WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Calvin Klein Trademark Trust and Calvin Klein, Inc. v. Richard Vogler
Case No. D2019-2484
1. The Parties
The Complainants are Calvin Klein Trademark Trust and Calvin Klein, Inc., United States of America (“U.S.”), represented by Kestenberg Siegal Lipkus LLP, Canada.
The Respondent is Richard Vogler, U.S.
2. The Domain Name and Registrar
The disputed domain name <calvinkleinhandbags.org> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2019. On October 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 10, 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 the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on October 11, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on October 11, 2019.
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 October 16, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 5, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 6, 2019.
The Center appointed Stefan Naumann as the sole panelist in this matter on November 19, 2019. 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 U.S. companies that sell men’s and women’s apparel, underwear, footwear and accessories. Although the Complainants did not provide evidence of their corporate registrations, the Panel was able to confirm these with the publically accessible databases of the Delaware Secretary of Commerce and New York State Department of State using the company names provided by the Complainants.
The Complainants submitted copies of two U.S. trademark registrations for the trademarks CALVIN KLEIN. The Panel was able to confirm with the publically accessible database of the United States Patent and Trademark Office that the Complainants’ U.S. trademarks are active and enforceable.
The Complainants further submitted an affidavit by a representative of one of the Complainants, who declares that one or both Complainants registered CALVIN KLEIN trademarks in the United Kingdom, European Union and China respectively in 1994, 1999 and 2001. The Complainants did not submit proof of registration of these trademarks or of their renewals. The Panel considers that an affidavit claiming trademark registrations unsupported by copies of the alleged registrations cannot establish by itself trademark rights. As both the Complainants and the Respondent provided U.S. addresses, the lack of substantiation by Complainants of trademark rights outside the U.S. does not adversely affect their claim in the present matter.
The Complainants further submitted domain name registrations for their domain names with the terms “Calvin Klein”, alone or in combination with generic terms such as logo, underwear or fashion.
The Respondent registered the disputed domain name <calvinkleinhandbags.org> on February 28, 2015. The homepage of the website at “www.calvinkleinhandbags.org” invites visitors to “Shop at our store”, “Buy-Your-Rare-Calvin Klein-Genuine-Crocodile-Clutch – Here and NOW!!! It is signed “By Rick Vogler” and bears a 2017 copyright notice.
The Complainants’ counsel sent Respondent cease and desist letters in 2016, 2017 and 2018.
5. Parties’ Contentions
In their complaint, the Complainants assert (i) that their CALVIN KLEIN marks are well known and famous, and that their products are sold exclusively through their own retail stores, outlet stores and websites, and through select authorized dealers, (ii) that the Respondent has no permission from the Complainants to use the Complainants’ trademarks or apply for a domain name with the Complainants trademarks, (iii) that the addition of the term “handbags” in the disputed domain name <calvinkleinhandbags.org> leads to additional confusion, (iv) that Respondent has no rights or legitimate interests in the disputed domain name, and (v) that the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
In order to succeed in their claim, the Complainants must demonstrate that all three elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name must be identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(ii) the Respondent must have no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name must have been registered and used in bad faith.
A. Identical or Confusingly Similar
The Complainants have established U.S. trademark rights in the trademark CALVIN KLEIN as described in section 4 above.
The disputed domain name combines the terms “Calvin Klein” with the term “handbags” and the Top-Level Domain (“TLD”) “.org”. The addition of the TLD does not affect the fact the disputed domain name reproduces the Complainants’ U.S. CALVIN KLEIN marks. In this context, established UDRP practice considers that the addition of the TLD does not affect the comparison and determination of whether a domain name is identical or confusingly similar to a trademark. The Panel agrees with this principle.
The addition of the descriptive term “handbags” to the terms “Calvin Klein”, which is identical to the Complainants’ trademark, does not dispel the confusing similarity since the Complainants’ trademark remains completely recognizable in the disputed domain name. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel is satisfied that the disputed domain name is confusingly similar to the Complainants’ U.S. trademarks for the purposes of the Policy.
B. Rights or Legitimate Interests
The Respondent has chosen not to reply to the Complaint. The Panel finds that the Complainants have made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name <calvinkleinhandbags.org>, and finds no indication in the evidence that the Respondent could have claimed rights or legitimate interests of his own in the terms “Calvin Klein”. The Complainants assert that authentic CALVIN KLEIN products can only be purchased on the Complainants’ websites, their stores and at authorized dealers. The Respondent’s offer for sale of CALVIN KLEIN products absent a disclaimer thus can not support a claim of rights or legitimate interests. Moreover, the disputed domain name carries a risk of implied affiliation that is further enhanced by the addition of the term “handbag”, a product within the Complainants’ field of commerce and related to the unauthorized products offered for sale on the Respondent’s “www.calvinkleinhandbags.org” website. See section 2.5.1 of the WIPO Overview 3.0. In these circumstances, the Respondent’s use of the disputed domain name is without rights or legitimate interests.
The Panel considers that in the present case, the Respondent does not have any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The evidence shows that the Respondent is using the disputed domain name <calvinkleinhandbags.org> to offer for sale CALVIN KLEIN handbags for commercial gain. The Respondent’s offer for sale of CALVIN KLEIN handbags indicates that the Respondent was and is aware of the Complainants’ trademarks, and that he registered and is using the disputed domain name in bad faith because of its connection with the Complainants to create a likelihood of confusion with the Complainants’ trademarks. Further, the Panel finds that the combination of the terms “Calvin Klein” and “handbags” in the disputed domain name for a website that purports to offer CALVIN KLEIN handbags for sale in fact increases or is intended to increase this risk of confusion.
The Panel is satisfied that the disputed domain name was 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 <calvinkleinhandbags.org> be transferred to the Complainant Calvin Klein, Inc.
Date: December 2, 2019