Calvin Klein Trademark Trust and Calvin Klein Inc. v 朱人杰 (Zhu renjie)

WIPO Case No. D2022-2591

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Calvin Klein Trademark Trust and Calvin Klein Inc. v. 朱人杰 (Zhu renjie)

Case No. D2022-2591

1. The Parties

The Complainants are Calvin Klein Trademark Trust (the “First Complainant”) and Calvin Klein Inc.

(the “Second Complainant”), both located in the United States of America (“United States”), represented by

Kestenberg Siegal Lipkus LLP, Canada.

The Respondent is 朱人杰 (Zhu renjie), China.

2. The Domain Name(s) and Registrar

The disputed domain name <calvinklein.mobi> is registered with Xiamen 35.Com Technology Co., Ltd.

(the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 15,

2022. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in contact details. The Complainants filed an amended Complaint in Chinese and English on July 21, 2022.

connection with the disputed domain name. On July 21, 2022, the Registrar transmitted by email to the

On July 21, 2022, the Center sent an email in Chinese and English to the Parties regarding the language of the proceeding. On the same day, the Complainants confirmed their request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

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 the due date for Response was August 18, 2022. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on August 21, 2022.

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The Center appointed Matthew Kennedy as the sole panelist in this matter on August 26, 2022. 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 Complainants produce, sell and license men’s and women’s apparel, fragrances, accessories, and

footwear, among things. Their products are sold through their own retail stores, outlet stores and websites
and authorized dealers. The First Complainant is the registered proprietor of trademark registrations in

multiple jurisdictions, including the following:

- United States trademark registration number 1,086,041 for CALVIN KLEIN, registered on February 21,
1978, with a claim of first use in commerce in June 1968, specifying goods in class 25; and

- Chinese trademark registration number 1,681,239 for CALVIN KLEIN in a stylized script, registered on
December 14, 2001, specifying goods in class 25.

The above trademark registrations remain current. The Second Complainant registered the domain name

<calvinklein.com> in 1997 and uses it in connection with a website where it offers its products for sale. The

Second Complainant has also registered other domain names that incorporate the element “calvinklein”.

The Respondent is an individual resident in China.

The disputed domain name was registered on September 26, 2006. It does not resolve to any active website; rather, it is passively held.

5. Parties’ Contentions

A. Complainants

The disputed domain name is confusingly similar to the Complainants’ CALVIN KLEIN mark.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The incorporating that trademark.

Respondent is not affiliated with the Complainant in any way. The Complainant has not authorized the

The disputed domain name has been registered and is being used in bad faith. The Respondent is diverting

the Complainant’s customers or potential customers seeking information about the Complainant to an

inactive website. There is no plausible actual or contemplated active use of the disputed domain name that

would not be illegitimate and constitute an infringement of the Complainant’s rights.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

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6. Discussion and Findings

6.1 Procedural Issues

A. Consolidation: Multiple Complainants

The Complaint was filed by two Complainants against a single Respondent. The First Complainant, a trust, is the registered proprietor of the CALVIN KLEIN mark while the Second Complainant is the beneficial owner

of that mark. The Second Complainant is also the holder of multiple “calvinklein” formative domain names.

The Panel finds that the Complainants have a common grievance against the disputed domain name registrant and that it is efficient to permit the consolidation of their complaints. Therefore, the Complainants

are referred to below collectively as “the Complainant”, except as otherwise indicated.

B. Language of the Proceeding

Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in

the Registration Agreement, the language of the administrative proceeding shall be the language of the

Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the

circumstances of the administrative proceeding”. The Registrar confirmed that the Registration Agreement

for the disputed domain name is in Chinese.

The Complainant requests that the language of the proceeding be English. Its arguments are that the

disputed domain name is in English, and the “.mobi” generic Top-Level Domain (“gTLD”) extension is derived
from the English word “mobile”.

Paragraph 10(b) and (c) of the Rules requires the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO

Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical

appliance co. ltd., WIPO Case No. D2008-0293.

The Panel observes that in this proceeding the amended Complaint was filed in both Chinese and English. Further, despite the Center having sent the notification of the Complaint, the written notice of the Complaint, and an email regarding the language of the proceeding in both Chinese and English, the Respondent has not commented on the issue of language nor expressed any interest in otherwise participating in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint, as amended, would create an undue burden and delay, whereas accepting it as filed without translation will not cause unfairness to either Party.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a Response in Chinese, but none was filed.

6.2 Substantive Issues

Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements with respect to each disputed domain name:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the

Complainant has rights; and

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

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

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A. Identical or Confusingly Similar

Based on the evidence presented, the Panel finds that the Complainant has rights in the CALVIN KLEIN mark.

The disputed domain name incorporates the CALVIN KLEIN mark, omitting only the space for technical

reasons. Its only additional element is a gTLD extension (”.mobi”) but, as a standard requirement of domain

name registration, the Panel will disregard that element in the comparison between the disputed domain

name and the CALVIN KLEIN mark.

Therefore, the Panel finds that the disputed domain name is identical to a trademark in which the

Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

1. before any notice to [the respondent] of the dispute, [the respondent’s] use of, or 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) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [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 Complainant submits that the Respondent is not affiliated with it in any way and that it has not authorized the Respondent to use its CALVIN KLEIN trademark.

As regards the first and third circumstances set out above, the disputed domain name is passively held. This
does not constitute use in connection with a bona fide offering of goods or services, nor is it a legitimate
noncommercial or fair use of the disputed domain name that would give rise to rights or legitimate interests

in the disputed domain name for the purposes of the Policy.

As regards the second circumstance set out above, the Respondent’s name is “朱人杰 (Zhu renjie)”, not the

disputed domain name. There is no evidence on the record that the Respondent is commonly known by the
disputed domain name.

In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut

that case because he did not reply to the Complainant’s contentions.

Therefore, based on the record of this proceeding, the Panel finds that the Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith but these circumstances are not exhaustive.

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As regards registration, the disputed domain name was registered in 2006, long after the registration of the

Complainant’s CALVIN KLEIN mark, including in China, where the Respondent is resident. The disputed

domain name is an exact match of the CALVIN KLEIN mark, which is not composed of dictionary words.

The mark is a personal name but it is not the Respondent’s name. The Complainant has made longstanding

and widespread use of the CALVIN KLEIN mark in connection with apparel, accessories, fragrances, and domain name.

other goods, including online, since long before 2006. The Respondent offers no explanation for his
registration of the disputed domain name. In these circumstances, the Panel considers it likely that the

As regards use, the Respondent makes only passive use of the disputed domain name but this does not preclude a finding of use in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the present dispute, the CALVIN KLEIN mark is a famous mark. The disputed

domain name is identical to the CALVIN KLEIN mark, which carries a high risk of implied affiliation yet the proposed good faith use of the disputed domain name. In these circumstances, the Panel finds that, on balance, the disputed domain name is being used in bad faith.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.

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 name <calvinklein.mobi> be transferred to the Complainant.

/Matthew Kennedy/

Matthew Kennedy

Sole Panelist
Date: September 5, 2022