WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Calvin Klein Trademark Trust and Calvin Klein, Inc. v. Super Privacy Service LTD c/o Dynadot
Case No. DCO2019-0041
1. The Parties
Complainants are Calvin Klein Trademark Trust, United States of America (“United States”) and Calvin Klein, Inc., United States, represented by Kestenberg Siegal Lipkus LLP, Canada.
Respondent is Super Privacy Service LTD c/o Dynadot, United States.
2. The Domain Name and Registrar
The disputed domain name <calvin-klein.com.co> (the “Domain Name”) is registered with Dynadot, 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 Domain Name. On October 11, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 23, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 23, 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 Respondent of the Complaint, and the proceedings commenced on October 30, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 19, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 20, 2019.
The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on December 5, 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
Complainant Calvin Klein Trademark Trust is a business trust organized under the laws of Delaware and the registered owner of the CALVIN KLEIN trademarks that are the subject matter of this proceeding. Complainant Calvin Klein, Inc. is the beneficial owner of the trademarks owned by Calvin Klein Trademark Trust. Together, Calvin Klein Trademark Trust and Calvin Klein, Inc. will be collectively referred to hereinafter as “Complainant”.
Complainant is engaged in the production, sale and licensing of men’s and women’s apparel, fragrances, accessories and footwear in the United States and worldwide under the CALVIN KLEIN trademark (the “Mark”). It has used the Mark since 1968. Complainant’s CALVIN KLEIN products are sold through Complainant’s retail stores, outlet stores, websites and authorized dealers.
Complainant is the proprietor of numerous trademark registrations, including the following:
- United States registration No. 1633261 for CALVIN KLEIN (stylized mark) for goods in class 25 registered on January 29, 1991, claiming a date of first use in 1968;
- United States registration No. 1086041 for CALVIN KLEIN (word mark) for goods in class 25 registered on February 21, 1987, claiming a date of first use in 1968.
Complainant operates websites using domain name registrations that wholly incorporate the Mark, including <calvinklein.com>, <calvinkleinbags.com>, <calvinkleinunderwear.com>, and <calvinkleinfashion.com>.
The Domain Name was registered by Respondent using a privacy service on February 11, 2019. It resolves to an Indonesian-language website offering online gambling services.
On September 25, 2019, Complainant delivered a cease-and-desist letter to the Registrar. It is not known whether the letter was delivered to Respondent and no response was received by Complainant.
5. Parties’ Contentions
Complainant’s submissions may be summarized as follows:
Under the first element, Complainant alleges that it has rights in the Mark based on longstanding use and registrations including in the United States. The Domain Name contains the Mark in its entirety, simply adding a hyphen to separate the two words “Calvin” and “Klein”. Hyphenation is one of the main variations of typosquatting and does not negate the confusing similarity between the Domain Name and the Mark. The extension “.com.co” is not taken into consideration when examining the identity or confusing similarity between the previous Marks and Domain Name. Therefore, the Domain Name is confusingly similar to Complainant’s Mark.
Under the second element, Complainant alleges that its use and registration of the Mark predates any use Respondent may have made of <calvin-klein.com.co> as a trade name, domain name, mark, or common name. The Domain Name was registered in 2019, more than 30 years after Complainant began using the Mark. Respondent was therefore aware of Complainant’s domain names and websites prior to its registration of the Domain Name. Respondent has no proprietary rights, or legitimate interests in the Domain Name. Complainant’s Mark is well known and famous, and Respondent’s registration of a domain name wholly incorporating it is not supported by legitimate interests. Respondent is not commonly known by that name. Therefore, Respondent has no rights nor legitimate interests in the Domain Name.
Under the third element, Complainant alleges that the Domain Name has been registered and used by Respondent in bad faith. Respondent is diverting Complainant’s customers or potential customers seeking information about Complainant to the website to which the Domain Name resolves, which is a poker gambling website in the Indonesian language containing links to numerous other gambling sites in Asia and, further, containing lewd images. Respondent failed to respond to Complainant’s cease and desist letter. There can be no plausible actual or contemplated active use of the Domain Name that would not be illegitimate and constitute an infringement of Complainant’s rights. Complainant alleges that the Domain Name was registered solely for the purpose of preventing Complainant from registering the Domain Name and for the purpose of selling the Domain Name for valuable consideration in excess of the costs of registering it.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Given the facts in the case file and Respondent’s failure to file a response, the Panel accepts as true the contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
Complainant has provided evidence establishing that it has trademark rights in the Mark through use and registrations in jurisdictions including the United States, thereby satisfying the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1.
In comparing Complainant’s Mark with the Domain Name, the Panel finds that the Domain Name is confusingly similar with the Mark, since the Domain Name contains the Mark in its entirety. The addition of the hyphen does not prevent a finding of confusing similarity as Complainant’s Mark is clearly recognizable within the Domain Name.
It is the well-established view of UDRP panels that the addition of the generic Top-Level Domain (“gTLD”) to the Domain Name does not prevent the Domain Name from being confusingly similar to Complainant’s trademark (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).
Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the Domain Name. The Panel finds that there is no evidence that Respondent is commonly known by the Domain Name or is using the Mark with permission of Complainant. Rather, the case materials contain Complainant’s express assertion that such permission does not exist. Complainant’s rights in Mark predate the registration of the Domain Name by more than 30 years.
The circumstances and evidence indicate that Respondent has no rights or legitimate interests in the Domain Name. The nature of the Domain Name, adding a hyphen to Complainant’s Mark, cannot constitute fair use because it effectively impersonates or suggests sponsorship or endorsement by Complainant, the trademark owner (see WIPO Overview 3.0, section 2.5.1). This Panel agrees with the finding in Calvin Klein Trademark Trust and Calvin Klein Inc. v. Wang Yanchao, WIPO Case No. D2014-1413, that “the Complainant and its CALVIN KLEIN marks enjoy a widespread reputation and high degree of recognition as a result of its fame and notoriety in connection with men’s and women’s apparel, fragrances, accessories, and footwear products and is a registered trademark in many countries all over the world. Consequently, in the absence of contrary evidence from the Respondent, the CALVIN KLEIN marks [are] not one[s] that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant”.
Respondent, in failing to file a response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. There is no information available that would support a finding of a fair use of the Domain Name.
The Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that the evidence in the record demonstrates that Respondent chose the Domain Name deliberately for the purpose of impersonating or attempting to create an association with Complainant. Complainant’s rights in the Mark predate the registration of the Domain Name by decades. Complainant’s Mark enjoys a high degree of recognition, and Complainant’s use in the Mark has been of significant duration and extent. The Domain Name contains Complainant’s Mark in its entirety with the addition of hyphen, thereby attempting to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s Mark. The Panel finds that such registration creates a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4.
Having established that the Domain Name was registered in bad faith, the Panel next turns to the issue of whether Respondent has engaged in bad faith use of the Domain Name. Considering the totality of the circumstances, the Panel finds that the Domain Name has also been used in bad faith. In particular, the Panel finds that Complainant’s Mark is highly distinctive and the Domain Name is almost identical to it, Respondent has failed to file any response or provide any evidence of actual or contemplated good-faith use, Respondent concealed its identity through use of a privacy service, and the content of Respondent’s Indonesian-language gambling website clearly demonstrates an attempt to attract Internet traffic through the use of Complainant’s Mark. While there is no evidence in the record that Respondent registered the Domain Name primarily to sell it for valuable consideration in excess of Respondent’s costs, the totality of circumstances is sufficiently clear to support a finding of bad faith.
In the view of the Panel, such circumstances, taken together, clearly indicate that Respondent registered and used the Domain Name in bad faith. The Panel finds that Complainant has established the third element under paragraph 4(a) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <calvin-klein.com.co> be transferred to Complainant.
Date: December 19, 2019