent was using the disputed domain name for a bona fide offering of goods or services as the disputed domain name is currently parked and does not resolve to an active site.

The above-described use of the disputed domain name, in the Panel’s view, proves that the Respondent was not involved in a bona fide offering of goods and services in respect of the disputed domain name under paragraph 4(c)(i) of the Policy.

As to paragraph 4(c)(ii) of the Policy, there is no evidence that the Respondent has been commonly known by the disputed domain name.

The Panel recalls that the Respondent registered the disputed domain name in 2016. The Complainant asserts that the Complainant’s activity under its trademark has continued since the 1970s and CALVIN KLEIN has been registered as a trademark since 1968 and is widely known and recognized as a trademark within its industry.

The disputed domain name has been registered more than thirty years after the registration of the Complainant’s trademark; it is highly unlikely that the Respondent known as Matthew Singleton from IAAPublications has been commonly known by the disputed domain name as provided in paragraph 4(c)(ii) of the Policy.

There is no further evidence that the Respondent is making or has made legitimate noncommercial or fair use of the disputed domain name. The Respondent is currently not actively using the disputed domain name, which is parked and could be construed as in anticipation of future sell or use for profit. Therefore, paragraph 4(c)(iii) of the Policy does not apply.

The Panel finds the Complainant has established its prima facie case to show that the Respondent has no rights or legitimate interests in the disputed domain name and, accordingly, the Complainant has satisfied the requirements under paragraph 4(a) of the Policy as to the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances are deemed to be evidence that a respondent has registered and is using a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or has 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) the 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 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.

The Complainant contends that the Respondent has violated the bad faith provision of the Policy because the disputed domain name has been registered with the Respondent’s knowledge of the Complainant’s trademark and reputation.

The Complainant’s first use and first registration of its CALVIN KLEIN mark predate any use the Respondent may have made of <calviinklein.com> as a trade name, domain name or common name. The disputed domain name was registered in 2016, more than thirty years after the Complainant first used its CALVIN KLEIN marks. Additionally, the Complainant registered its domain names and began operating its websites at <calvinklein.com> and others as listed in section 4, above, many years before the Respondent registered the disputed domain name in this case. The Respondent was more likely than not aware of the Complainant’s trademarks, domain names and websites associated with the same at the time the Respondent registered the disputed domain name.

In addition, the Complainant’s CALVIN KLEIN trademarks are well known and have been for many years. The Respondent’s registration of a domain name wholly incorporating a well known mark is indicative of bad faith .

It is the Panel’s view, under the present circumstances, that the Respondent most likely registered the disputed domain name with full awareness of the Complainant’s trademark as well as the goodwill associated with it.

It is clear in the Panel’s view that in the mind of an Internet user, the disputed domain name could be directly associated with the Complainant’s trademark, which is likely to be confusing to the public as suggesting either an operation of the Complainant or one associated with or endorsed by it (see AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327).

The Panel finds that the Respondent’s registration of the disputed domain name shows the Respondent’s intent to rely on a risk of confusion with the Complainant’s activity and trademark as to the source, sponsorship, affiliation or endorsement of the disputed domain name and any website associated with it.

The fact that the disputed domain name currently is parked, in the Panel’s view, does not preclude a finding of bad faith under the present circumstances. Lack of any conceivable plausible actual or contemplated active use may suggest the Respondent’s bad faith.

The Panel is not aware of the Respondent conducting any legitimate business activity using the disputed domain name. The Panel also finds that this is a case of typosquatting. These findings, together with the finding that the Respondent has no rights or legitimate interests in the disputed domain name, lead the Panel to conclude that the disputed domain name was registered and is being used by the Respondent in bad faith.

The fact that the Respondent had used a privacy shield to hide its true identity should be treated as a further indication of bad faith in the present circumstances.

The Panel finds that the Respondent registered and used the disputed domain name in bad faith and, accordingly, the Complainant has satisfied the requirements of paragraph 4(a) of the Policy as to the third element of the Policy.

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 <calviinklein.com> be transferred to the Complainant.

Irina V. Savelieva
Sole Panelist
Date: February 1, 2017