Calvin Klein Trademark Trust and Calvin Klein Inc. v. Deborah R. Heacock
Claim Number: FA1308001515989
Complainant is Calvin Klein Trademark Trust and Calvin Klein Inc. (“Complainant”), represented by David S. Lipkus of Kestenberg Siegal Lipkus LLP, Canada. Respondent is Deborah R. Heacock (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <calvinklein.us>, registered with Dynadot LLC.
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 National Arbitration Forum electronically on August 21, 2013; the National Arbitration Forum received a hard copy on August 26, 2013.
On August 22, 2013, Dynadot LLC confirmed by e-mail to the National Arbitration Forum that the <calvinklein.us> domain name is registered with Dynadot LLC and that Respondent is the current registrant of the name. Dynadot LLC has verified that Respondent is bound by the Dynadot LLC 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 August 26, 2013, the Forum served a Notification of Complainant and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 16, 2013 by which Respondent could file a Response to the Complaint was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 20, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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 has engaged in producing, selling, and licensing men’s and women’s apparel, fragrances, accessories, and footwear, in association with Calvin Klein Intellectual Properties since 1968. Complainant uses the CALVIN KLEIN mark in the United States and has gained a reputation as offering high quality products. Complainant owns numerous trademarks through the United States Patent and Trademark Office (“USPTO”) for the CALVIN KLEIN mark (e.g., Reg. No. 1,086,041 registered February 21, 1978). See Complainant’s Annex C. Complainant also owns domain name registrations which incorporate Complainant’s marks, including <calvinklein.com>, <calvinkleinbags.com>, and other similar domain names. Complainant has maintained its domain names to provide information on Complainant’s products and services, and also offers products for sale. See Complainant’s Annex F.
Respondent registered the <calvinklein.us> domain name in September of 2012, and uses the domain name to divert Internet users seeking Complainant’s website and bring them to a website featuring pay-per-click hyperlinks which presumably results in revenue generated on behalf of Respondent. The <calvinklein.us> domain name is confusingly similar to Complainant’s mark, and includes the extension “.us.” Respondent has no proprietary interests in the CALVIN KLEIN mark and is not commonly known by the mark or the <calvinklein.us> domain name. Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. Respondent also demonstrates bad faith registration of the disputed domain name by seeking to sell the domain name to Complainant for the amount of $6,000 and by intentionally causing confusion to Internet users and profiting from the resulting traffic to its website. Complainant’s first use and registration of its CALVIN KLEIN mark predates Respondent’s registration of the <calvinklein.us> domain name, and the mark’s distinct and famous nature burdens Respondent with constructive and actual knowledge of Complainant’s rights in the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Calvin Klein Trademark Trust & Calvin Klein Inc. of New York, NY, USA. Complaint is the owner of several domestic trademark registrations for the mark CALVIN KLEIN and associated marks. Complainant states that it first used its mark in 1968 and has continuously used it since that time in connection with various types of clothing apparel and related merchandise.
Respondent is indicated as Deborah R. Heacock of Seattle, WA, USA. Respondent’s registrar’s address is indicated as San Mateo, CA, USA. Respondent registered the disputed domain name on or about September 14, 2011.
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 and is being used in bad faith.
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant asserts that its long-standing use of the CALVIN KLEIN mark and its trademark registrations with the USPTO demonstrate its rights in the mark. Complainant provides evidence of its USPTO registrations in its Annex C for the CALVIN KLEIN mark (e.g., Reg. No. 1,086,041 registered February 21, 1978). Previous panels have found that a USPTO registration acts as evidence of a complainant’s rights in the claimed mark in satisfaction of the Policy. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under UDRP ¶ 4(a)(i) through registration of the mark with the USPTO). The Panel finds that Complainant has satisfactorily shown that it owns rights in the CALVIN KLEIN mark as a result of its USPTO registration, pursuant to Policy ¶ 4(a)(i).
Complainant makes the claim that the <calvinklein.us> domain name is confusingly similar to the CALVIN KLEIN mark, citing the inclusion of the country-code top-level domain (“ccTLD”) “.us. The Panel notes that the only additional difference between the domain name and the mark beyond the ccTLD is the omission of spacing between the words of the mark. The Panel finds that under Policy ¶ 4(a)(i) the <calvinklein.us> domain name is in fact identical to Complainant’s mark. See Basic Trademark S.A. v. Antares S.p.A, FA 1130680 (Nat. Arb. Forum Mar. 4, 2008) (“The <robedikappa.us> domain name is identical to the ROBE DI KAPPA mark. The only difference is the omission of the space between the words and the addition of the ccTLD “.us,” which does not significantly distinguish the domain name from the mark.”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes 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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Complainant has met this burden.
Complainant asserts that Respondent has no proprietary interests in the disputed domain name. The Panel notes that Respondent did not submit a Response refuting Complainant’s claim, and no evidence exists on the record to demonstrate that Respondent has intellectual property or trademark rights in the CALVIN KLEIN mark. The Panel finds that the record supports a finding that Respondent lacks rights or legitimate interests in the <calvinklein.us> domain name under Policy ¶ 4(c)(i) due to the apparent fact that Respondent has no trademark rights in the CALVIN KLEIN mark. See Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sep. 3, 2002) (holding that because 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)).
Complainant alleges that Respondent is not commonly known by the <calvinklein.us> domain name, identifying the WHOIS information as support, which lists Respondent as “Deborah Heacock.” Complainant contends that the WHOIS information demonstrates that Respondent is not commonly known by the CALVIN KLEIN name, and further argues that Respondent does not have authorization or license to use or register a domain name incorporating Complainant’s mark. The panel in Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000), stated that the respondent had no rights or legitimate interests in the domain name where it was not a licensee of the complainant; the complainant’s rights in the mark precede the respondent’s registration of the domain name; and the respondent is not commonly known by the domain name in question.
The Panel finds that Respondent is not commonly known by the <calvinklein.us> domain name based on the aforementioned facts, and that Respondent does not possess rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(iii).
Complainant states that Respondent makes use of the <calvinklein.us> domain name to host a website featuring pay-per-click links to other “similar” websites, which includes links to Complainant’s competitors. See Complainant’s Annex L. The Panel notes that Complainant’s exhibit shows a screen shot of the resolving website, which includes links to companies such as “Chanel,” “Burberry,” and offers of “Wholesale Shoes” and “Handbags.” The panel in Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007), held that the respondent failed to offer any goods or services on its website, aside from links to a variety of third-party websites, and therefore could not claim rights or legitimate interests in the disputed domain name.
The Panel finds that offering numerous hyperlinks to competing websites does not establish a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(ii) or 4(c)(iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant contends that Respondent registered the <calvinklein.us> domain name for the purpose of selling it to Complainant, thereby indicating bad faith registration and use. Complainant alleges that Respondent requested a payment of $6,000 in exchange for transferring the domain name to Complainant, and failed to provide evidence of the costs associated with registering the domain. See Complainant’s Annex T. In George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007), the panel stated that the respondent registered and used the disputed domain name in bad faith by offering the domain name for sale for more than the estimated out-of-pocket costs it incurred by intitally registering the domain. The Panel finds that Respondent similarly registered the <calvinklein.us> domain name in bad faith under Policy ¶ 4(b)(i) by making an offer to sell the domain name for a price not supported by any evidence of expenditure to justify the cost.
Complainant argues that Respondent’s bad faith is further shown by its use of the resolving website as a host site for pay-per-click hyperlinks, many of which resolve to entities offering goods in competition with Complainant. The Panel notes that while Complainant does not accuse Respondent of collecting a profit by hosting competing hyperlinks, Complainant raises the inference that Respondent generates revenue by hosting such links. The Panel finds that Respondent’s registration and use under Policy ¶ 4(b)(iv) as shown by using an identical domain name to attract Internet traffic to its resolving website, and generating revenue by hosting pay-per-click hyperlinks to websites competing with Complainant’s business, demonstrates Respondent’s bad faith. See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be misled to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).
Because 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 <calvinklein.us> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: October 3, 2013
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