CALVIN KLEIN TRADEMARK TRUST & CALVIN KLEIN INC. v. Milen Radumilo
Claim Number: FA2004001893284
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <calvin-klein.us>, registered with CommuniGal Communication Ltd.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 23, 2020; the Forum received payment on April 23, 2020.
On May 18, 2020, CommuniGal Communication Ltd. confirmed by e-mail to the Forum that the <calvin-klein.us> domain name is registered with CommuniGal Communication Ltd. and that Respondent is the current registrant of the name. CommuniGal Communication Ltd. has verified that Respondent is bound by the CommuniGal Communication Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On May 19, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 8, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@calvin-klein.us. Also, on May 19, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 15, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant engages in the production, sale and licensing of men’s and women’s apparel, fragrances, accessories, footwear, and other related goods. Complainant has rights in the CALVIN KLEIN mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,086,041, registered Feb. 21, 1978). Respondent’s <calvin-klein.us> domain name is confusingly similar to Complainant’s CALVIN KLEIN mark. Respondent incorporates the mark in its entirety and adds a hyphen and the “.us” country-code top-level domain (“ccTLD”).
Respondent lacks rights or legitimate interests in the <calvin-klein.us> domain name as Respondent is not commonly known by the disputed domain name nor did Complainant authorize Respondent to use its mark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses Complainant’s mark for commercial gain.
Respondent registered and used the <calvin-klein.us> domain name in bad faith as Respondent’s domain name resolves to a webpage that offers pay-per-click advertisements unrelated to Complainant’s business. Respondent has also engaged in previous UDRP decisions showing past behavior of bad faith. Further, Respondent had actual knowledge of Complainant’s rights in the CALVIN KLEIN mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant is Calvin Klein Trademark Trust & Calvin Klein Inc. (“Complainant”), of New York, NY, USA. Complainant is the owner of domestic and international registrations for the mark CALVIN KLEIN which it has used continuously since at least as early 1968 in connection with its provision of wearing apparel and other related merchandise. Complainant is also the owner of numerous domain registrations bearing its mark where it advertises and sells its products such as <calvinklein.com> and <calvinkleinfashion.com>.
Respondent is Milen Radumilo (“Respondent”), of Bucharest, Romania. Respondent’s registrar’s address is not listed. The Panel notes that the <calvin-klein.us> domain name was registered on or about September 4, 2019.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims rights in the CALVIN KLEIN mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in the mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant has provided the Panel with a copy of its USPTO registration for the CALVIN KLEIN mark (Reg. No. 1,086,041, registered Feb. 21, 1978). The Panel here finds that Complainant has rights in the mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <calvin-klein.us> domain name is confusingly similar to Complainant’s CALVIN KLEIN mark. Registration of a domain name that contains a mark in its entirety and adds a hyphen or other punctuation along with a ccTLD does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug, 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”), see also Transamerica Corporation v. Whois Foundation, FA 1700616 (Forum Dec. 5, 2016) (“For the purposes of comparison of the domain name and the trademark, it is agreed by panelists that ccTLDs can generally be disregarded”). Here, Complainant argues that Respondent incorporates the mark in its entirety and adds a hyphen and the “.us” ccTLD. The Panel here finds that Respondent’s domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i). The Complainant has proven this element.
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant argues Respondent lacks rights or legitimate interest in the <calvin-klein.us> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the CALVIN KLEIN mark or register domain names using Complainant’s mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(iii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name in the instant proceeding identifies the registrant as “Milen Radumilo” and there is no evidence provided to support a finding that Respondent was authorized to use the CALVIN KLEIN mark or was commonly known by the disputed domain name. The Panel here finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(iii).
Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses Complainant’s mark for commercial gain. Use of a disputed domain name to resolve to a pay-per-click site that benefits a respondent is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(ii) or (iv). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”). Here, Complainant provided screenshots of Respondent’s domain name resolving webpage that shows links and advertisement that generate commercial value for Respondent. The Panel here finds that Respondent failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(ii) or (iv).
The Panel additionally finds that there is nothing in the available evidence that indicates Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). The Panel finds that Respondent has failed Policy ¶ 4(c)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii). The Complainant has proven this element.
Complainant argues that Respondent has been involved in previous UDRP decisions which is evidence of bad faith. Prior UDRP cases may be evidence of a Respondent’s pattern of bad faith per Policy ¶ 4(b)(ii). See Sanlam Life Insurance Limited v. Syed Hussain / Domain Management MIC, FA 1787219 (Forum June 15, 2018) (finding bad faith per Policy ¶ 4(b)(ii) where the complainant provided evidence the respondent owned various domain names infringing on famous third-party marks; and also, that the respondent had been ordered to transfer domain names in previous UDRP decisions). Here, Complainant has provided the Panel with previous cases where Respondent was involved in UDRP decisions. The panel here finds that Respondent has engaged in a pattern of bad faith per Policy ¶ 4(b)(ii).
Complainant argues that Respondent registered and used the <calvin-klein.us> domain name in bad faith as Respondent’s domain name resolves to a webpage that offers pay-per-click advertisements unrelated to Complainant’s business. Use of a disputed domain name to offer advertisements unrelated to a complainant’s business for commercial gain may be evidence of bad faith per Policy ¶ 4(b)(iv). See Zoetis Inc. and Zoetis Services LLC v. Paul Adams / zoetismail, FA 1729095 (Forum June 5, 2017) (holding that the respondent registered and used the <zoetismail.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme) see also Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). Here, Complainant has provided screenshots of Respondent’s domain name resolving webpage that shows links and advertisements that generate commercial value for Respondent. The Panel here finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant argues that Respondent had knowledge of Complainant’s rights in the CALVIN KLEIN mark at the time of registering the <calvin-klein.us> domain name. Actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum January 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support its assertion, Complainant points to its trademark registrations, the fame of the CALVIN KLEIN mark, and the fact that Respondent is a serial cybersquatter. As Complainant’s evidence is unrefuted, the Panel here finds that Respondent did have actual knowledge of Complainant’s right in its mark, which supports a finding of bad faith registration and use under Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii). The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <calvin-klein.us> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: June 29, 2020
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