WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Calvin Klein Trademark Trust, Calvin Klein Inc. v. Camille Walters
Case No. D2018-1107
1. The Parties
The Complainant is Calvin Klein Trademark Trust, Calvin Klein Inc. of New York, New York, United States of America (“United States”), represented by Kestenberg Siegal Lipkus LLP, Canada.
The Respondent is Camille Walters of Breda, the Netherlands, self-represented.
2. The Domain Name and Registrar
The disputed domain name <calvinklein.amsterdam> (“Domain Name”) is registered with Metaregistrar BV (the “Registrar”).
3. Procedural History
The complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 16, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 17, 2018, the Registrar transmitted by email to the Center its verification response informing that the Respondent is listed as the registrant and providing the contact details.
The Center sent an email communication in Dutch and English to the Parties on May 22, 2018, regarding the language of the proceeding, as the Complaint was submitted in English and the language of the registration agreement for the Domain Name is Dutch. The Complainant confirmed its request for English to be the language of the proceeding on May 22, 2018. On the same day, the Respondent sent an email communication in English to the Center with the possibility of transferring the Domain Name to the Complainant. Taking into account the Respondent’s email, the Center sent an email to the Parties inviting the Complainant to request a suspension of the proceeding so that the Parties could explore settlement options. The Complainant sent an email requesting the suspension of the proceeding on May 24, 2018. The Center notified the Parties of the suspension of the proceeding on May 24, 2018. The Complainant requested by email the reinstitution of the proceeding on June 11, 2018. The Center reinstituted the proceeding on June 12, 2018.
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 June 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 9, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Parties of the Commencement of Panel Appointment Process on July 11, 2018.
The Center appointed Geert Glas as the sole panelist in this matter on July 24, 2018. 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
Calvin Klein Trademark Trust and Calvin Klein, Inc, collectively referred to as Complainant, have been engaged for years in the worldwide production, sale, and licensing of men’s and women’s apparel, fragrances, accessories, footwear, and other merchandise.
The Complainant holds trademark registrations for CALVIN KLEIN in various jurisdictions, including in the United States with trademark registration number 1086041, registered on February 21, 1978., as well as in the United Kingdom of Great Britain and Northern Ireland, the European Union, China, the Russia Federation, and the Netherlands.
The Registrar has confirmed to the Center on May 17, 2018, that the Domain Name has been registered to Camille Walters, the Respondent, since December 30, 2017. It appears from the Complaint that the website to which the Domain Name resolves displays the message: “[t]he domain name calvinklein.amsterdam has been deleted”. Additionally, the website contains (i) a listing of other domain names that are offered for sale, such as <thecalvinklein.com> and <calvinkleinunderklader.se> and (ii) a search function allowing the visitor to search through “millions of domains”.
5. Parties’ Contentions
The following is a summary of the Complainant’s contentions.
The Complainant requests that the Domain Name be transferred to it on the following grounds:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (first element (i) of paragraph 4(a) of the Policy)
The Complainant contends that the Domain Name is confusingly similar to its CALVIN KLEIN trademark. With regard to said trademark, the Complainant contends that it has developed considerable goodwill. The Complainant supports this position by referring to millions of customers and billions of dollars in sales. The Complainant further argues that it has spent considerable efforts on promotional campaigns, and that its website “www.calvinklein.com” has received hundreds of millions of visitors since its launch. The Complainant contends that its numerous trademark registrations and widespread use, advertising, and promotion of the Calvin Klein marks establish rights in the mark pursuant to the first element of paragraph 4 of the Policy.
The Complainant points out that the Domain Name incorporates the trademark CALVIN KLEIN in its entirety and that the addition of the generic Top-Level Domain (“gTLD”) “.amsterdam” further adds to the confusion given that the Complainant has a physical presence with stores in the Netherlands, and that its parent company, PVH, has an office in Amsterdam.
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name (second element (ii) of paragraph 4(a) of the Policy)
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name since (i) the Respondent had constructive knowledge of the Complainant’s CALVIN KLEIN trademark registrations, which predate Respondent’s registration by nearly fifty years; (ii) Complainant’s CALVIN KLEIN marks are well known and famous and have been so for many years; (iii) the Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial purpose; (iv) the Respondent is likely not commonly known by the name “Calvin Klein”; and (v) the Complainant has not authorised or licensed the Respondent to register the Domain Name.
(iii) The Respondent has registered and is using the Domain Name in bad faith (third element (iii) of paragraph 4(a) of the Policy)
The Complainant contends that the Respondent has registered and is using the Domain Name in bad faith since the Respondent is diverting Complainant’s customers or potential customers seeking information about the Complainant to a website over which the Complainant has no control.
The Complainant also contends that the Respondent registered the Domain Name solely to prevent the Complainant from doing so, and that it was acquired for the purpose of selling the Domain Name for valuable consideration in excess of the Respondent’s out-of-pocket expenses. In support, the Complainant contends that an email correspondence between the Complainant and the Respondent demonstrates the Respondent’s attempt to sell the Domain Name to the Complainant; the refusal to transfer the Domain Name before payment was made; and the refusal to provide documentation evidencing the Respondent’s reasonable out-of-pocket expenses.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) the respondent’s 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 domain name; and
(iii) the respondent’s domain name has been registered and is being used in bad faith.
A. Language of the proceeding
Before considering the three elements of paragraph 4(a), the issue of the language of the proceeding should be addressed.
The complaint was filed in English and the Complainant requests that the language of the proceeding be English because the Domain Name and the website to which the Domain Name resolves are in English. The Center has made a preliminary determination to accept the complaint filed in English, noting the Panel’s authority to determine the language of proceedings.
Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, i.e., Dutch. However, the Panel has the authority to determine otherwise, having regard to the circumstances of the administrative proceeding.
In light of the requirements of paragraph 10(b)-(c) of the Rules, such decision must be appropriate in the spirit of fairness and justice to both parties, giving full consideration to the parties’ command of a language, and the time and costs involved (see, e.g., Louise Rennison v. Milan Kovac, WIPO Case No. D2012-0211; SWX Swiss Exchange v. SWX Financial LTD, WIPO Case No. D2008-0400; Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679).
It should be noted that the Panel cannot infer any consequence from the Complainant’s contention that the Domain Name is in English because the Domain Name consists of a personal name “Calvin Klein” followed by a city name, “amsterdam”, both of which are spelled identically in English and in Dutch. It should also be noted that the current content of the website to which the Domain Name resolves consists of a standard message displayable both in Dutch and English, as well as in several other languages.
However, the communications between the parties, which were initiated by the Complainant’s cease and desist letter and followed by negotiations on a potential transfer, were entirely in English. It appears from these communications that the Respondent is proficient and conversant in the English language. The English used by the Respondent in its e-mails demonstrates its ability to understand and communicate in English without difficulties.
The Panel further notes that no objection was made by the Respondent to the complaint being in English and that no request was made by the Respondent that the proceeding be conducted in Dutch, the language of the registration agreement.
Finally, the Panel also finds that translating of the complaint would result in additional costs and delays, which cannot be justified given the Respondent’s apparent command of English.
Taking the above circumstances into account, the Panel finds that it is appropriate to rely on its authority referred to in paragraph 11 of the Rules, and thus allows the proceeding to be conducted in English.
B. Identical or Confusingly Similar
The Complainant has demonstrated that it is the owner of numerous CALVIN KLEIN trademarks throughout the world, some of which predating the Respondent’s registration of the Domain Name by tens of years, and that it has invested considerably in the widespread use, advertising, and promotion of these trademarks. The Panel considers that the Complainant’s rights to the trademark CALVIN KLEIN are established. It is equally established that the Complainant’s trademark registrations pre-date the Respondent’s Domain Name registration.
It is true that the Domain Name incorporates the Complainant’s mark in its entirety. Whether or not they can be considered identical depends on the relevance of the addition of the gTLD <.amsterdam>. Previous Panels have disregarded the gTLD when addressing the issue of identicalness or confusing similarity (see e.g. G4S Plc v. Noman Burki, WIPO Case No. D2016-1383; Mozilla Foundation and Mozilla Corporation v. Limpkin Walker, WIPO Case No. D2008-0007 and SBC Communications Inc. v. Fred Bell aka Bell Internet, WIPO Case No. D2001-0602). Section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) confirms that the gTLD should be disregarded when establishing the first element of paragraph 4(a). Previous decisions illustrate that the gTLD should be equally disregarded with regard to so-called “new gTLDs” (see e.g. Starwood Hotels & Resorts Worldwide, Inc. and Westin Hotel Management, L.P. v. Hyper.Directory Inc., WIPO Case No. D2014-1315 <westin.berlin> and Statoil ASA v. Daniel MacIntyre, Ethical Island, WIPO Case No. D2014-0369 <statoil.holdings>; see also Section 1.11.2 WIPO Jurisprudential Overview 3.0). The only exception to this rule seems to be that the gTLD may be considered when the gTLD contains a part of the trademark (see e.g. Compagnie Générale des Etablissements Michelin v. Pacharapatr W., WIPO Case No. D2016-2465 <tyre.plus>; Tesco Stores Limited v. Mat Feakins, WIPO Case No. DCO2013-0017 <tes.co>; Banco Bradesco S/A v. Paulo Araujo, WIPO Case No. D2010-0049 <brades.co>; see also section 1.11.3 WIPO Jurisprudential Overview 3.0). The Panel considers that, in the case at hand, there is no reason to deviate from the general rule that the gTLD should be disregarded when addressing the issue of identicalness or confusing similarity. Following such comparison of the second level portion of the Domain Name and the Complainant’s trademark, the Domain Name is identical to the trademark of the Complainant.
Consistently with the sources cited above, the Panel finds that the Domain Name is identical to the Complainant’s trademark.
Consequently, the Panel finds that the first element under paragraph 4(a) of the Policy has been established.
C. Rights or Legitimate Interests
Although the complainant bears the general burden of proof with regard to establishing all three elements of paragraph 4(a) of the Policy, the consensus view is that once the complainant has made a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy (see e.g. Accor v. Eren Atesmen, WIPO Case No. D2009-0701; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0445; Dow Jones & Company, Inc., (First Complainant) and Down Jones LP (Second Complainant) v. The Hephzibah Intro-Net Project Limited (Respondent), WIPO Case No. D2000-0704; section 2.1 WIPO Jurisprudential Overview 3.0).
Evidence submitted by the Complainant indicates that the Respondent (i) is not using the Domain Name in connection with a bona fide offering of goods or services, as the website is parked; (ii) is probably not commonly known under the Domain Name; (iii) is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers, illustrated by the advertisements displayed on the website to which the Domain Name resolves; or (iv) has not been authorised by the Complainant to use the CALVIN KLEIN trademark.
Given that the Respondent did not reply to the Complainant’s contentions and did not offer any explanation for its use of the Domain Name, the Panel considers that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and has satisfied its burden of proof under this element of the Policy.
Accordingly, the Panel finds that the second element under paragraph 4(a) of the Policy has been established.
D. Registered and Used in Bad Faith
The Panel then turns to the question whether the Domain Name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy offers several examples of circumstances that indicate registration and use of 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 that complainant, for valuable consideration in excess of the respondent documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that 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) circumstances indicating that the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site 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 web site or location or of a product or service on the respondent’s website or location.
Previous UDRP panels have ruled that in appropriate circumstances, bad faith is established where a complainant’s trademark has been shown to be well known or in wide use at the time of registering a domain name (see e.g. Caesars World, Inc. v. Forum LLC., WIPO Case No. D2005-0517; The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556).
In line with previous decisions (see e.g. Calvin Klein Trademark Trust and Calvin Klein, Inc. v. Doru Ionescu, WIPO Case No. DRO2017-0004; Calvin Klein Inc. and Calvin Klein Trademark Trust v. Oneandone Private Registration / Ethan Croft, WIPO Case No. D2017-0256; Calvin Klein Trademark Trust and Calvin Klein, Inc. v. Tyler Wong, WIPO Case No. D2015-0822), the Panel finds that the CALVIN KLEIN trademark has acquired an extensive and worldwide reputation and is to be regarded as being well known. As a result, the Panel finds it highly improbable that the Respondent was not aware of the registered trademarks at the time of the registration of the Domain Name.
Consequently, the Panel finds that the Domain Name was registered in bad faith.
The Panel notes that while negotiating a potential transfer of the Domain Name, the Complainant offered to pay “the reasonable out-of-pocket expenses” associated with the registration of the Domain Name, to which the Respondent replied with “In that case I am not interested”. As such, it is apparent that the Respondent refused to transfer the Domain Name to the Complainant absent a payment by the latter that exceeded the expenses incurred by the Respondent in registering the Domain Name.
The mere fact that the Domain Name was offered for sale at a value above the cost of registration is not per se sufficient to ground a finding of bad faith. However, considered together with the facts that (i) the Respondent did not reveal any plans for an intended genuine legitimate use for the Domain Name when contacted by the Complainant; and (ii) the Domain Name fully incorporates the Complainant’s well-known and long established trademarks, the Panel considers that the offer for sale of the Domain Name by the Respondent evidences the Respondent’s use in bad faith of the Domain Name (see e.g. European Broadcasting Union v. Domain 4 sale, WIPO Case No. D2000-0737; The Chase Manhattan Corporation and Robert Fleming Holdings Limited v. Paul Jones, WIPO Case No. D2000-0731).
In addition, the Panel finds that the Domain Name bears no relationship whatsoever to the Respondent’s name or business and in fact has no other meaning except for incorporating the trademark of the Complainant. In this regard, previous UDRP panels have found that where a domain name is so obviously connected with a complainant, its very use by someone with no connection with said complainant suggests opportunistic bad faith (see e.g., Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Legacy Health System v. Nijat Hassanov, WIPO Case No. D2008-1708).
Furthermore, the evidence of bad faith is further strengthened by the fact that the Domain Name resolves to a website listing other domain names for sale. The Respondent has not demonstrated any intent to bona fide use the Domain Name, and instead immediately revealed an interest in selling the Domain Name when contacted by the Complainant.
Finally, the Domain Name resolves to a website offering domain names for sale, some of which also include the trademark CALVIN KLEIN such as <calvinkleinunderklader.se>. As such, the Complainant’s trademark is being used to generate revenue from Internet advertising, which is another indicator of bad faith (see e.g. Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556; Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320; Balglow Finance S.A., Fortuna Comércio e Franquias Ltda. v. Name Administration Inc. (BVI), WIPO Case No. D2008-1216). Whether the Respondent is the immediate beneficiary of the commercial gain is not relevant. It suffices that a third party stands to reap the profits of the Respondent’s wrongful conduct (see e.g. Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912; Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273; section 3.5 WIPO Overview 3.0).
For these reasons, and given that the Respondent has not offered any explanation as to why the registration and use of the Domain Name were not in bad faith, the Panel considers that the Respondent has registered and used the Domain Name in bad faith.
Accordingly, the Panel finds that the third element under paragraph 4(a) of the Policy has been established.
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.amsterdam>, be transferred to the Complainant, Calvin Klein, Inc.
Date: August 6, 2018