Calvin Klein Trademark Trust & Calvin Klein Inc. v. Chris Lehman
Claim Number: FA1809001806493
Complainant is Calvin Klein Trademark Trust & Calvin Klein Inc. (“Complainant”), represented by David S. Lipkus of Kestenberg Siegal Lipkus LLP, Ontario, Canada. Respondent is Chris Lehman (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <calvinkleins.us>, registered with NameCheap, Inc.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 18, 2018; the Forum received payment on September 18, 2018.
On September 18, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <calvinkleins.us> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 September 19, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 9, 2018 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@calvinkleins.us. Also on September 19, 2018, 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 October 10, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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 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.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
In the instant proceedings, there are two Complainants. 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 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.” The two Complainants in this matter are: Calvin Klein Trademark Trust & Calvin Klein Inc. Calvin Klein Trademark Trust is the registered owner of the Calvin Klein trademarks that are the subject matter of this usDRP proceeding. Calvin Klein Inc. is the beneficial owner of the trademarks owned by Calvin Klein Trademark Trust and licensee of Calvin Klein Trademark Trust for a variety of merchandise. that are the subject matter of this usDRP proceeding. Calvin Klein Inc. is the beneficial owner of the trademarks owned by Calvin Klein Trademark Trust and licensee of Calvin Klein Trademark Trust for a variety of merchandise.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and will treat them all as a single entity in this proceeding.
A. Complainant
Complainant, Calvin Klein Trademark Trust & Calvin Klein Inc., uses its CALVIN KLEIN mark to promote its products and services and established rights in the mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,086,041, registered Feb. 21, 1978). Respondent’s <calvinkleins.us> domain name is confusingly similar to Complainant’s mark as it merely adds the letter “s” and the country-code top-level domain (“ccTLD”) “.us.”
Respondent does not have rights or legitimate interests in the <calvinkleins.us> domain name. Complainant has not licensed or otherwise authorized Respondent to use its CALVIN KLEIN mark in any fashion. Respondent is also not commonly known by the disputed domain name as the WHOIS information of record lists “Chris Lehman” as the registrant. Respondent is not using the <calvinkleins.us> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to resolve to an inactive website.
Respondent registered and is using the disputed domain name in bad faith. First, Respondent offered to sell the <calvinkleins.us> domain name. Respondent also uses the domain name to disrupt Complainant’s business by diverting Internet users to Respondent’s inactive website. Moreover, Respondent fails to use the domain name in connection with an active website and may use the domain name for malicious activity.
B. Respondent
Respondent did not submit a Response. The Panel notes that Respondent registered the <calvinkleins.us> domain name on September 6, 2018.
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 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 (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 contends it has rights in its CALVIN KLEIN mark through registration with the USPTO (e.g., Reg. No. 1,086,041, registered Feb. 21, 1978). Registration of a mark with a trademark authority, such as the USPTO, confers rights in a mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). As such, the Panel may hold that Complainant established rights in the CALVIN KLEIN mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <calvinkleins.us> domain name is confusingly similar to Complainant’s mark as it merely adds the letter “s” and the ccTLD “.us.” The addition of a single letter and TLD may not sufficiently distinguish a disputed domain name from a mark. See Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Forum May 3, 2006) (finding that the additions of the letter “s” and generic top-level domains to the disputed <barnesandnobles.info> and <barnesandnobles.biz> domain names failed to avoid the confusing similarity between the domain names and the complainant’s BARNESANDNOBLE.COM mark pursuant to Policy ¶ 4(a)(i)). Therefore, the Panel concludes that Respondent’s <calvinkleins.us> domain name is confusingly similar to Complainant’s mark.
Complainant alleges that Respondent does not have rights or legitimate interests in the disputed domain name, as Respondent is not commonly known by the domain name and Complainant has not licensed or otherwise authorized Respondent to use its CALVIN KLEIN mark in any fashion. Absent contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights and legitimate interests in the domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Under Policy ¶ 4(c)(iii), WHOIS information can be used to support a finding that a respondent is not commonly known by a disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name). The WHOIS information of record for the <calvinkleins.us> domain name lists “Chris Lehman” as the registrant. Therefore, the Panel concludes that Respondent is not commonly known by the <calvinkleins.us> domain name.
The Panel further agrees that there is nothing in the available evidence which indicates that 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)). Therefore, this Panel concludes that Respondent has failed Policy ¶ 4(c)(i).
Further, Complainant claims that Respondent uses the <calvinkleins.us> domain name to resolve to an inactive website. Under Policy ¶¶ 4(c)(ii) or (iv), use of a domain name to resolve to an inactive site may not be considered a bona fide offering of goods or services or legitimate noncommercial or fair use. See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Complainant provided screenshots of the <calvinkleins.us> website, which indicate that the site was blocked due to a security threat. Therefore, the Panel concludes that Respondent failed to use the disputed domain name within the boundaries of Policy ¶¶ 4(c)(ii) or (iv).
Thus, Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent uses the domain name to disrupt Complainant’s business by diverting Internet users to Respondent’s inactive website. Use of a domain name to disrupt a Complainant’s business by resolving to an inactive website may evidence bad faith registration or use under Policy ¶ 4(b)(iii).) See Love City Brewing Company v. Anker Fog / Love City Brewing Company, FA 1753144 (Forum Nov. 27, 2017) (Finding that Respondent disrupts Complainant’s business by pointing Internet users to an expired webpage. This may create the perception that Complainant is closed, never existed, or is not a legitimate business. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iii).). Complainant provided screenshots of the <calvinkleins.us> domain name’s resolving website, which indicate that the site was blocked due to a security threat. Therefore, the Panel holds that Respondent registered and used the <calvinkleins.us> domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Moreover, Complainant contends that Respondent fails to use the domain name in connection with an active website. Pursuant to Policy ¶ 4(a)(iii), failure to actively use a domain name may evidence bad faith registration or use. See VideoLink, Inc. v. Xantech Corporation, FA1608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).” Therefore, the Panel holds that Respondent registered and used the domain name in bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent may have been using the disputed domain name in connection with the distribution of malicious software. Use of a domain name to distribute malicious software may evince a finding of bad faith registration or use under Policy ¶ 4(a)(iii). See Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Limited, FA1603444 (Forum Mar. 19, 2015) (“Using the disputed domain name to download malicious software into unsuspecting viewers’ computers evidences Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). As mentioned before, Complainant provided screenshots of the <calvinkleins.us> resolving webpage, which show that the site was blocked due to a security threat. Complainant argues that this security threat may be related to malicious software distribution. As Respondent has not disputed this allegation, the Panel finds that Respondent used the disputed domain name in connection with malicious software and holds that Respondent engaged in Policy ¶ 4(a)(iii) registration or use.
Thus, Complainant has also satisfied Policy ¶ 4(a)(iii)
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <calvinkleins.us> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: October 23, 2018
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