WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Calvin Klein Trademark Trust, Calvin Klein, Inc. v. Moniker Privacy Services
Case No. D2015-2305
1. The Parties
The Complainants are Calvin Klein Trademark Trust and Calvin Klein, Inc. of New York, New York, United States of America, represented by Kestenberg Siegal Lipkus LLP, Canada.
The Respondent is Moniker Privacy Services of Fort Lauderdale, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <calvinklien.com> (the “Domain Name”) is registered with ENom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2015. On December 18, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing its contact details. The Complainants filed an amendment to the Complaint on December 22, 2015, as well as an additional amendment to the Complaint on December 23, 2015.
The Center verified that the Complaint, together with its amendments, 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 paragraphs 2 and 4 of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 29, 2015. In accordance with paragraph 5 of the Rules, the due date for the Respondent’s Response was January 18, 2016. The Respondent did not submit any Response. Accordingly, the Center notified the parties of the Respondent’s default on January 20, 2016.
The Center appointed D. Brian King as the sole panelist in this matter on January 28, 2016. The Panel finds that it was properly constituted. The sole panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
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 (Complaint, p. 6). The Panel has no information regarding the business activities of the Respondent.
The Complainants have used the trademark “Calvin Klein” since 1968 (the “Mark”). They have been the registered owner of the Mark in the United States since 1978 (Complaint, Annex C). The Complainants have also registered the Mark in other countries around the world. Conversely, the Domain Name was registered on November 7, 2002.
The Complainants have spent millions of dollars in advertising and promoting products under their Mark. The Complainants are also the registrants of numerous domain names embodying the Mark, including <calvinklein.com>, <calvinkleinbags.com>, <calvinkleinunderwear.com> and <calvinkleinfashion.com>. As a result of the Complainants’ efforts, the public associates the “Calvin Klein” Mark with the Complainants’ products (Complaint, pp. 6–7).
5. Parties’ Contentions
A. The Complainants
The grounds set out in the Complaint can be summarized as follows.
The Complainants claim that the Domain Name is confusingly similar to their Mark. They submit that the Domain Name is an example of “typosquatting,” i.e., capitalizing on the near-identity between the Domain Name and the Complainants’ Mark. This is achieved, contend the Complainants, by changing the order of the letters “i” and “e” in “Calvin Klein”. The Complainants say that the confusion is compounded by the fact that Internet users visiting the Domain Name from some IP addresses are redirected to a website containing links to listings for clothing and other related fashion accessories, which are goods of the same nature as those sold by the Complainants under their Mark.
The Complainants claim that the Respondent has no rights or legitimate interests in respect of the Domain Name. They explain that the Respondent’s Domain Name was registered in 2002, more than thirty years after the Complainants first used the Mark. The Complainants further submit that there is no evidence of the Respondent using the Domain Name in connection with a bona fide offering of goods or services. Instead, contend the Complainants, the Domain Name is used as a forum for “pay-per-click” websites, malicious scams and links to clothing websites that users might confuse as being affiliated with the Complainants. The Complainants also argue that there is no evidence that the Respondent is commonly known by a name corresponding to the Domain Name. In the circumstances, the Complainants contend, the Respondent does not own and cannot lawfully obtain trademark or intellectual property rights to the Mark or the Domain Name. Finally, the Complainants assert that they have not licensed their Mark to the Respondent.
The Complainants claim that the Domain Name was registered and used in bad faith. They contend that it was registered and is being used to attract Internet users by creating a likelihood of confusion with the Complainants’ Mark. The Complainants also say that the use of the Domain Name as a forum for “pay-per-click” sites and scams further evidences the Respondent’s bad faith. The Complainants additionally assert that the Respondent’s registration of the Domain Name was done solely to prevent the Complainants from doing so.
The Complainants request that the Domain Name be transferred to the second Complainant, Calvin Klein, Inc.
B. The Respondent
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy stipulates that the Complainants must prove the following three elements in order to be successful in their action:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances that could demonstrate registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) above. Paragraph 4(b)(iv) provides that the following circumstance will constitute evidence of the registration and use of a domain name in bad faith:
By using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [its] web site or location or of a product or service on [its] web site or location.
Conversely, paragraph 4(c) of the Policy sets out illustrative circumstances that could demonstrate a respondent’s rights or legitimate interests in a domain name for purposes of paragraph 4(a)(ii) above.
A. Identical or Confusingly Similar
The Complainants have provided convincing evidence demonstrating that they have rights to the Mark using the words “Calvin Klein” (see Annex C to the Complaint).
The Domain Name (<calvinklien.com>) uses words that are identical to the Complainants’ Mark (“Calvin Klein”), save for two letters that are transposed: “i” and “e”. This is a classic instance of “typosquatting”—the practice of exploiting a trademark by creating a domain name with insignificant typographical differences. Previous panels constituted under the Policy have held that a domain name that is identical to another’s mark but for a minor misspelling will typically satisfy the “confusingly similar” requirement of the Policy (see, e.g.,Six Continents Hotels, Inc. v. null John Zuccarini d/b/a Country Walk, WIPO Case No. D2003-0161).
UDRP panels have held that a respondent has engaged in “typosquatting” where the only difference between the domain name in dispute and the complainant’s trademark is two transposed letters (see, e.g., PartyGaming Plc v. WHOis Privacy Protection Services, Inc./Henao Berenice, WIPO Case No. D2006-0508). Furthermore, the likelihood that the transposition of the letters could be easily reproduced through typing errors—here, by accidentally hitting the “i” key before the “e” key—is indicative of “typosquatting” (see Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043).
Consistent with these prior holdings, the Panel concludes that the Domain Name is confusingly similar to the Complainants’ Mark. Accordingly, the first element of the test under paragraph 4(a) of the Policy is met.
B. Rights or Legitimate Interests
Many UDRP panels have found that complainants only need to establish a prima facie case in relation to the second element of the test under paragraph 4 of the Policy (see, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393; Mahindra & Mahindra Limited v. RV ABC Consulting Inc., Roy Smith, WIPO Case No. D2010-1576). Once a prima facie showing is made, the burden of proofs shifts to the respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name. The Panel agrees that the Complainants need only make out a prima facie case with respect to the second element.
The Respondent here has chosen not to file a Response, and therefore the Complainants’ claims and contentions remain unchallenged. In the absence of any contrary evidence, the Panel accepts the Complainants’ representations that they have given no authorization to the Respondent to use their Mark and do not have any commercial or other relationship with the Respondent.
With respect to paragraph 4(c) of the Policy, the Panel finds no evidence that the Respondent is commonly known by a name corresponding to the Domain Name, or that the Respondent is using or preparing to use the Domain Name in connection with a bona fide offering of goods or services. As the Complainants showed in their Complaint, the Domain Name resolves to webpages that redirect Internet users to (i) links to other fashion industry-oriented websites, (ii) what appears to be an Internet scam in which an error message appears urging the visitor to call a toll-free number, and (iii) so-called “pay-per-click” sites—i.e., links that would generate revenue for the Respondent based on user traffic directed to those other sites. These circumstances yield a strong inference that the Respondent’s purpose in registering the Domain Name was to derive an advantage from user confusion by diverting those users to, inter alia, other commercial sites. Previous UDRP panels have found that such usage does not create rights or legitimate interests on the part of the respondent (see, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393).
On these grounds, the Panel finds that the Complainants have, at minimum, made a prima facie showing that the Respondent does not have rights or legitimate interests in the Domain Name, and observes that the Respondent has failed to make any submissions that would demonstrate such rights or legitimate interests. The Panel therefore finds that the Complainants have satisfied the requirements of the second element of the test under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Numerous UDRP panels have found that typosquatting itself constitutes bad faith (see, e.g., bwin.party services (Austria) GmbH v. Interagentur AG, WIPO Case No. D2011-1079; Go Daddy Software, Inc. v. Daniel Hadani, WIPO Case No. D2002-0568; Dell Computer Corporation v. Clinical Evaluations, WIPO Case No. D2002-0423; Briefing.com Inc v. Cost Net Domain Manager, WIPO Case No. D2001-0970). The Domain Name in this case is a clear instance of “typosquatting” for the reasons already identified above. The Panel accordingly concludes that the Domain Name was registered in bad faith.
It has also been used in bad faith. Paragraph 4(b)(iv) of the Policy specifies that bad faith use is shown where a respondent intentionally uses a domain name in an attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark. The Panel finds that to be the case here. The Respondent has registered a domain name that is confusingly similar to the Complainants’ Mark and has used it, amongst other purposes, to divert users to (i) “pay-per-click” sites, and (ii) links for the sale of clothing and other products similar to those sold by the Complainants under their Mark.
Accordingly, the Panel concludes that the Complainants have likewise satisfied the third element of the test under paragraph 4(a) of the Policy.
The Panel notes in closing that it is surprising that the Complainants challenged the Domain Name only in 2015, given its registration in 2002. The Respondent has not appeared in this case to raise any argument in that regard, and therefore it is unnecessary for the Panel to consider whether a Complainant’s delay in proceeding under the Policy could in any circumstances constitute acquiescence or otherwise warrant the denial of relief.
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, <calvinklien.com>, be transferred to Complainant Calvin Klein Inc.
D. Brian King
Date: February 8, 2016