WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Calvin Klein Trademark Trust, Calvin Klein, INC. v. jiakun Liu
Case No. D2021-3717
1. The Parties
The Complainants are Calvin Klein Trademark Trust, Calvin Klein, INC. (collectively, the “Complainant”), United States of America (“United States”), represented by Kestenberg Siegal Lipkus LLP, Canada.
The Respondent is jiakun Liu, China.
2. The Domain Name and Registrar
The disputed domain name <calvinsklein.com> is registered with CyanDomains, Inc. (the “Registrar”).
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2021. On November 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 16, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On November 16, 2021, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding and submitted a Chinese version of the amended complaint on November 16, 2021. The Respondent did not comment on the language of the proceeding.
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 the Respondent in English and Chinese of the Complaint, and the proceeding commenced on November 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 12, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 13, 2021.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on December 23, 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 is a business trust organized under the laws of Delaware in the United States and the registered owner of the trade mark CALVIN KLEIN (the “Trade Mark”). The Complainant Calvin Klein, Inc. is a company incorporated in Delaware in the United States and the beneficial owner of the Trade Mark. The Complainant has since 1968 registered and used the Trade Mark in the United States and worldwide.
The Complainant Calvin Klein Trademark Trust is the owner of numerous registrations in jurisdictions worldwide for the Trade Mark, including United States Registration No. 1,086,041, with a registration date of February 21, 1978.
The Complainant also owns a number of domain name registrations which wholly incorporate the Trade Mark, including <calvinklein.com>, <calvinkleinbags.com>, <calvinkleinunderwear.com>, and <calvinkleinfashion.com>.
The Complainant sent a cease-and-desist letter to the Respondent on November 1, 2021, but the Respondent did not respond.
The Respondent is an individual resident in China.
C. The Disputed Domain Name
The disputed domain name was registered on October 3, 2021.
D. Use of the Disputed Domain Name
The disputed domain name was previously resolved to a Chinese language website promoting the business and products of a glass production company (the “Website”). As at the date of this Decision, the disputed domain name no longer resolves to any active website.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to the Trade Mark; the Respondent has no rights or legitimate interests in respect of the disputed domain name; and the disputed domain name has been registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the Parties, or unless specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the Parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the Parties and undue delay to the proceeding.
The Complainant has requested that the language of the proceeding be English, for the following reasons:
(i) the disputed domain name includes Latin characters and does not contain Chinese script;
(ii) the Respondent has not objected to the use of English as the language of the proceeding; and
(iii) it would be fair that the language of proceeding be in English and not prejudicial to either of the Parties.
The Respondent did not file a response and did not file any submissions with respect to the language of the proceeding.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time, and costs.
Although there is insufficient evidence before the Panel to support a conclusion that the Respondent is conversant in English, the Panel notes that the Respondent has not taken any part in this proceeding, the Complainant submitted a Chinese version of the amended complaint, and the relevant case related communications were sent in both English and Chinese. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.
6.2. Substantive Elements of the Policy
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
The disputed domain name consists of a common, obvious, or intentional misspelling of the Trade Mark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 1.9).
The Panel therefore finds that the disputed domain name is confusingly similar to the Trade Mark and that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that he has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name was previously used for commercial gain in respect of the Website; and it is presently not being used for an active website.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name; and there has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to rebut the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Respondent lacks rights or legitimate interests in the disputed domain name and that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Given the notoriety of the Complainant and of its Trade Mark in the clothing and fashion field; the distinctiveness of the Trade Mark; the fact the Trade Mark has no meaning in the Chinese language; the fact the disputed domain name is almost identical to the Trade Mark; the Respondent’s prior use of the disputed domain name, for commercial gain, in respect of the Website; the Respondent’s act of taking down the Website at some time following the filing of the Complaint; the Respondent’s lack of response to the cease-and-desist letter; and the lack of any substantiated credible explanation from the Respondent, the Panel finds, in all the circumstances, that the requisite element of bad faith has been made out. The Panel considers it is inconceivable the Respondent was not aware of the Complainant’s Trade Mark at the time he registered the disputed domain name. Furthermore, the Respondent’s present non-use or passive holding of the disputed domain name would not prevent a finding of bad faith under the Policy.
For all the foregoing reasons, the Panel concludes that the disputed domain name has been 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 <calvinsklein.com> be transferred to the Complainant.
Sebastian M.W. Hughes
Dated: January 6, 2022