WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Calvin Klein Trademark Trust, Calvin Klein Inc. v. WhoisGuard, Inc. / Vladimir Pulek

Case No. D2020-3437

1. The Parties

The Complainant is Calvin Klein Trademark Trust, Calvin Klein Inc., United States of America, represented by Kestenberg Siegal Lipkus LLP, Canada.

The Respondent is WhoisGuard, Inc., Panama / Vladimir Pulek, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <calvin-klein.digital> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2020. On December 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 16, 2020, 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 the Complainant on December 28, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on date of receipt December 28, 2020.

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 the Respondent of the Complaint, and the proceedings commenced on December 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 22, 2021.

The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on February 16, 2021. 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

The Complainant trades as CALVIN KLEIN. The Complainant is well known in the United States and throughout the world for its production, sale, and licensing of men’s and women’s underwear, apparel, fragrances, and other products.

The Calvin Klein Mark

The Complainant explains it has been offering products under the trademark CALVIN KLEIN in the United States since as early as 1968. It says it uses the trademark CALVIN KLEIN in connection with the advertising and sale of its various products in the United States and elsewhere. The Complainant states the CALVIN KLEIN trademarks are famous and have been for many years. Over these years, the Complainant states it has expended millions of dollars in advertising and promoting its products under its CALVIN KLEIN trademark in a variety of media throughout the world. It says it engages in extensive promotional efforts, advertising expenditures and sponsorship activities, causing the public to associate the Calvin Klein trademark with the Complainant’s products.

The Complainant states its CALVIN KLEIN branded products are sold exclusively through the Complainant’s own retail stores and web sites including “www.calvinklein.com” and, through Authorized Dealers such as specialty stores Macys, Neiman Marcus, Saks, Fifth Avenue, and Bergdorf Goodman. It says it has also advertised its CALVIN KLEIN marks through direct mail and on the Internet, including on its website <calvinklein.com> which was launched in 1997. The Complainant states that, since its inception 24 years ago, that website has received hundreds of millions of visitors seeking information about the Complainant’s CALVIN KLEIN products.

The Complainant’s evidence is that it owns the following United States Trademark Registrations for its CALVIN KLEIN marks in connection with apparel and other merchandise:

These are collectively referred to as the “Calvin Klein Mark”.

The disputed domain name <calvin-klein.digital> was registered on April 13, 2020.

The disputed domain name appears to have resolved to a website, which redirects users to a temporarily inactive website (“support.thebestforyourskin.com”) which is not associated with the Complainant. The disputed domain name currently seems to resolve to the registrar’s website, with a notice stating “This domain is registered at Namecheap”.

5. Parties’ Contentions

A. Complainant

The Complainant asserts its rights in the Calvin Klein Mark. It states its numerous federal trademark registrations and widespread use, advertising, and promotion of the Calvin Klein Mark since 1968 sufficiently establish its rights in the mark.

The Complainant firstly contends that the disputed domain name is confusingly similar to its Calvin Klein Mark. It states this confusing similarity arises because the disputed domain name <calvin-klein.digital> incorporates the Complainant’s Calvin Klein Mark in its entirety. It states that the addition of a hyphen (“-”) to separate the two words in the Calvin Klein Mark in the disputed domain name does not create a distinct characteristic capable of overcoming a confusingly similarity finding. It claims that by incorporating the Complainant’s whole mark, merely separated by a hyphen, the disputed domain name carries a high risk of implied affiliation. The Complainant states this is a clear case of “typosquatting” wherein the Respondent has deliberately tried to mimic common typos associated with the Calvin Klein Mark to divert Internet traffic who make those typos. It states hyphenation is one of the main variations of typosquatting, and that the practice of typosquatting has been regarded in previous UDRP decisions as creating domain names confusingly similar to the relevant mark.

The Complainant asserts that the generic Top-Level Domain (“gTLD”) extension “.digital” ought not to be taken into consideration when examining the identity or similarity between the Calvin Klein Mark and the disputed domain name. However, it states the use of “.digital” in the disputed domain name further adds to the confusion because the Complainant has a significant online (digital) presence and consumers are able to view the Complainant’s goods and promotional campaigns online. The Complainant states that additionally, it has maintained a significant presence on various digital platforms including but not limited to, Twitter, Facebook, Instagram and YouTube. The Complainant suggests this implies a high risk of confusion, as a consumer may think that the disputed domain name directly refers to the Complainant’s digital services.

Secondly, the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. In this respect, the Complainant states the Respondent has not been licensed, contracted, or otherwise permitted by the Complainant in any way to use the Calvin Klein Mark, or to apply for any domain name incorporating the Calvin Klein Mark. It states it has not acquiesced in any way to such a use or application of the Calvin Klein Mark by the Respondent. The Complainant states that, additionally, there is no evidence that “Calvin Klein” or “Calvin-Klein Digital” is the name of the Respondent’s corporate entity, and nor is there any evidence of fair use. The Complainant asserts that it is not aware of any evidence that the Respondent is using or plans to use the disputed domain name for a bona fide offering of goods or services. It therefore claims that the Respondent’s registration of the disputed domain name is not supported by legitimate interests. The Complainant states its first use and first registration of the Calvin Klein Mark predates any use by the Respondent of <calvin-klein.digital> as a trade name, domain name, mark, or common name.

Finally, the Complainant asserts that the disputed domain name was registered and is being used in bad faith. The Complainant states that the Respondent would have been aware of the Complainant’s international brand and trademark before registering the disputed domain name. Therefore, the Complainant suggests the disputed domain name was registered by the Respondent for the purpose of preventing the Complainant from registering the disputed domain name. The Complainant states the Respondent acquired the disputed domain name for the purpose of selling the domain name for valuable consideration in excess of any out-of-pocket expenses. The Complainant notes the Respondent “Vladimir Pulek, UK”, was previously the subject of a UDRP decision which resulted in a finding of registration and use in bad faith. It states the disputed domain name in that case was registered through the same Registrar (see Novartis AG v. Vladimir Pulek FA2008001907740).

The Complainant states that the disputed domain name redirects users to a temporarily inactive website (“support.thebestforyourskin.com”) which is not associated with the Complainant. The Complainant states the Respondent is responsible for how the disputed domain name is used, even if the content on the website (that the disputed domain name resolves to) is generated by a website parking company. The Complainant submits that the Respondent’s use of the Calvin Klein Mark in the disputed domain name is to attract Internet users to the website to which the disputed domain name resolves by creating a likelihood of confusion with the Calvin Klein Mark and therefore as to the source, sponsorship, affiliation or endorsement of the disputed domain name. In doing so, the Complainant states the Respondent is driving Internet traffic to its own website, by taking advantage of the goodwill associated with the Complainant. Additionally the Complainant states that it delivered a cease and desist letter regarding the disputed domain name to the Registrar on April 14, 2020, which was delivered via email to “[email protected]” and that the Respondent continues to use the disputed domain name at least eight months later.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

Each of these elements is addressed in turn.

A. Identical or Confusingly Similar

The Complainant has provided evidence of its registrations in relation to the Calvin Klein Mark in the United States. The Panel finds that the Complainant has clearly and sufficiently demonstrated its rights in the Calvin Klein Mark with a history of use going back to 1978. The Panel is satisfied that the Complainant is well-known by its Calvin Klein Mark for its production, sale, and licensing of men’s and women’s underwear, apparel, fragrances, and other products.

In comparing the Calvin Klein Mark to the disputed domain name, it is well established that the gTLD, in this case “.digital” must be excluded from consideration as being a generic or functional component of the domain name. See Sporty’s Farm v. Sportsman’s Market, 202 F.3d 489, 498, (2d Cir. 2000).

The remaining part of the disputed domain name term consists solely of the Calvin Klein Mark, with the addition of a hyphen between the words “Calvin” and “Klein”. As noted in WIPO Overview 3.0, section 1.8: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.” It is the Panel’s view that the addition of a hyphen to the Calvin Klein Mark does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s Calvin Klein Mark, which remains clearly recognizable in the disputed domain name. Prior UDRP panels have found similarly-constructed hyphenated domain names to be confusingly similar to the trademark at issue; see e.g., Navasard Limited v. Nev Mews, WIPO Case No. D2019-2528. The Panel therefore finds that the disputed domain name is confusingly similar to the Calvin Klein Mark.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name by, among other circumstances, showing any one of the following elements:

(i) that before notice of the dispute, the Respondent used or made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) that the Respondent has been commonly known by the disputed domain name, even if it had acquired no trademark or service rights; or

(iii) that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name lies with the Complainant.

The Complainant has stated, and the Panel accepts, that the Respondent has no rights or legitimate interests in the disputed domain name. In this respect, the Panel also accepts that the Respondent is not commonly known by the disputed domain name and has not acquired any rights (registered or otherwise) in the Calvin Klein Mark or name.

Further, the Panel is satisfied that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, which the Panel notes currently resolves to an inactive website.

The Panel finds that the Complainant has satisfied the burden of establishing a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and accordingly finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.

The Panel is also entitled to have regard to the lack of any substantive response on this point from the Respondent and the absence of any claim to rights or legitimate interests in the disputed domain name.

Therefore, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.

C. Registered and Used in Bad Faith

The Panel is satisfied that the disputed domain name has been registered in bad faith for the following reasons:

(i) The Panel is satisfied that the Complainant’s Calvin Klein Mark is internationally well recognized, and that the Respondent was or ought to have been aware of the Complainant, its Calvin Klein Mark, and its associated goodwill at the time of registration.

(ii) The Panel finds that the disputed domain name’s confusing similarity to the Calvin Klein Mark suggests the disputed domain name was registered for the purpose of “typosquatting” by capturing and diverting Internet users seeking out the Complainant’s website who make a typo by adding a hyphen.

(iii) As per section 3.1.2 of the WIPO Overview 3.0, URDP panels have held that as few as two instances of abusive domain name registration can establish a pattern of bad faith registrations. It is the Panel’s opinion, in the absence of any arguments or evidence to the contrary by the Respondent, that the bad faith registration finding against the Respondent in Novartis AG v. Vladimir Pulek Claim Number: FA2008001907740 together with the registration of the disputed domain name in the present case is evidence the Respondent has engaged in a pattern of registering domain names in bad faith to prevent the trademark owner from reflecting its own mark in a corresponding domain name. (See also Arla Foods Amba and Mejeriforeningen Danish Dairy Board v Mohammad Alkurdi, WIPO Case No. D2017-0391 and Halle Berry and Ballah Brands Incorporated v Alberta Hot Rods, WIPO Case No. D2016-0256).

The Panel is also satisfied that the disputed domain name has been used in bad faith for the following reasons:

(i) The disputed domain name resolved to an inactive website “support.thebestforyourskin.com” which is not affiliated with the Complainant. It is the responsibility of the Respondent to monitor how the disputed domain name is used, even if the content on the website to which it resolves was generated by an Internet parking company.

(ii) Passive use of a disputed domain name can still amount to use in bad faith. See Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry D’Agay v. Perlegos Properties, WIPO Case No. D2005-1085.

(iii) The Panel accepts the Respondent’s use of the disputed domain name creates a likelihood of confusion with the Calvin Klein Mark and therefore misleads Internet users as to the source, sponsorship, affiliation or endorsement of the website to which the disputed domain name resolves, thereby taking advantage of the goodwill associated with the Complainant.

(iv) The Panel is entitled to have regard to the lack of any substantive response on this point from the Respondent.

Therefore, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied in favor of the Complainant.

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 names, <calvin-klein.digital> be transferred to the Complainant.

Andrew Brown Q.C.
Sole Panelist
Date: February 16, 2021