WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Calvin Klein Trademark Trust and Calvin Klein Inc. v. Datos Privados
Case No. D2019-0630
1. The Parties
Complainants are Calvin Klein Trademark Trust (“Complainant#1”) and Calvin Klein Inc. (“Complainant#2”), of New York, United States of America (“United States”), represented by Kestenberg Siegal Lipkus LLP, Canada.
Respondent is Datos Privados of A Rua De Valdeorras, Spain.
2. The Domain Name and Registrar
The disputed domain name is <calvinkleinoutletvip.com> which is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).
3. Procedural History
The Complaint was filedwith the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2019. On March 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 22, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from those in the Complaint. The Center sent an email communication to Complainants on March 29, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainants to submit an amendment to the Complaint. Complainants filed an amendment to the Complaint on March 30, 2019.
The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on April 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 21, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 23, 2019.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on April 26, 2019. This Panel finds that it was properly constituted. This 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
Complainant#1, a business trust, has rights over the CALVIN KLEIN trademark for which it holds registration No. 1086041 in class 25, registered on February 21, 1978, and the CALVIN KLEIN figurative trademark for which it holds registration No. 1633261 in class 25, registered on January 29, 1991, both with the United States Patent and Trademark Office (the “Trademarks”).
Complainant#2 has been engaged in the production, sale and licensing of men’s and women’s apparel, fragrances, accessories and footwear, among others, and is the beneficial owner of the trademarks owned by Complainant#1.
Complainant#2 appears as registrant of the following domain names: <calvinklein.com> created on June 9, 1997, <calvinkleinunderwear.com> created on March 23, 1999, <calvinkleinfashion.com> created on January 23, 2005 and <calvinkleinbags.com> created on May 16, 2005.
The disputed domain name was registered on February 26, 2015. At the time the Complaint was filed, the the disputed domain name was redirected to the website associated to “https://outletvip.net/calvin-klein/” and showed, among others, “Outlet VIP”, “Calvin Klein Outlet”, “Anuncio Special offer – Ends 3/31 Receive $250 off Pixel 3 when you purchase at Google Store”, “Se acabó renunciar a la calidad, tan solo el precio”, “Bolsos Calvin Klein Outlet: El bolso es uno de los complementos más especiales, por ese motivo Calvin Klein cuenta con un gran número de diseños. Si quieres comprar los diseños más exclusivos de todas las temporadas te animo a que entres en esta sección y a que te asombres con los descuentos”, “Calzoncillos Calvin Klein Outlet: Gracias a los CALVIN KLEIN OUTLET ONLINE podrás renovar la ropa interior de tu armario y llevar uno de los calzoncillos más cómodos que existen y es que el tejido se adapta perfectamente a la piel”, “Mostrando 1-8 de 289 resultados”, “Borsa Tracollina Calvin Klein Jeans | Melissa | P/E 2016 | K60K601539-Red Stripe 99,17€ 59,50€ AÑADIR AL CARRITO”, “BOSS Hugo Boss Boxer 3P BM 10146061 07 - Retroshorts Hombre, Negro (Black 1), Large (Talla del fabricante: L) 39,90€”, “Bóxers Calvin Klein 0000U2780A LEER MÁS”.
5. Parties’ Contentions
Complainants’ assertions may be summarized as follows.
Complainants have used the Trademarks since as early as 1968. As a result of such use, customers in the United States and worldwide have come to associate the Trademarks with Complainants’ high quality products. Accordingly, Complainants have developed considerable goodwill in the Trademarks.
Complainants also own a number of domain name registrations which wholly incorporate the CALVIN KLEIN trademark. Since their registration, Complainants have used and continue to use such domain names in connection with various web sites that provide information about Complainants and products and services, as well as offer such products for sale.
The Trademarks are well known and famous and have been for many years. Over the years, Complainants have expended millions of dollars in advertising and promoting the products under the Trademarks in a variety of media throughout the world, including print, television, and radio advertisements. Complainants have also advertised the Trademarks through direct mail and on the Internet, including on the web sites associated with Complainants’ domain names.
Complainants’ CALVIN KLEIN products are sold exclusively through Complainants’ own retail stores, outlet stores and web sites (including “www.calvinklein.com”) and through authorized dealers (which include national specialty stores, such as Macys, Neiman Marcus, etc.).
The disputed domain name incorporates the CALVIN KLEIN trademark in its entirety. The extension “.com” is not taken into consideration when examining the identity or similarity between the previous marks and the disputed domain name. The terms “outlet” and “vip” likely add to any confusion since Complainants operate outlet stores worldwide, and have a Preferred Loyalty Program, which some may confuse with the use of the term “vip” (short for “very important person”). Accordingly, the disputed domain name is confusingly similar to the Trademarks.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, and Complainants have not authorized or licensed Respondent to use or register a domain name which incorporates the Trademarks. Respondent’s registration of a domain name wholly incorporating a famous trademark is not supported by legitimate interests.
The disputed domain name was registered more than thirty years after Complainants first used the Trademarks. Additionally, Complainants registered and began operating the web sites at <calvinklein.com>, <calvinkleinfashion.com> and others several years before Respondent registered the disputed domain name. Respondent was aware of Complainants’ domain names and web sites associated with the same before it registered the disputed domain name because Complainants’ web sites were operational and thus easily accessible to Respondent at the time Respondent registered the disputed domain name. Because Respondent is charged with constructive knowledge of Complainants’ Trademark registrations, Respondent has no proprietary rights, or legitimate interests, in the disputed domain name.
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. Complainants have not authorized or licensed Respondent to use the Trademarks in connection with any goods or services on the disputed domain name. The disputed domain name diverts Internet users seeking Complainants’ web site, redirecting users to a different web site offering for sale counterfeit products bearing the Trademarks, which are not authorized to be sold. That does not constitute a bona fide offering of goods or services.
Respondent registered and is using the disputed domain name in bad faith.
Respondent selected the disputed domain name after it was well aware of Complainants’ rights in and to the Trademarks. The disputed domain name contains links to a different web site (“https://outletvip.net”) selling counterfeit merchandise bearing Complainants’ intellectual property.
Respondent is diverting Complainants’ customers or potential customers seeking information about Complainants to the web site which the disputed domain name resolves. Complainants have no control over the use of the disputed domain name using its primary intellectual property. The disputed domain name diverts Internet users to unauthorized sources of merchandise bearing the Trademarks or goods/services having no affiliation with or to Complainants.
Respondent’s registration of the disputed domain name was solely done to prevent Complainants from registering the same. Respondent’s use of the disputed domain name to attract Internet users by creating a likelihood of confusion with Complainants’ Trademarks as to the source, sponsorship, affiliation or endorsement of the disputed domain name satisfies the requirements of paragraph 4(b)(iv) of the Policy.
Complainants request that the disputed domain name be transferred to Complainants.
Respondent did not reply to Complainants’ contentions.
6. Discussion And Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
As regards to having multiple complainants filing a single complaint, although the Policy uses the term “complainant” throughout, it does not preclude the filing of a single complaint by several persons. This Panel considers that it is appropriate to have both Complainant#1 and Complainant#2 as Complainants in this procedure since both have interests in and to the Trademarks and have shown a common grievance against Respondent (see Desarrollo Marina Vallarta, S.A. de C.V. / Daniel Jesus Chavez Moran v. Karla Vallejo, WIPO Case No. D2013-0962; and section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The lack of response from Respondent does not automatically result in a favorable decision for Complainants (see Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465). The burden for Complainants, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights; (ii) that 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
It is undisputed that Complainants have rights over the Trademarks, as referred to in section 4 above.
Since the addition of a generic Top-Level Domain (“gTLD”) suffix after a domain name is technically required, it is well established that such element may be disregarded where assessing whether a domain name is identical or confusingly similar to a trademark. Further, it is also well explored that a domain name can only consist of an alphanumeric string, and cannot incorporate figurative or device elements of a mark (see Park Place Entertainment Corporation v. Mike Gorman, WIPO Case No. D2000-0699; and Espire Infolabs Pvt. Ltd. v. TW Telecom, WIPO Case No. D2010-1092).
The disputed domain name entirely incorporates the CALVIN KLEIN trademark, albeit with the suffix “outletvip” which is not distinctive. It is clear to this Panel that the addition of such descriptive term is not enough to avoid the disputed domain name’s confusing similarity with the Trademarks (see Moncler S.p.A. v. FOB Moncler, Moncler FOB, WIPO Case No. D2016-0424).
Thus this Panel finds that Complainants have satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainants have alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.
It is undisputed that the Trademarks are well-known internationally. Complainants assert that they have not authorized Respondent to use the Trademarks in the disputed domain name or in connection with any goods or services, and that Respondent is not commonly known by the disputed domain name.
Complainants contend that counterfeit products bearing the CALVIN KLEIN trademark are offered for sale through the disputed domain name, which Respondent chose not to rebut. Complainants provided screenshots of the web site associated to the disputed domain name (see section 4 above), which clearly show that Internet users are redirected to a web site that offers for sale purported CALVIN KLEIN products. Such use does not constitute a bona fide offering of products nor a legitimate noncommercial or fair use of the disputed domain name (see Goyard St-Honoré v. Fundacion Private Whois, Domain Administrator, WIPO Case No. D2012-1160, and section 2.13 of the WIPO Overview 3.0).
This Panel considers that Complainants have established prima facie that Respondent has no rights or legitimate interests in the disputed domain name. 1 In the case file there is no evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to a possible right to or legitimate interest in the disputed domain name by Respondent.
Based on the aforesaid, this Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Taking into consideration that Complainants’ registration and use of the Trademarks preceded the creation of the disputed domain name by a number of years, that the Trademarks are well known around the world, that Respondent is using the Trademarks without Complainants’ authorization, and the content of the web site associated to the disputed domain name, this Panel is of the view that Respondent should have been aware of the existence of the Trademarks and the goods marketed by Complainants at the time Respondent obtained the registration of the disputed domain name.
Complainants provided screenshots of the web site associated to the disputed domain name, from which it is clear that Respondent is using it for commercial gain to offer products bearing the Trademarks. 2
In this Panel’s view, the lack of response is also indicative that Respondent lacks arguments and evidence to support its holding of the disputed domain name.
In sum, the overall evidence in the file shows that Respondent’s choice of the disputed domain name was deliberate for its substantial similarity with, and with the intention to benefit from the reputation and goodwill of, the Trademarks, which denotes bad faith. 3
In light of the above, this Panel finds that Complainants have satisfied paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the disputed domain name <calvinkleinoutletvip.com> be transferred to Complainants.
Date: May 10, 2019
1 See Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467: “For methodical reasons it is very hard for the Complainant to actually prove that Respondent does not have rights or legitimate interests in respect of the domain name, since there is no strict logical means of verifying that a fact is not given [...] Many legal systems therefore rely on the principle negativa non sunt probanda. If a rule contains a negative element it is generally understood to be sufficient that the complainant, by asserting that the negative element is not given, provides prima facie evidence for this negative fact.” See also section 2.1 of the WIPO Overview 3.0.
2 As well as products bearing a well known trademark of a third party.
3 See Jafra Cosmetics, S.A. de C.V. and Jafra Cosmetics International, S.A. de C.V. v. ActiveVector, WIPO Case No. D2005-0250: “due to the intrinsically distinctive character of Complainants’ trademarks, it is inconceivable that the contested domain name would have been registered and used if it were not for exploiting the fame and goodwill of Complainants’ marks by diverting Internet traffic intended for Complainant…”.