WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Calvin Klein Trademark Trust and Calvin Klein, Inc. v. Doru Ionescu
Case No. DRO2017-0004
1. The Parties
Complainants are Calvin Klein Trademark Trust of New York, New York, United States of America, and Calvin Klein, Inc. of New York, New York, United States, represented by ZMP Intellectual Property SRL, Romania.
Respondent is Doru Ionescu of New York, New York, United States.
2. The Domain Name and Registrar
The disputed domain name is <calvinklein.ro> and is registered with RoTLD – Romanian Top Level Domain (“Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on April 3, 2017. On April 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 4, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant, providing Respondent’s contact details, indicating that the language of the registration agreement is English, and providing other details of the registration.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 19, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 9, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 10, 2017.
The Center appointed Debra J. Stanek as the sole panelist in this matter on May 15, 2017. 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
Complainants use and license the mark CALVIN KLEIN, alone and in combination with other terms and elements, in connection with men’s and women’s apparel, fragrances, accessories, and footwear, among other things, throughout the world. Complainants own a number of trademark registrations for the mark CALVIN KLEIN, including Romanian trademark registration (Number 2851) registered on May 25, 1989 and European Union trademark registration (Number 79707) registered on October 27, 1998. In addition, Complainants own and have used various “Calvin Klein” domain names, such as <calvinklein.com> and <calvinklein.eu>, since at least 1997 and 2006, respectively.
On May 7, 2007, Respondent registered the disputed domain name <calvinklein.ro>; it does not appear to be in use.
5. Parties’ Contentions
1. Identical or Confusingly Similar
Complainants have owned and used the mark CALVIN KLEIN and variants for many years in connection with apparel, fragrances, accessories, and footwear, as well as in domain names used to offer those goods. As a result of its advertising, promotion and sales, the CALVIN KLEIN marks are well-known in Romania, the European Union, the United States, and throughout the rest of the world.
The disputed domain name incorporates in its entirety the CALVIN KLEIN mark.
2. Rights or Legitimate Interests
Complainants’ first European Union registration for the CALVIN KLEIN mark predates Respondent’s 2007 registration of the disputed domain name. Respondent should be considered to have known of Complainants’ trademark registrations because they are publicly available online.
Complainants began operating websites at “www.calvinklein.com” and “www.calvinklein.eu” prior to Respondent’s registration of the disputed domain name. Respondent was aware of those websites because they were easily accessible at the time Respondent registered the disputed domain name.
Complainants have no relationship to Respondent and have not agreed to or approved of Respondent’s use of the CALVIN KLEIN mark in a domain name.
Given Complainants’ prior ownership and use of the CALVIN KLEIN marks, Respondent could not use the disputed domain name in a legitimate manner without infringing Complainants’ rights.
Respondent has not been known by the disputed domain name; WhoIs records identify Respondent as an individual named “Doru Ionescu”.
3. Registered and Used in Bad Faith
Respondent is diverting Complainants’ customers and potential customers to the disputed domain name, which is inactive. Respondent registered the disputed domain name primarily to disrupt Complainants’ business.
Respondent must have been aware of Complainants’ CALVIN KLEIN marks when registering the disputed domain name and registered it with the CALVIN KLEIN marks in mind.
Respondent’s registration has prevented Complainants from reflecting the CALVIN KLEIN mark in a domain name.
Under the Policy and Respondent’s agreement with the Registrar, Respondent represented that, to the best of Respondent’s knowledge, the registration would not infringe the rights of others.
Respondent has not used the disputed domain name since it was first registered more than eight years ago; this passive holding has blocked Complainants from registering the disputed domain name.
Respondent did not reply to Complainants’ contentions.
6. Discussion and Findings
6.1. Procedural Matters
The Complaint identifies two Complainants. While neither the Policy nor the Rules expressly provide for multiple Complainants, the Panel shares the consensus view that consolidating various aspects of a dispute can be appropriate. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), paragraph 4.11. In the Panel’s view, as a general rule, in order for a single complaint to be brought on behalf of multiple complainants, it should be accompanied by a request for consolidation that establishes that the relevant criteria have been met. See WIPO Overview 3.0, paragraph 4.11. Those criteria include, among others: the complainants have a common grievance against the respondent; the respondent’s conduct affects the complainants’ individual rights in a similar fashion; and equity or procedural efficiency warrants consolidation. WIPO Overview 3.0, paragraph 4.11.1.
No such express request was made here. The Complaint indicates that Calvin Klein, Inc. is a beneficial owner of the CALVIN KLEIN trademarks while the registrations are owned by Calvin Klein Trademark Trust. The precise relationship of the parties is not detailed. Nonetheless, these facts suggest that each Complainant has a common grievance against Respondent. Accordingly, despite the lack of an express request for consolidation, the Panel finds that criteria for consolidation have been met and consolidates the complaint of each Complainant.
6.2. Substantive Matters
To prevail, a complainant must prove, as to a disputed domain name, that:
(i) it is identical or confusingly similar to a mark in which complainant has rights.
(ii) the respondent has no rights or legitimate interests in respect to it.
(iii) it has been registered and is being used in bad faith.
Policy, paragraph 4(a).
The Policy provides examples of circumstances that may evidence rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as those that may evidence bad faith registration and use, see Policy, paragraph 4(b).
A. Identical or Confusingly Similar
Complainants have established rights in the marks CALVIN KLEIN by virtue of the evidence of Romanian and European Union trademark registrations for the mark.
The disputed domain name is, for these purposes, identical to the CALVIN KLEIN mark; the space between the elements “calvin” and “klein” is trivial and does nothing to differentiate the disputed domain name from the CALVIN KLEIN mark in appearance, pronunciation, or meaning.
The Panel finds that the disputed domain name is identical to a mark in which Complainants have rights.
B. Rights or Legitimate Interests
The Panel shares the consensus view that a complainant may establish that a respondent has no rights or legitimate interests in respect of a domain name by making a prima facie showing. See WIPO Overview 3.0, paragraph 2.1 (once a complainant makes a prima facie case, burden of showing rights or legitimate interests in the domain name shifts to the respondent). Paragraph 4(c) of the Policy sets out examples of how rights and legitimate interests may be established:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel finds that Complainants have made a prima facie showing under the Policy, which Respondent has not rebutted. There is no evidence of any use (or preparations to use) the disputed domain name in connection with a bona fide offering. Nothing in the record suggests that Respondent is known by the disputed domain name; Respondent appears to be an individual. There is no indication that use of the disputed domain name is noncommercial or is, or could be − given its identity to Complainants’ mark − a fair use.
The Panel concludes that Complainants have established that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Complainants must establish that the disputed domain name was registered and is being used in bad faith. The Panel finds that Complainants have established bad faith under the Policy, taking into account the adverse inferences arising from Respondent’s failure to respond to the Complaint and that Complainants’ rights in its well-known CALVIN KLEIN marks long predate the registration of the disputed domain name1 .
The Panel finds that it is most probable that:
Respondent knew of the CALVIN KLEIN mark at the time it registered the disputed domain name and registered it with the mark in mind.
Respondent registered the domain name primarily to disrupt Complainants’ business and to prevent Complainants from reflecting the mark in a corresponding domain name.2
Despite the fact that Respondent did not appear to be using the disputed domain name, under these circumstances, including the distinction and worldwide fame and reputation of the CALVIN KLEIN marks, Respondent’s failure to respond to the Complaint, and the implausibility of any good faith use of the disputed domain name, the Panel finds that Complainants have established that Respondent registered and is using the disputed domain name 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 <calvinklein.ro> be transferred to Complainant Calvin Klein Trademark Trust.3
Debra J. Stanek
Date: May 26, 2017
1 The Panel did not consider Complainants’ contentions regarding communications with Respondent and a representative; the exhibits appeared to be in Romanian. The Panel concluded that, in light of the other factors, translation of those communications into English was not necessary.
2 The Panel does not find that Respondent engaged in a pattern of such registrations, however.
3 The Complaint requested only that the domain name be transferred to “Complainant”, defined as both Complainants, rather than specifying one of the two entities.