Calvin Klein Trademark Trust, Calvin Klein Inc. v Client Care, Web

WIPO Case No. D2024-1326

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Calvin Klein Trademark Trust, Calvin Klein Inc. v. Client Care, Web
Commerce Communications Limited

Case No. D2024-1326

1. The Parties

The Complainant is Calvin Klein Trademark Trust, Calvin Klein Inc., United States of America (“US”), represented by Lipkus Law LLP, Canada.

The Respondent is Client Care, Web Commerce Communications Limited, Malaysia.

2. The Domain Names and Registrar

The disputed domain names: <calvinklein-be.com>, <calvinklein-colombia.com>,
<calvinklein-dk.com>, <calvinklein-ecuador.com>, <calvinkleinhrvatska.com>,
<calvinkleiniesale.com>,<calvinklein-japan.com>,<calvinklein-magyarorszag.com>,
<calvinklein-nl.com>,<calvinklein-nz.com>,<calvinklein-osterreich.com>,<calvinkleinoutlet-au.com>,
<calvinkleinoutlet-canada.com>,<calvinkleinoutletch.com>, <calvinkleinoutletcz.com>,
<calvinkleinoutlet-de.com>,<calvinkleinoutletespana.com>, <calvinkleinoutletfrance.com>,
<calvinkleinoutletisrael.com>,<calvinkleinoutletitalia.com>,<calvinkleinoutletperu.com>,
<calvinkleinoutletpolska.com>,<calvinkleinoutletsuomi.com>,<calvinkleinoutletsverige.com>,
<calvinkleinoutletturkiye.com>,<calvinklein-philippines.com>,<calvinklein-romania.com>,
<calvinkleinropachile.com>, <calvinkleinserbia.com>, <calvinklein-singapore.com>,
<calvinklein-slovensko.com>, <calvinklein-south-africa.com>, and <calvinklein-uae.com> are registered with

Alibaba.com Singapore E-Commerce Private Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2024.
On March 28, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain names. On March 29, 2024, the Registrar transmitted by email to the
Center its verification response disclosing registrant and contact information for the disputed domain names
which differed from the named Respondent (Unknown) and contact information in the Complaint. The
Center sent an email communication to the Complainant on April 3, 2024, providing the registrant and
contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the
Complaint. The Complainant filed an amended Complaint on April 4, 2024.

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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 Complaint, and the proceedings commenced on April 9, 2024. In accordance with the Rules, paragraph 5, the due date for Response was April 29, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 3, 2024.

The Center appointed George R. F. Souter as the sole panelist in this matter on May 14, 2024. 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 Complainant has, since 1968, been trading internationally in connection with the production, sale and licensing of men’s and women’s apparel, fragrances, accessories, and footwear under the trademark CALVIN KLEIN. It has copiously advertised its wares internationally, and has registered its CALVIN KLEIN trademark throughout the world. These registrations include US trademark registration number 1086041, registered on February 21, 1978, and US trademark registration number 1633261, registered on January 29, 1991.

All 33 disputed domain names at issue in this case were registered between February 29, 2024 and March 4,
2024. 31 of these disputed domain names resolve to online stores selling purportedly CALVIN KLEIN

products.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names.

Notably, the Complainant contends that each of the disputed domain names conform to a pattern, containing the Complainant’s CALVIN KLEIN trademark in its entirety, together with a geographical indicator specific to a particular country, together with, in some cases, a descriptive or non-distinctive word, namely “outlet” or

“sale”. In the specific case of the disputed domain name <calvinkleinropachile>, the descriptive word, “ropa”,
which is the Spanish word for “clothing”, is used.

The Complainant contends that the Respondent lacks rights or legitimate interests in any of the disputed domain names, in particular that the Respondent is not generally known by any of the disputed domain names, and that the Complainant has never granted permission to the Respondent to use its CALVIN KLEIN trademark in connection with the registration of a domain name, or otherwise.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

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6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within all the disputed domain names. Accordingly, the disputed domain names are confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

The geographical terms adopted by the Respondent varies from disputed domain name to disputed domain
name, and each disputed domain name clearly identifies a specific country. In addition, some of the
disputed domain name reproduces together with the CALVIN KLEIN trademark terms such as “sale”, “outlet”,
and “ropa” (the Spanish word for “clothing”). .

Although the diligence of the Respondent in constructing such a complex weaponry in what the Panel regards as a concentrated effort to profit unfairly from the reputation of the Complainant’s CALVIN KLEIN trademark evokes some admiration, the effort was fatally flawed. It is well-established in prior decisions under the Policy that the mere addition of a geographical term to a trademark in which a Complainant has demonstrated rights does not detract from a finding of confusing similarity. Neither does the further addition of the words “sale” or “outlet” or “ropa” in some of the disputed domain names detract from a finding of confusing similarity. WIPO Overview 3.0, section 1.8.

Accordingly, the Panel finds the first element of the Policy has been established in connection with all of the disputed domain names.

B. Rights or Legitimate Interests

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise.

The Panel finds that the nature of the disputed domain names carries a risk of implied affiliation.

WIPO Overview 3.0, section 2.5.1.

The Panel finds that the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel considers it obvious that the Respondent has deliberately registered the disputed domain names, in a concentrated effort to compete unfairly with the Complainant, using the Complainant’s CALVIN KLEIN trademark as a tool. This leads to the inevitable finding of registration of the disputed domain names in bad faith, which the Panel so finds.

The Complainant, with some difficulty (in certain cases being unable to access due to having been blocked), has been able to connect to the websites of the majority of the disputed domain names, which resolved to an online store selling clothes, appearing to be Complainant’s CALVIN KLEIN products. It is well-established in prior decisions under the Policy that the use of a disputed domain name for a website that seeks to create an appearance of affiliation with the Complainant constitutes use in bad faith. The Complainant was unable to

contact the websites associated with the disputed domain names <calvinklein-uae.com> or
<calvinkleinserbia.com>. In the Panel’s opinion, it is overwhelmingly likely that, if made available to users,
they would be used for the same purpose as the majority of the disputed domain names.

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In the meantime, the Panel considers that these two disputed domain names can be considered to be passively held. Under the doctrine of passive holding developed under the Policy, a passively held domain name may be held to be being used in bad faith if it is deemed likely that it would, if brought into use, be used to the detriment of the trademark holder. The Panel considers that this is clearly the case with these two disputed domain names, and, accordingly, finds that they are being used in bad faith.

The Panel finds that the third element of the Policy has been established.

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 names:

<calvinklein-be.com>
<calvinklein-colombia.com>
<calvinklein-dk.com>
<calvinklein-ecuador.com>
<calvinklein-hrvatska.com>
<alvinkleiniesale.com>
<calvinklein-japan.com>
<calvinklein-magyarorszag.com>
<calvinklein-nl.com>
<calvinklein-nz.com>
<calvinklein-osterreich.com>
<calvinkleinoutlet-au.com>
<calvinkleinoutlet-canada.com>
<calvinkleinoutletch.com>
<calvinkleinoutletcz.com>
<calvinkleinoutlet-de.com>
<calvinkleinoutletespana.com>
<calvinkleinoutletfrance.com>
<calvinkleinoutletisrael.com>
<calvinkleinoutletitalia.com>
<calvinkleinoutletperu.com>
<calvinkleinoutletpolska.com>
<calvinkleinoutletsuomi.com>
<calvinkleinoutletsverige.com>
<calvinkleinoutletturkiye.com>
<calvinklein-philippines.com>
<calvinklein-romania.com>
<calvinkleinropachile.com>
<calvinkleinserbia.com>
<calvinklein-singapore.com>
<calvinklein-slovensko.com>
<calvinklein-south-africa.com>

<calvinklein-uae.com>

be transferred to the Complainant.

/George R. F. Souter/
George R. F. Souter
Sole Panelist
Date: May 28, 2024