WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Calvin Klein, Inc. and Calvin Klein Trademark Trust v. TBS Interactive Limited
Case No. D2017-0255
1. The Parties
The Complainant is Calvin Klein, Inc. of New York, New York, United States of America ("United States" or "USA") and Calvin Klein Trademark Trust of Wilmington, Delaware, United States, represented by Kestenberg Siegal Lipkus LLP, Canada.
The Respondent is TBS Interactive Limited of Hong Kong, China.
2. The Domain Name and Registrar
The disputed domain name <calvinkleinphotos.com> is registered with eNom, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 9, 2017. On February 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 10, 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.
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, and the proceedings commenced on February 15, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 7, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 8, 2017.
The Center appointed David Stone as the sole panelist in this matter on March 21, 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 engages in the production, sale and licensing of, among other things, men's and women's apparel, fragrances, accessories and footwear, and since its formation has used and registered trade marks in the United States and around the world. The Complainant has used its CALVIN KLEIN trade mark in the United States since as early as 1968, and at present owns the trade marks CALVIN KLEIN (stylized) (registered on January 29, 1991) and CALVIN KLEIN (registered on February 21, 1978) in the United States in connection with apparel and other merchandise. The Complainant also owns CALVIN KLEIN trade marks in Hong Kong.
Furthermore, the Complainant is the registrant organisation of the active domain names <calvinklein.com>, <calvinkleinfashion.com>, <calvinkleinunderwear.com> and <calvinkleinbags.com>, all of which wholly incorporate the CALVIN KLEIN trade mark. Since the registration of these domain names, the Complainant has used and continues to use them in connection with its various websites, which provide information about the Complainant and its products and services.
The Complainant offers its products for sale through its own retail stores, outlet stores and websites (including some associated with the domain names referred to above), and through authorized dealers.
The disputed domain name was registered on December 2, 2016. The disputed domain name does not resolve to any active website.
5. Parties' Contentions
The Complainant asserts that the disputed domain name is confusingly similar to the Complainant's trade mark CALVIN KLEIN, and that this trade mark has been used by the Complainant since 1968. The disputed domain name incorporates the CALVIN KLEIN trade mark in its entirety. The inclusion of the word "photos" adds to the confusion owing to the Complainant's involvement in the fashion industry and the high prevalence of photographs of models and celebrities in its advertising campaigns. By contrast, the generic Top-Level Domain ".com" is necessary for registration of the domain and is not a distinguishing feature. It therefore does not diminish the likelihood of confusion.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name, for the following reasons, noting that the Respondent is not affiliated with the Complainant in any way.
- 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, and the associated website at present has no visible content.
- The Complainant's first use and registration of its CALVIN KLEIN trade mark predate the Respondent's use of the disputed domain name as a trade name, domain name, trade mark or common name. The Respondent registered the disputed domain name, which was created on December 2, 2016, almost 50 years after the Complainant's first use of its CALVIN KLEIN trade mark. Furthermore, the Complainant registered and began operating websites using the domain names <calvinklein.com>, <calvinkleinfashion.com> and others several years before 2016.
- The Complainant's CALVIN KLEIN trade marks are famous and have been for many years. The Complainant contends that the Respondent was aware of the Complainant's CALVIN KLEIN trade mark and associated domain names and websites when the Respondent registered the disputed domain name. The Complainant has not authorised or licensed the Respondent to use the Complainant's trade marks or to register any domain name incorporating such a trade mark, and the Respondent is not commonly known by the name "Calvin Klein".
The Complainant submits that the Respondent registered and is using the disputed domain name in bad faith. Customers and potential customers seeking an authorised source of information about the Complainant and its merchandise using the disputed domain name are at present, and will be in future, diverted to a website controlled by the Respondent despite its unauthorised use of the Complainant's intellectual property. The Complainant delivered a cease-and-desist letter to the Respondent on or about December 16, 2016, but the Respondent did not respond and, in particular, did not demonstrate any right or legitimate interest in the disputed domain name.
The Complainant submits that the Respondent's registration of the disputed domain name was solely done to prevent its registration by the Complainant and with the purpose of selling it for profit.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets out the three requirements that the Complainant must prove in order to succeed:
(i) that the Respondent's disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant owns trade mark registrations comprising and containing CALVIN KLEIN in the United States and around the world, including in Hong Kong, where the Respondent is based. The Complainant's demonstration of its widespread use, advertisement and promotion is further evidence that CALVIN KLEIN is a trade mark in which the Complainant has rights.
The disputed domain name is confusingly similar to the CALVIN KLEIN trade mark, owing to the fact that the former wholly incorporates the latter. Because of the Complainant's involvement in the fashion industry, the addition of the word "photos" does not reduce the likelihood of confusion. Neither does the presence of the generic Top-Level Domain ".com".
The Panel therefore finds that the Complainant has satisfied the condition in paragraph 4(a)(i) of the Policy, and that the disputed domain name is confusingly similar to the trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the criteria that determine whether a domain name registrant has rights or legitimate interests in a 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) as an individual, business or other organisation, the Respondent 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 has been making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant, in its contentions (see section 5.A), has made the prima facie case that the Respondent satisfies none of these criteria and so lacks rights or legitimate interests in the disputed domain name under paragraph 4(c). The burden of satisfying the criteria has therefore shifted to the Respondent. In failing to respond in these proceedings, the Respondent has failed both to rebut the prima facie case made by the Complainant and to put forward any other evidence in support of its rights or legitimate interests.
The Panel finds that the Complainant has satisfied the condition in paragraph 4(a)(ii) of the Policy, and that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out the non-exhaustive criteria for bad faith. Generally, for the purposes of the Policy, bad faith constitutes the intention to register and use a domain name in order to:
(i) sell, rent or transfer the domain name to the trade mark owner (or a competitor thereof) for a profit;
(ii) prevent the trade mark owner from registering its trade mark in a domain name;
(iii) disrupt the business of a competitor; or
(iv) divert Internet traffic for commercial gain.
The Complainant has not advanced evidence going to the specific intent underlying any of these four criteria or to paragraph 4(a)(iii) of the Policy more generally. However, the Complainant rightly points out that the Respondent's registration of the disputed domain name has the same detrimental effects on the Complainant as are considered in paragraphs 4(b)(ii) and 4(b)(iii), and imputes to the Respondent the intention necessary to satisfy the criterion in paragraph 4(b)(iv).
Under paragraph 14(b) of the Policy, the Panel may make the inferences it considers appropriate from the Respondent's failure to respond in the proceedings. In particular, this failure can be taken by the Panel to imply that the Respondent does not deny the Complainant's assertions regarding the Respondent's motives in registering the disputed domain name. Likewise, the Respondent's failure to respond to the cease-and-desist letter it received is an indication of registration of the disputed domain name in bad faith.
Furthermore, the Respondent's passive, unauthorised use of the disputed domain name, which wholly contains a trade mark vigorously promoted and widely known around the world, may be taken to imply an intention to create an association with the trade mark as a means of diverting Internet users to the Respondent's website, for no conceivable legitimate purpose. See Société pour l'Oeuvre et la Mémoire d'Antoine de Saint Exupéry - Succession Saint Exupéry – D'Agay v. Perlegos Properties, WIPO Case No. D2005-1085.
Accordingly, the Panel finds that the Complainant has satisfied the condition in paragraph 4(a)(iii) of the Policy, and that the disputed domain name has been registered and is being used in bad faith.
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 <calvinkleinphotos.com> be transferred to the Complainant.
Date: April 3, 2017