WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Calvin Klein Trademark Trust and Calvin Klein, Inc. v. You Ming Wang

Case No. D2020-0653

1. The Parties

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

The Respondent is You Ming Wang, China.

2. The Domain Name and Registrar

The disputed domain name <calvinklein.luxe> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2020. On March 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 19, 2020, 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 March 19, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint in English and its translation in Chinese on March 19, 2020.

On March 19, 2020, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On March 19, 2020, the Complainant confirmed its request that English be the language of the proceeding, and provided a translated Complaint in Chinese. On March 20, 2020, the Center received an email communication in English from the Respondent. On March 25, 2020, the Center sent an email regarding possible settlement to the Parties. On the same day, the Center received the Complainant’s reply that it does not wish to request a suspension. On March 25, 2020, the Center received an email communication in English from the Respondent, requesting Chinese be the language of the proceeding.

The Center verified that the Complaint together with the amended Complaint and its translation 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 March 26, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 15, 2020. On March 26, 2020, the Center received a communication from the Respondent in English and Chinese, indicating its willingness to transfer the disputed domain name for USD 1,000. No formal Response was filed with the Center. On April 16, 2020, the Center informed the Parties that it would proceed to appoint a panel.

The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on April 24, 2020. 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 Calvin Klein Trademark Trust is a U.S. entity incorporated in Delaware. It is the registered owner of the CALVIN KLEIN trademarks in this proceeding. The Complainant Calvin Klein, Inc. is the beneficial owner of the trademarks. The Complainant is active in the global fashion industry, especially has been engaged in the production, sale and licensing of men’s and women’s apparel, fragrances, accessories, etc. The Complainant claims it has millions of customers worldwide and billions of USD in sales.

The Complainant owns many trademarks for CALVIN KLEIN, including, for example, the U.S. trademark registration number 1086041, registered on February 21, 1978 and number 1633261, registered on January 29, 1991. The Complainant claims it has extensively used the marks since 1968, and the marks have achieved high reputation in the world. Moreover, the Complainant also owns various domain names, including, for instance, <calvinklein.com>, registered on June 9, 1997, and <calvinkleinfashion.com>, registered on January 23, 2005. The disputed domain name was registered on February 28, 2020. The Complainant submits evidence that the disputed domain name directed to an inactive page. On the date of this decision, the disputed domain name still leads to an inactive webpage.

5. Parties’ Contentions

A. Complainant

The Complainant essentially contends that the disputed domain name is confusingly similar to its trademarks for CALVIN KLEIN, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith.

The Complainant claims that its trademarks are well established and widely recognized. The Complainant particularly submits that there are no justifications for the use of its trademarks in the disputed domain name, and contends that such use does not confer any rights or legitimate interests in respect of the disputed domain name and constitutes registration and use in bad faith. Moreover, the Complainant claims the disputed domain name refers to its business in relation to luxury brand lines, which most likely leads to the consumers’ likelihood of confusion.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

6.1. Preliminary Issue: Language of the Administrative Proceeding

Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

The language of the Registration Agreement is Chinese, and the Complaint was filed in English. On March 19, 2020, the Center notified the Complainant that the language of the Registration Agreement is Chinese. On the same day, the Complainant confirmed its request that the language of the proceeding be English, amended the original English Complaint, and provided a Chinese translation to the Complaint. The Respondent sent several emails to the Center in English. On March 25, 2020, the Respondent requested Chinese be the language of the proceeding and argued it could not understand English.

The Panel has carefully considered all elements of this case, in particular, the Complainant’s request that the language of the proceeding be English; the fact that all communications from the Center have been sent in English and Chinese to the Parties; the Respondent’s emails in English to the Center that demonstrated its ability of understanding and communicating in English; and the fact that the Complainant provided a translation of its Complaint in Chinese. In view of all these elements, the Panel rules that the language of the proceeding shall be English.

6.2. Discussion and Findings on the Merits

The Policy requires the Complainant to prove three elements:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the 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.

Based on the evidence and arguments submitted, the Panel’s findings are as follows:

A. Identical or Confusingly Similar

The Panel finds that the Complainant has shown that it has valid rights in the mark CALVIN KLEIN based on its intensive use and registration of the same as a trademark globally.

Moreover, as to confusing similarity, the disputed domain name wholly incorporates the Complainant’s registered trademark CALVIN KLEIN. The applicable Top-Level Domain (“.luxe” in this case) is viewed as a standard registration requirement, and may as such be disregarded by the Panel. See in this regard the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), section 1.11.1. Moreover, the WIPO Overview 3.0, section 1.7, states: “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing” (see also Wal-Mart Stores, Inc. v. Richard McLeod d/b/a For Sale, WIPO Case No. D2000-0662).

Accordingly, the Panel finds that the disputed domain name is identical to the Complainant’s registered trademark, and that the Complainant has satisfied the requirements of the first element under the Policy.

B. Rights or Legitimate Interests

On the basis of the evidence and arguments submitted, the Panel holds that the Complainant has made out a prima facie case that that the Respondent is not, and has never been, an authorized reseller, service provider, licensee or distributor of the Complainant, and is not making legitimate noncommercial use or fair use of the Complainant's trademarks. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1). However, no evidence or arguments have been submitted by the Respondent in reply.

Furthermore, the Panel notes that the nature of the disputed domain name, being identical to the Complainant’s trademark, and using “.luxe” as the Top-Level Domain, carries a high risk of implied affiliation with the Complainant (see also WIPO Overview 3.0, section 2.5.1). There is also no evidence that the Respondent is commonly known by the disputed domain name.

On the basis of the foregoing, the Panel finds that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the requirements of the second element under the Policy.

C. Registered and Used in Bad Faith

The Panel holds that the registration of the disputed domain name was clearly intended to take unfair advantage of the Complainant’s trademarks, by using such trademarks to mislead and divert consumers to the disputed domain name. Given the distinctiveness and fame of the Complainant’s trademarks, including in the Respondent’s home jurisdiction China, the Panel holds that the registration of the disputed domain name, clearly targeting the Complainant’s well-known trademarks, was obtained in bad faith.

Moreover, even a cursory Internet search at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainant owned registered trademarks in CALVIN KLEIN and used these extensively. The Respondent still chose the “.luxe” Top-Level Domain, so it obviously aimed to associate the disputed domain name with the Complainant’s business in luxury brand lines. In the Panel’s view, the preceding elements clearly establish the bad faith of the Respondent in registering the disputed domain name.

As to use of the disputed domain name in bad faith, the disputed domain name resolves to an inactive website. UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. See WIPO Overview 3.0, section 3.3. The Panel finds so under the circumstances of this case. Moreover, the Respondent proposed to sell the disputed domain name to the Complainant for USD 1,000, in an email dated March 26, 2020. This also indicates the intention for profit by the Respondent.

The Panel has reviewed all elements of this case, and in particular: the identity of the disputed domain name to the Complainant’s trademarks, the high degree of distinctiveness and fame of the Complainant’s trademarks, the fact that the Respondent selected “.luxe” to associate the disputed domain name with the Complainant’s luxury brand lines, and the fact that the Respondent offered to sell the disputed domain name to the Complainant at a price obviously in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name. On the basis of the foregoing elements, the Panel rules that it has been demonstrated that the Respondent has used, and is using the disputed domain name in bad faith.

Finally, the Respondent failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore finds that the Complainant has satisfied the requirements of the third element under 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 <calvinklein.luxe> be transferred to the Complainant Calvin Klein, Inc.

Deanna Wong Wai Man
Sole Panelist
Date: May 11, 2020