WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Calvin Klein Trademark Trust and Calvin Klein Inc. v. Above.com Domain Privacy / Shu Lin

Case No. D2016-1733

1. The Parties

Complainants are Calvin Klein Trademark Trust and Calvin Klein Inc. of New York, New York, United States of America (“United States”), represented by Kestenberg Siegal Lipkus LLP, Canada. For the purposes of this decision, Complainants are referred to as “Complainant”.

Respondent is Above.com Domain Privacy of Beaumaris, Victoria, Australia / Shu Lin of Dalian, China.

2. The Domain Name and Registrar

The disputed domain name <calvinkein.com> is registered with Above.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2016. On August 25, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 29, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 2, 2016 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 September 5, 2016.

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 September 6, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 26, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default September 27, 2016.

The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on October 14, 2016. 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 has been engaged in the production, sale and licensing of men’s and women’s apparel, fragrances, accessories, and footwear, among other things, all in association with trademark CALVIN KLEIN. Complainant has used and registered several of its trademarks throughout the world (Annex C). In the United States, Complainant has used CALVIN KLEIN trademark since as early as 1968.

According to Annex C, Complainant’s oldest trademark in the United States was registered on February 21, 1978, under registration number 1,086,041. Therefore, Complainant’s trademark registrations predate the registration of the disputed domain name.

Furthermore, Complainant owns various domain name registrations, such as <calvinklein.com>, which was registered in 1997, <calvinkleinbags.com>, <calvinkleinunderwear.com> and <calvinkleinfashion.com> (Annex E). Complainant has used and continues to use these domain names in connection with its various websites that provide information about Complainant’s products and services.

The disputed domain name was registered on May 7, 2008. The disputed domain name resolves to a pay-per-click website, where the disputed domain name is offered for sale.

5. Parties’ Contentions

A. Complainant

Complainant alleges to be the holder of numerous trademark registrations for CALVIN KLEIN throughout the world and that most of them pre-date the disputed domain name’s registration. Complainant also claims that the trademark has been used since 1968, well before Respondent registered the disputed domain name.

Complainant argues that the disputed domain name <calvinkein.com> incorporates Complainant’s trademark CALVIN KLEIN but removes the letter “L” in KLEIN. Complainant says that this is a case of “typosquatting”.

Complainant also claims that Respondent has no rights or legitimate interests in the disputed domain name, since it is not being used in connection with bona fide offering of goods or services or a legitimate noncommercial or fair use considering that it resolves to a pay-per-click website. Complainant highlights that Respondent did not receive any sort of authorization or license to use the CALVIN KLEIN trademark.

Complainant alleges that Respondent has registered and is using the disputed domain name in bad faith since it diverts Internet users to an unauthorized website containing sponsored listings and stating that the disputed domain name may be for sale.

Complainant asserts that there is no other use that Respondent could plausibly make of the disputed domain name that would not infringe on Complainant’s rights.

Finally, Complainant claims that Respondent is a serial cybersquatter and has registered the disputed domain name solely to prevent Complainant from doing so and that the disputed domain name was acquired for the purpose of selling it.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

To succeed, Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed 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 disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The burden of proving these elements is on Complainant.

Respondent had 20 days to submit a response in accordance with paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if Respondent does not respond to the Complaint, the Panel’s decision shall be based upon the Complaint.

A. Identical or Confusingly Similar

Complainant has duly proven the first element under paragraph 4(a) of the Policy is met by showing evidence that it is the owner of several trademark registrations for CALVIN KLEIN in jurisdictions throughout the world and that such trademark is contained in its entirety in the disputed domain name <calvinkein.com> but removes the letter “L” in KLEIN.

The Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark, since its most distinctive feature, “Calvin Kein”, is practically identical to Complainant’s CALVIN KLEIN trademark.

The Panel finds this to be a clear case of “typosquatting” wherein Respondent has misspelled the CALVIN KLEIN trademark. As decided in previous UDRP decisions, the practice of “typosquatting” creates domain names that are confusingly similar to the relevant mark by, for example, removing one letter from the trademark as has occurred in this case. In this sense, the Panel refers to the decision in ESPN, Inc. v. XC2, WIPO Case No. D2005-0444 (<espnnews.com>).

Therefore, the Panel considers the requirements of the first element of paragraph 4(a) of the Policy to be satisfied.

B. Rights or Legitimate Interests

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) as follows: “[A] complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP [...] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest[s], the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”

In this case, Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests, so the burden of production shifts to Respondent. As Respondent has not replied to Complainant’s contentions, that burden has not been discharged, and the Panel has considered Complainant’s prima facie case to be sufficient to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name <calvinkein.com>.

The Panel finds that Respondent’s use of the disputed domain name incorporating a variation of Complainant’s trademark in connection with a parking page displaying sponsored links and offering the disputed domain name for sale does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use.

The Panel finds that Complainant has never granted any authorization or license to Respondent, regarding the use of Complainant’s trademarks, nor is Respondent affiliated in any way with Complainant, or otherwise commonly known by the disputed domain name.

Accordingly, Complainant established a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name. Since Respondent has not replied to Complainant’s contentions and, thus, has not presented any evidence or elements to justify any rights or legitimate interests in connection with the disputed domain name, the Panel has found no indication that any of the circumstances described in paragraph 4(c) of the Policy could apply to the present case.

Therefore, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists a number of circumstances that, without limitation, are deemed evidence of the registration and use of a domain name in bad faith. Those circumstances include: “(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The Panel finds it highly unlikely that Respondent had no knowledge of Complainant’s rights to the trademark CALVIN KLEIN at the time of registration of the disputed domain name, taking into consideration its notoriety worldwide; on the contrary, the evidence shows that Respondent was likely trying to create likelihood of confusion with Complainant and its mark. The disputed domain name was registered on March 7, 2008, that is, several years after Complainant’s registrations of the trademarks and domain names including <calvinklein.com>. Considering that Complainant’s trademark is widely known, the Panel agrees that Respondent must have been aware of Complainant’s trademark at the time of registration of the disputed domain name.

In this connection, the Panel notes that the disputed domain name resolves to a pay-per-click link farm, i.e. a web page in which there are several links for providers of goods and services competing with but not connected to Complainant, and such use of the domain name is further evidence of bad faith. In this sense, the Panel refers to the panel decision in VIVO S.A. and PORTELCOM PARTICIPAÇÕES S.A. v. Domains By Proxy - NA Proxy Account Niche Domain Proxy Manager, WIPO Case No. D2010-0925 (<vivocelulares.com>), as can be verified below:

“Because Respondent has registered the disputed domain name that uses a unique combination of terms associated with Complainant, and has only used the disputed domain name to direct Internet users to a pay-per-click link farm parking page that includes third-party competitors of Complainant, the Panel determines that Respondent registered and has used the disputed domain name in bad faith within the meaning of paragraph 4(b) of the Policy.”

In fact, the disputed domain name is being used in connection with a commercial link service, or “link farm”, as it is designed to lure users and divert them to other commercial sites. This is not a bona fide offering of goods or services and does not confer a right or legitimate interest in the disputed domain name (see also e.g., Minka Lighting, Inc. d/b/a Minka Group v. Lee Wongi, WIPO Case No. D2004-0984; Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795; MBI, Inc. v. Moniker Privacy Services/Nevis Domains LLC, WIPO Case No. D2006-0550).

Thus, the Panel concludes that Respondent acts in bad faith for the following reasons: (i) the widespread reputation of Complainant’s products and services made it highly unlikely that Respondent had no prior knowledge of Complainant’s rights regarding the trademark CALVIN KLEIN at the moment that the disputed domain name was registered, and (ii) Respondent is diverting Complainant’s customers or potential customers seeking information about Complainant to the website to which the disputed domain name resolves. The Panel further notes that the disputed domain name is advertised as being for sale, which is supportive of a finding that Respondent likely registered the disputed domain name for the purpose of selling it to Complainant or a competitor of Complainant.

Lastly, the Panel notes that, in conjunction with all abovementioned, Respondent’s use of a privacy service, preventing others to have access to its real identity, and the fact that Respondent did not present any response to the Complaint, reinforce the conclusion that Respondent acted in bad faith.

The Panel concludes that the disputed domain name was registered and is being used in bad faith, in accordance with paragraph 4(a)(iii) of the Policy.

7. Decision

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 <calvinkein.com> be transferred to Complainant, Calvin Klein, Inc.

Gabriel F. Leonardos
Sole Panelist
Date: October 27, 2016