The Complainants are Warnaco Inc. and Calvin Klein Trademark Trust of New York, New York, United States of America, represented by Katten Muchin Rosenman LLP, United States of America.
The Respondent is Bag12 of El Paso, Texas, Armenia.
The disputed domain names <calvinkleinmenunderwear.com> and <calvinkleinunderwear.info> are registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2010. On November 17, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On November 17, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 9, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 10, 2010.
The Center appointed Adam Samuel as the sole panelist in this matter on December 17, 2010. 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.
The second Complainant is the legal owner of a number of trademark registrations for CALVIN KLEIN and CALVIN KLEIN UNDERWEAR. Examples of these are United States trademark nos. 1633261 and 3320669, registered on January 29, 1991 and October 23, 2007 respectively. The first Complainant is the beneficial owner of uses these trademarks on and in connection with underwear which the first Complainant designs, promotes, manufactures and sells. The Respondent registered both disputed domain names on September 16, 2010.
This section sets out the Complainants’ contentions with which the Panel may or may not agree.
The Complainants are world famous designers, manufacturers and retailers of men’s underwear. The first disputed domain name, <calvinkleinmenunderwear.com>, is identical to the Complainants’ trademarks except for the addition of the descriptive or generic term “men”. The second, <calvinkleinunderwear.info>, is identical to the Complainants’ mark.
The Respondent has had no legitimate interest in the Complainants’ trademarks. It has made no demonstrable preparations to use either of the disputed domain names in connection with any bona fide offering of goods or services. It has merely used them in connection with parking services in a deliberate attempt to exploit users seeking the Complainant’s official website and products. The Respondent has no agreements with the Complainants authorizing it to use any of the CALVIN KLEIN family of marks. The Respondent owns no trademark registrations for any mark comprised in whole or in part of the mark CALVIN KLEIN and has not applied for them.
The Respondent has registered and used the disputed domain names in bad faith. The Complainants wrote to the Respondent on September 29, 2010 putting the Respondent on notice of the Complainants’ rights. The Respondent did not answer and continued to use the two disputed domain names in an infringing and illegitimate manner. It is impossible to conceive of any plausible circumstance where the Respondent could have coincidentally registered the disputed domain names without first knowing that it was intentionally infringing the well-known CALVIN KLEIN family of marks. The disputed domain names resolve to parking websites which display links to a variety of commercial websites that expressly refer to the Complainants’ products but link to websites of the Complainants’ competitors and ask viewers of these websites whether they want to buy the disputed domain names.
The Respondent has provided false contact details in breach of its registration agreements by actively listing the Respondent’s address as El Paso, Texas in the country, Armenia.
The Respondent did not reply to the Complainant’s contentions.
Under the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and
(ii) the 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 first disputed domain name consists of the second Complainant’s trademark CALVIN KLEIN UNDERWEAR with the insertion of the word “men” which denotes a common user of the Complainant’s well-known products and the standard suffix “.com”. The second disputed domain name is the second Complainant’s trademark with just the similar suffix “.info”. The addition of generic words particularly to well-known trademarks does not affect the confusing similarity between the disputed domain name and the second Complainant’s trademarks.
The first Complainant appears to be a licensee of the second Complainant’s trademarks and as such has private law rights to use them. Such a licence under the established majority caselaw on the Policy constitutes sufficient entitlement to base a claim to have rights in a relevant trademark. See Telcel, C.A. v. jerm and Jhonattan RamírezWIPO Case No. D2002-0309, Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington, WIPO Case No. D2003-0796, Spherion Corporation v. Peter Carrington, d/b/a Party Night Inc. WIPO Case No. D2003-1027. If those responsible for the Policy had wished Panelists to take the minority position, one would have expected the Policy to have been amended subsequently in this area. One must, therefore, assume that the correct interpretation of “a trade mark or service mark in which the Complainant has rights” covers those marks to which the Complainant only has a license to use.
For all these reasons, the Panel concludes that the disputed domain names are both confusingly similar to a trademark in which the Complainants each have rights.
The Respondent is not called “Calvin Klein” or anything similar and does not appear to trade under that or any related name. The websites associated with the disputed domain names appear never to have been active except as a parking page. There is no evidence that the Complainants have authorized the Respondent to use their trademark. The Respondent has never asserted any rights or legitimate interests in that name or replied to the Complainants correspondence on the subject. For these reasons, on the basis of the available record, notably the absence of a Response, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
The second Complainant’s trademark, CALVIN KLEIN UNDERWEAR, is well known. The trademark was registered three years before the domain names were registered. In this Panel’s view, it is impossible, at least without a Response to the Complaint, to identify a reason why the Respondent registered the disputed domain names other than to attract business or Internet users to its site who were looking for a site connected to the Complainants’ trademark or business. Currently, the disputed domain names are not being actively used except as parking sites.
The only explanation of what has happened is that the Respondent’s motive in registering and using the sites seems to be, as the Complainants say, simply to disrupt the Complainants’ relationship with its customers or potential customers, attempt to attract Internet users for potential gain or persuade the Complainants to buy the disputed domain names from it for an amount in excess of the Respondent’s out-of-pocket expenses. These all constitute evidence of registration and use in bad faith.
In the circumstances, it is unnecessary to deal with the Complainants’ other arguments in this case. The Panel concludes that both disputed domain names were registered and are being used in bad faith.
For all 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, <calvinkleinmenunderwear.com> and <calvinkleinunderwear.info> be transferred to the Complainants.
Dated: December 21, 2010
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