WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Calvin Klein Inc. and Calvin Klein Trademark Trust v. Park Jang Hyuk
Case No. D2021-3759
1. The Parties
The Complainants are Calvin Klein Inc., United States of America (“United States”), and Calvin Klein Trademark Trust, United States, represented by Kestenberg Siegal Lipkus LLP, Canada.
The Respondent is Park Jang Hyuk, Republic of Korea.1
2. The Domain Names and Registrar
The disputed domain names <metacalvinklein.com> and <metaversecalvinklein.com> are registered with Gabia, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2021. On November 10, 2021, the Center transmitted to the Registrar a request for registrar verification in connection with the disputed domain names. On November 11, 2021, the Registrar transmitted to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On November 17, 2021, the Complainants filed their first amended Complaint, with corrections of certain text.
On December 7, 2021, the Center notified the Parties, in both English and Korean, that the Complaint was submitted in English, and that according to the Registrar, the language of the registration agreement for the disputed domain names is Korean. In the same notification, the Center requested the Complainants to provide, by December 10, 2021:
“1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or
2) … the Complaint translated into Korean; or …
3) … a request for English to be the language of the administrative proceedings.”
To the Respondent, the Center stated that “if the Respondent is intending to participate in these proceedings, and/or has any comments on the Complainant’s submission replying to this notification, the Respondent is requested to submit these to the Center by December 12, 2021.” The Center also advised the Respondent:
“Specifically in the case of the Complainant submitting (or indicating that it will submit) a request for the language of proceedings to be English, and the Respondent objects to such request, the Respondent is invited to indicate that objection for the record, and to submit any arguments/supporting materials … as to why the proceedings should not be conducted in English.
Please note that if we do not hear from you by [December 12, 2021], we will proceed on the basis that you have no objection to the Complainant’s request that English be the language of proceedings.”
On December 7, 2021, the Complainants responded to the Center, requesting that English be the language of the proceeding. In the same transmission, the Complainants filed their second amended Complaint, along with a Korean translation of this complaint. The Respondent did not comment on the language of the proceeding.
The Center verified that the Complaint together with the amended Complaints2 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 proceeding commenced on December 15, 2021. In accordance with the Rules, paragraph 5, the due date for the Response was January 4, 2022. The Respondent did not submit any response. Accordingly, on January 13, 2022, the Center notified the Respondent’s default.
The Center appointed Professor Ilhyung Lee as the sole panelist in this matter on January 31, 2022. 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 “engaged in the production, sale and licensing of men’s and women’s apparel, fragrances, accessories, and footwear, among other things.” The Complainants have obtained registrations of various marks containing CALVIN KLEIN in several countries, including the United States (among others, registration no. 1,086,041, registered on February 21, 1978, and registration no. 1,633,261, registered on January 29, 1991). The Complainants also own registrations of multiple domain names incorporating “calvinklein”, including, among others, <calvinklein.com> (registered on June 10, 1997) and <calvinkleinfashion.com> (registered on January 24, 2005).
The Respondent registered the disputed domain names <metacalvinklein.com> and <metaversecalvinklein.com> on October 31, 2021.
5. Parties’ Contentions
The Complainants contend principally that: (i) the disputed domain names are identical or confusingly similar to a mark in which the Complainants have rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. In addition, the Complaint states, inter alia:
“Complainant has used its CALVIN KLEIN trademark since as early as 1968.”
“Complainant’s use of the CALVIN KLEIN trademarks has resulted in millions of customers worldwide and billions of dollars in sales.”
“The CALVIN KLEIN marks are well known and famous and have been for many years.”
“Respondent is diverting Complainant’s customers or potential customers seeking information about the Complainant to inactive pages.”
The Respondent did not reply to the Complainants’ contentions. Under paragraphs 5(f) and 14(a) of the Rules, the Panel may decide the dispute based on the Complaint. Paragraph 14(b) allows the Panel to draw appropriate inferences from the Respondent’s default.
6. Discussion and Findings
Initially, the Panel must address the language of the proceeding.
Paragraph 11(a) of the Rules provides that the language of the registration agreement is the language of the administrative proceeding, unless otherwise agreed by the parties or specified in the registration agreement. This provision also states that the determination of the proper language is “subject to the authority of the Panel …, having regard to the circumstances of the administrative proceeding.” Here, the language of the registration agreement is Korean; nevertheless, the Complainants request that English be the language of the proceeding.
After receiving the original Complaint in English, the Center notified the Parties, in both English and Korean, of the Center’s procedural rules regarding the language of the proceeding. The Complainants also submitted a Korean translation of the second amended Complaint. The Center informed the Respondent that it may object timely to a proceeding conducted in English. The Respondent did not respond to the Center’s notification, and has defaulted. Under these circumstances, the Panel decides that English is the language of this proceeding.
Turning to the merits, in order to prevail, the Complainants must satisfy each of the three elements of paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain names <metacalvinklein.com> and <metaversecalvinklein.com> are identical or confusingly similar to a mark in which the Complainants have rights (“CALVIN KLEIN”), under paragraph 4(a)(i) of the Policy. The addition of the prefix “meta” or “metaverse” does not prevent a finding of confusing similarity. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.
The first element is demonstrated.
B. Rights or Legitimate Interests
The Complainants state that they have not authorized the Respondent to use the CALVIN KLEIN trademark in any way, and have met their initial burden of making a prima facie showing that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The burden shifts to the Respondent to demonstrate any such rights or legitimate interests. Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances that may demonstrate the Respondent’s rights or legitimate interests in the disputed domain names.
The Respondent has declined to submit any response. The Panel is unable to ascertain any evidence that would demonstrate the Respondent’s rights or legitimate interests in the disputed domain names, as described in the Policy, or otherwise.
The second element is also demonstrated.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainants must show that each disputed domain name “has been registered and is being used in bad faith.” Paragraph 4(b) provides a non-exhaustive list of circumstances that can satisfy this element.
The disputed domain names <metacalvinklein.com> and <metaversecalvinklein.com> both resolve to inactive sites. The Respondent’s passive holding of the disputed domain names does not preclude a finding of bad faith. WIPO Overview 3.0, section 3.3. The relevant factors here are: “(i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, … and (iv) the implausibility of any good faith use to which the domain name may be put.” Id. The Complainants’ mark is widely known internationally, and it strains credulity to think that the Respondent was not aware of it before registering a domain name that contains CALVIN KLEIN. The Respondent defaulted, declining to submit a response even after receiving the second amended Complaint translated into Korean. In addition, that the Respondent registered the disputed domain names beginning with “meta” just days after Facebook, Inc. introduced its new company name, “Meta”, adds to suspicions about the Respondent’s intentions. The Panel determines that the requisite bad faith element is present here.
The third element is also demonstrated.
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 names <metacalvinklein.com> and <metaversecalvinklein.com> be transferred to the Complainants.
Date: February 14, 2022
1 The Panel notes that in the Registrar’s transmission to the Center on November 11, 2021, the Registrar stated that “the Respondent ‘Park Jyang Hyuk’ is [the] current registrant of the domain names.” Elsewhere in the same transmission, however, the “Registrant Name” is listed as “park jang hyuk”.
2 The Complaint and amended Complaints will henceforth be referred to as “the Complaint,” unless the context dictates otherwise.