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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Calvin Klein Trademark Trust and Calvin Klein, Inc. v. Francois Babicu

Case No. D2021-0136

1. The Parties

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

The Respondent is Francois Babicu, Seychelles.

2. The Domain Name and Registrar

The disputed domain name <calvjinklein.com> is registered with RegistryGate GmbH (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2021. On January 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 19, 2021, the Registrar transmitted by email to the Center its verification response 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 January 20, 2021, 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 in English on January 20, 2021. On January 20, 2021, the Center sent an email communication to the Parties in English and German regarding the language of the proceeding. On January 20, 2021, the Complainants provided a translated amended Complaint into German, however, it also requested that English to be the language of the proceeding.

The Center verified that the Complaint together with the amended Complaint and its translated version 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 in English and German of the Complaint, and the proceedings commenced on January 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 19, 2021.

The Center appointed Clive Duncan Thorne as the sole panelist in this matter on March 2, 2021. 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, organized under the Delaware law, United States, is the registered owner of the trade marks CALVIN KLEIN which it holds on trust for the Complainant, Calvin Klein, Inc. For the purposes of this decision the Complainants are referred to as “the Complainant”. Calvin Klein, Inc. is the beneficial owner of the marks which are used by it for a variety of merchandise.

Calvin Klein, Inc. has been engaged in the production, sale and licensing of men’s and women’s apparel, fragrances, accessories, and footwear, among other things, all in association with the Complainant’s intellectual property rights.

Evidence of the Complainant’s trade mark rights is set out in a Declaration filed on its behalf and exhibited at Annex C to the Complaint. In particular the Complainant relies on the registered trade marks for the mark CALVIN KLEIN in China, the European Union (“EU”), the United Kingdom and the US. These include:

- China registration No. 1681239 registered December 14, 2001 – CALVIN KLEIN;
- EU registration No. 000617381 registered January 29,1999 – CALVIN KLEIN;
- United Kingdom registration No. 1,492,382 registered January 21, 1994 – CALVIN KLEIN;
- US registration No. 1,086,041 registered February 21, 1978 – CALVIN KLEIN; and
- US registration No. 1,633,261 registered January 29, 1991 – CALVIN KLEIN (in stylized form).

Copies of the above US registrations from the United States Patent and Trademark Office are exhibited as Annex D to the Complaint.

The Declaration also evidences domain name registrations which incorporate the mark CALVIN KLEIN. These include: <calvinklein.com>, <calvinkleinbags.com>, <calvinkleinunderwear.com> and <calvinkleinfashion.com>. The Complainant has used and continues to use these domain names in connection with its various websites which provide information about the Complainant and its products and services. A true copy of the website associated with <calvinklein.com> is annexed to the Complaint as Annex G. These domain names have been registered and used since before the date of registration of the disputed domain name on November 10, 2020.

As can be seen from the Declaration the Complainant has used the trade mark CALVIN KLEIN continuously since at least 1968 in connection with the advertising, offering for sale and sale of its products throughout the world. It has resulted in millions of customers and billions of USD in sales. The CALVIN KLEIN marks are well known and famous. The Complainant has expended very large sums in advertising and promoting its products under the mark CALVIN KLEIN throughout the world in a variety of media including print, television and radio advertisements.

The Complainant has advertised using the marks CALVIN KLEIN through direct mail and on the Internet using the above domain names. Its products are also sold exclusively through its own retail stores, outlet stores and websites including < www.calvinklein.com> and through authorized dealers including Macy’s, Niemann Marcus, Saks Fifth Avenue and Berghof Goodman.

The disputed domain name leads Internet users to a Chrome-extension download page, a screenshot of which is exhibited at Annex A to the Complaint.

In the absence of a Response the Panel finds the above evidence adduced by the Complainant to be true.

5. Parties’ Contentions

A. Complainant

The Complainant submits:

(i) the disputed domain name <calvjinklein.com> is confusingly similar to the trade mark CALVIN KLEIN in which the Complainant has rights;
(ii) on the evidence the Respondent has no rights or legitimate interests in the disputed domain name;
(iii) on the evidence the Respondent registered and is using the disputed domain name in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Language of the 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 German. The Complaint was filed in English. Upon receipt of the Center’s notification regarding the language of the proceeding, the Complainant provided a translated amended Complaint in German while requesting that the language of the proceeding be English on January 21, 2021. The Respondent did not comment on the language of the proceeding.

The Panel has carefully considered all elements of this case, including:

a) the Complainant has provided a translated amended Complaint in German;
b) the Center has sent email communications to the Parties in English and German, in particular, the language of the proceeding, and notification of the Complaint;
c) the Respondent has chosen not to comment on the language of the proceeding nor did the Respondent file a Response;
d) the disputed domain name is composed of Latin characters, and leads Internet users to a Chrome-extension download page in English.

In view of all the above, the Panel determines that the language of the proceeding shall be English. The Panel further finds such determination would not cause any prejudice to either Party in his or her ability to articulate the arguments for this case.

B. Identical or Confusingly Similar

On the basis of the evidence of the Complainant’s trade mark registrations for the mark CALVIN KLEIN set out in section 4 above the Panel finds that the Complainant has registered rights in that mark. The evidence of the advertising and promotion of its products also establishes that it has acquired common law or unregistered rights in the mark for the purposes of the Policy.

The only difference between the mark CALVIN KLEIN and “calvjinklein” as used in the disputed domain name is the insertion of the additional letter “j” before the “i” in “calvin” so as to spell “calvjin”.

The Complainant submits that this is an instance of “typosquatting” wherein the Respondent has misspelled “calvin klein” so as to divert Internet traffic.

In the Panel’s view the addition of the single letter “j” to “calvin” is insufficient to avoid confusing similarity between “calvin” and “calvjin” and that therefore “calvjinklein” as used in the disputed domain name is confusingly similar to the mark CALVIN KLEIN.

The Complainant also submits on the basis of authority that the generic Top-Level Domain (“gTLD”) “.com” should not be taken into account in assessing confusing similarity. The Panel agrees with that submission.

The Panel therefore finds that the disputed domain name <calvjinklein.com> is confusingly similar to the trade mark CALVIN KLEIN in which the Complainant has trademark rights, within paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant submits that the Respondent would have been aware of the Complainant’s mark CALVIN KLEIN at the date of registration of the disputed domain name and would have had constructive knowledge of the registration of the trade mark.

It relies upon the fact that the disputed domain name was registered in 2020 more than 50 years after it first used the CALVIN KLEIN trade mark and began using its websites several years before registration of the disputed domain name. The Respondent registered the disputed domain name because the Complainant’s sites were operational and easily accessible to the Respondent. Moreover the evidence is that the CALVIN KLEIN marks are well known and “famous”.

The Complainant also submits that the Respondent has no rights or legitimate interests in the disputed domain name because the Respondent is not using it in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. This is shown by the extracts from the Respondent’s website exhibited at Annex A to the Complaint. The disputed domain name resolves to a page that requests the Internet user to download anti-virus software. It submits that it may contain dangerous content given that access is blocked depending on the “Internet Protocol” (IP) address that visits the site.

There is also no evidence that the Respondent is commonly known by reference to the disputed domain name. The Complainant also confirms that it has not authorized or licensed the Respondent to use or register a domain name incorporating the mark CALVIN KLEIN.

Taking the above evidence into account and in the absence of a Response the Panel accepts the Complainant’s submissions and finds that the Respondent has no rights or legitimate interests in the disputed domain name within paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant relies upon the following to establish this element:

(i) The Respondent is diverting the Complainant’s customers or potential customers seeking information about the Complainant to its own potentially harmful website to which the disputed domain name resolves. Internet users are led to a Chrome-extension download page, a screenshot of which is exhibited at Annex A to the Complaint.

(ii) The Respondent’s use of the disputed domain name is designed to attract Internet users to the website accessed by the disputed domain name by creating a likelihood of confusion with the Complainant’s trade mark CALVIN KLEIN as to the source, sponsorship, affiliation or endorsement of the disputed domain name within paragraph 4(b)(iv) of the Policy.

The Complainant also submits that the Respondent has been named as the respondent in Accenture Global Services Limited v. Francois Babicu, WIPO Case No. D2019-0898, in which the panel found that the registration and use of the domain name had constituted bad faith considering the famous character of the complainant’s marks and the respondent’s practice of typosquatting, and the panel ordered the domain name to be transferred to the complainant. Therefore, the Complainant submits that the registration of the disputed domain name was solely done to prevent the Complainant from registering the domain name and was acquired for the purpose of selling the domain name for a consideration in excess of any out-of-pocket expenses within paragraphs 4(b)(i) and 4(b)(ii) of the Policy.

Having considered the evidence and in particular the screen-shot exhibited as Annex A to the Complaint, and the Respondent’s involvement in a previous UDRP proceeding, and taking into account the absence of a Response, the Panel finds that the disputed domain name was registered and is being used to attract Internet users to the website accessed by the disputed domain name for commercial gain within paragraph 4(b)(iv) of the Policy, and to prevent the Complainant from reflecting the mark in a corresponding domain name within paragraph 4(b)(ii) of the Policy. However, there is no evidence on record showing the Respondent registered the disputed domain name in order to sell it to the Complainant for valuable consideration in excess of any out-of-pocket costs directly related to the disputed domain name.

Accordingly the Respondent registered and is using the disputed domain name in bad faith within paragraph 4(a)(iii) of 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 <calvjinklein.com> be transferred to the Complainant Calvin Klein, Inc.

Clive Duncan Thorne
Sole Panelist
Date: March 15, 2021

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