Calvin Klein Trademark Trust & Calvin Klein, Inc. v. KHALAF FERNANDEZ DESIREE / gongyong zeng / zenggongyong
Claim Number: FA1311001529570
Complainant is Calvin Klein Trademark Trust & Calvin Klein, Inc. (“Complainant”), represented by David S. Lipkus of Kestenberg Siegal Lipkus LLP, Ontario, Canada. Respondent is KHALAF FERNANDEZ DESIREE / gongyong zeng / zenggongyong (“Respondent”), Spain.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ropainteriorcalvinklein.com> registered with Jiangsu Bangning Science & Technology Co. LTD., and <calvinkleincoms.com> registered with GoDaddy.com, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 12, 2013; the National Arbitration Forum received payment on November 12, 2013. The Complaint was received in both Chinese and English.
On November 13, 2013 GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <calvinkleincoms.com> domain name is registered with GODADDY.COM, LLC, that Respondent is the current registrant of the name, and that the language of the Registration Agreement is English. On November 14, 2013, Jiangsu Bangning Science & Technology Co. LTD. confirmed by e-mail to the National Arbitration Forum that the <ropainteriorcalvinklein.com> domain name is registered with Jiangsu Bangning Science & Technology Co. LTD. that Respondent is the current registrant of the name, and that the language of the Registration Agreement is Chinese. Jiangsu Bangning Science & Technology Co. LTD. and GODADDY.COM, LLC have both verified that Respondent is bound by the applicable registration agreements and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 14, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of December 4, 2013 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@calvinkleincoms.com, postmaster@ropainteriorcalvinklein.com. Also on November 14, 2013, the Chinese language 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 16, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN 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.
Language of the Proceedings
The Registration Agreement for the <ropainteriorcalvinklein.com> domain name is written in Chinese, thereby making the language of the proceedings for this domain name in Chinese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Preliminary Contentions:
Policy ¶ 4(a)(i): Complainant’s Mark & Confusing Similarity of the Domain Names
Policy ¶ 4(a)(ii): Respondent Lacks Rights and Legitimate Interests
Policy ¶ 4(a)(iii): Respondent Registered and Used the Domain Names in Bad Faith
Respondent registered the domain names as follows:
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Multiple Complainants
There are two Complainants: Calvin Klein Trademark Trust and Calvin Klein, Inc. Calvin Klein Trademark Trust is the trademark holder and registered owner of the CALVIN KLEIN mark. Calvin Klein, Inc. is the beneficial owner of the trademarks and a licensee of the Trademark Trust for a variety of merchandise. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” As Complainants have shown a sufficient nexus or link between them, the Panel will treat them as a single entity and will refer to them as “Complainant.” See Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006)(multiple parties may proceed as one party where they can show a sufficient link to each other).
Preliminary Issue: Multiple Respondents
Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that both “Khalaf Fernandez Desiree” and “gongyong zeng / zenggongyong” are the same entity operating through various Internet monikers. Complainant points out that both of the disputed domains names are hosted via the identical 178.18.254.108 IP address. Complainant further alleges that both domain names resolve to the same website—a website focused on the sale of counterfeit CALVIN KLEIN goods. The Panel concludes that Respondent is a single entity.
Complainant uses the CALVIN KLEIN mark to market, produce, and sell lines of apparel, fragrances, and fashion accessories. Complainant has registered the CALVIN KLEIN mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 1,086,041 registered February 21, 1978), the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (e.g. Reg. No. 617,381 registered January 29, 1999) and China’s State Administration for Industry and Commerce (“SAIC”) (e.g. Reg. No. 1,681,239 registered on December 14, 2001).
Respondent registered the <calvinkleincoms.com> domain name on September 13, 2013, and the <ropainteriorcalvinklein.com> domain name on August 1, 2013. Respondent is using the <calvinkleincoms.com> and <ropainteriorcalvinklein.com> domain names to sell counterfeit CALVIN KLEIN goods.
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.”).
Complainant has rights in the CALVIN KLEIN mark under Policy ¶ 4(a)(i) through registration with three major national trademark registrars. See, e.g., Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”).
Complainant contends that the <calvinkleincoms.com> and <ropainteriorcalvinklein.com> domain names are confusingly similar to Complainant’s CALVIN KLEIN mark. The generic term “coms” does not distinguish the <calvinkleincoms.com> domain name. The phrase “ropa interior” is a Spanish phrase meaning “underwear” and thus the term’s presence in the <ropainteriorcalvinklein.com> domain name merely describes types of products sold under the CALVIN KLEIN mark. Both the addition of the gTLDs and the deletion of the CALVIN KLEIN mark’s spacing are irrelevant modifications for purposes of the Policy. See HomeVestors of Am., Inc. v. Sean Terry, FA 1523266 (Nat. Arb. Forum Nov. 11, 2013) (“[T]he Panel notes that panels have previously held that a domain name’s elimination of spaces found in the complainant’s mark and addition of a gTLD such as “.com” do not sufficiently differentiate the domain name from the complainant’s mark for the purposes of a confusing similarity analysis under Policy ¶ 4(a)(i).”). The addition of “coms” to the <calvinkleincoms.com> domain name does not avoid a finding of confusing similarity. See, e.g., Borders Props., Inc. v. Hewitt, FA 114618 (Nat. Arb. Forum July 23, 2002) (“The added ‘com’ does not defeat a confusing similarity claim because it takes advantage of a common typographical error. It is a basic mistake to type ‘com’ twice without typing the period after the targeted search term . . . [t]herefore, Respondent’s domain name is confusingly similar to Complainant’s mark.”). The addition of the descriptive phrase “ropa interior” enhances the confusing similarity of the <ropainteriorcalvinklein.com> domain name as the term merely describes products sold under the CALVIN KLEIN mark, albeit in Spanish rather than English. See Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark). The Panel finds that the <calvinkleincoms.com> and <ropainteriorcalvinklein.com> domain names are confusingly similar to the CALVIN KLEIN mark under Policy ¶ 4(a)(i).
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).
Respondent has not been commonly known by either of the <calvinkleincoms.com> and <ropainteriorcalvinklein.com> domain names pursuant to Policy ¶ 4(c)(ii). The WHOIS information for the disputed domain names list “KHALAF FERNANDEZ DESIREE” and “gongyong zeng / zenggongyong” as the registrants. Complainant has not authorized or licensed Respondent’s use of the CALVIN KLEIN mark in domain names.
Respondent has directed both the <calvinkleincoms.com> and <ropainteriorcalvinklein.com> domain names to a website that uses the CALVIN KLEIN mark in furthering the sale of counterfeit merchandise. The disputed domain names take Internet users to nearly identical websites, which feature imagery of posing models, as well as offerings of goods that explicitly bear the CALVIN KLEIN mark. In Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007), the panel declined to find a bona fide offering when the disputed domain name was used to sell goods that competed with the complainant’s merchandise, and when said goods were apparently counterfeits of the complainant’s branded goods. The Panel finds that Respondent’s use of the disputed domain names to sell unauthorized and counterfeit CALVIN KLEIN merchandise is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant points to a previous UDRP involving the CALVIN KLEIN mark in which it prevailed against the listed Respondent. Complainant claims that this prior decision illustrates a pattern of bad faith registration. See Calvin Klein Trademark Trust & Calvin Klein, Inc. v. zenggongyong / gongyong zeng, FA 15118731 (Nat. Arb. Forum Oct. 10, 2013). The prior adverse UDRP combined with the registration of the two disputed domain names here show a pattern of bad faith registrations.
The Panel finds that Respondent’s use of the <calvinkleincoms.com> and <ropainteriorcalvinklein.com> domain names to divert Internet users seeking CALVIN KLEIN goods to fraudulent and counterfeit merchandise constitutes bad faith under Policy ¶ 4(b)(iv). See Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008)(the respondent created a Policy ¶ 4(b)(iv) bad faith likelihood of confusion as to the source or origin of the goods offered through the disputed domain name as all of the goods were competing counterfeits of the complainant’s goods).
Respondent was aware of Complainant’s rights when registering the disputed domain names; therefore, the Panel finds bad faith registration under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <calvinkleincoms.com> and <ropainteriorcalvinklein.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 30, 2013
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