Calvin Klein Trademark Trust & Calvin Klein, Inc. v Domain Admin, Privacy

WIPO Case No. D2024-1024

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Calvin Klein Trademark Trust & Calvin Klein, Inc. v. Domain Admin, Privacy
Protect LLC / PrivacyProtect org

Case No. D2024-1024

1. The Parties

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

Respondent is Domain Admin, Privacy Protect LLC / PrivacyProtect org, United States.

2. The Domain Names and Registrar

The disputed domain names <calvinklein-ar.com>, <calvinklein-at.com>, <calvinklein-au.com>,
<calvinklein-br.com>, <calvinklein-ca.com>, <calvinklein-ch.com>, <calvinklein-co.com>,
<calvin-kleincostarica.com>, <calvin-kleincz.com>, <calvinklein-de.com>, <calvinkleindenmark.com>,
<calvinkleinecuador.com>, <calvin-kleinegypt.com>, <calvinklein-es.com>, <calvinkleinfinland.com>,
<calvinklein-fr.com>, <calvinklein-gr.com>, <calvinklein-hu.com>, <calvinklein-ie.com>,
<calvin-kleinindonesia.com>, <calvinklein-malaysia.com>, <calvinklein-malta.com>, <calvinklein-mx.com>,
<calvinkleinnederlandonline.com>, <calvinklein-no.com>, <calvinklein-peru.com>, <calvinkleinpoland.com>,
<calvinklein-portugal.com>, <calvinklein-saudiarabia.com>, <calvinklein-se.com>, <calvinklein-sg.com>,
<calvinkleinsit.com>, <calvinklein-sk.com>, <calvinklein-slovenija.com>, <calvinklein-srbija.com>,
<calvinklein-thailand.com>, <calvinklein-turkiye.com>, and <calvinklein-za.com> are registered with GMO

Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2024. On March 8, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 11, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 13, 2024. In accordance with the Rules, paragraph 5, the due date for Response was April 2, 2024. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 3, 2024.

The Center appointed Lorelei Ritchie as the sole panelist in this matter on April 8, 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

Complainant, together with its corporate affiliates (collectively, “Complainant”), is a multinational company
based in the United States. For decades prior to the registration of the disputed domain names,
Complainant has offered clothing and related items under its CALVIN KLEIN mark. Complainant is the
owner of several registrations for these marks, including, among others, United States Registration No.
1,086,041 (registered on February 21, 1978) and European Union Registration No. 617,381 (registered on
January 29, 1999). Complainant also owns the registration for several domain names, including
<calvinklein.com> (registered on June 9, 1997). Complainant uses the associated URL to communicate with
consumers online.

The disputed domain names were registered on February 29, 2024. The disputed domain names are not currently linked to an active website. Respondent nevertheless has no affiliation with Complainant, nor any license to use its marks.

5. Parties’ Contentions

A. Complainant

Complainant contends that (i) the disputed domain names are identical or confusingly similar to names; and (iii) Respondent registered and is using the disputed domain names in bad faith.

Specifically, Complainant contends that it owns rights to the CALVIN KLEIN mark, which is “well known and famous” with “millions of customers worldwide and billions of dollars in sales” over a period of five decades, long prior to Respondent’s registration of the disputed domain names.

Complainant contends that Respondent has incorporated in full Complainant’s CALVIN KLEIN mark into each of the disputed domain names, with only the addition of geographic designations, in some also a non-source-identifying hyphen, and in one disputed domain name the term “online”. Complainant contends that Respondent lacks rights or legitimate interest in the disputed domain names, and rather has registered and is using them in bad faith, having simply acquired the disputed domain names for Respondent’s own commercial gain.

B. Respondent

Respondent did not reply to Complainant’s contentions.

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6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel must first determine whether the disputed domain names are identical or confusingly similar to a disputed domain name <calvinkleinnederlandonline.com> also adds the term “online”.
trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the
Policy. The Panel finds that they are. The disputed domain names directly incorporate in full Complainant’s

Numerous UDRP panels have agreed that the addition of a term or letters to a trademark does not prevent a finding of confusing similarity. See WIPO Overview 3.0, section 1.8. The Panel therefore finds that the disputed domain names are confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel next considers whether Complainant has shown that Respondent has no “rights or legitimate interest,” as must be proven to succeed in a UDRP dispute. Paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that respondent has been “commonly known by the domain name”; or (iii) “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.

No evidence has been presented to the Panel that might support a claim of Respondent’s rights or legitimate
interests in the disputed domain names, and Respondent has no license from, or other affiliation with,
Complainant.

The Panel also notes the composition of the disputed domain names, which carry a risk of implied affiliation with Complainant.

Therefore, the Panel finds that Complainant has provided sufficient evidence of Respondent’s lack of “rights or legitimate interests” in accordance with paragraph 4(a)(ii) of the Policy which Respondent has not rebutted.

C. Registered and Used in Bad Faith

There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. As noted in Section 4 of this Panel’s decision, the disputed domain names are not currently linked to active websites. It is nevertheless well established that having a passive website does not necessarily

shield a respondent from a finding of bad faith. See WIPO Overview 3.0, section 3.3, which notes that the

“non-use of a domain name” does not necessarily negate a finding of bad faith.

Rather, a panel must examine “the totality of the circumstances,” including, for example, whether a
complainant has a well-known trademark, and whether a respondent conceals his/her identity, and/or replies
to the complaint. Respondent here used a privacy service, and did not respond to the Complaint or to prior
correspondence from Complainant. Furthermore, several prior UDRP panels have found that Complainant’s
CALVIN KLEIN mark is famous or well-known internationally. See, for example, Calvin Klein Trademark
Trust & Calvin Klein, Inc. v. Client Care, Web Commerce Communications Limited, WIPO Case No.
D2022-2697, Calvin Klein Trademark Trust & Calvin Klein, Inc. v. WhoisGuard, Inc./Vladimir Pulek, WIPO
Case No. D2020-3437. Lastly, the Respondent registered 38 domain names, all incorporating the
Complainant’s famous trademark, reflecting a pattern of bad faith conduct.

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The Panel finds sufficient evidence that Respondent has targeted Complainant and that Complainant has established paragraph (4)(a)(iii) 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 names <calvinklein-ar.com>, <calvinklein-at.com>, <calvinklein-au.com>, <calvinklein-br.com>, <calvinklein-ca.com>, <calvinklein-ch.com>, <calvinklein-co.com>,

<calvin-kleincostarica.com>, <calvin-kleincz.com>, <calvinklein-de.com>, <calvinkleindenmark.com>,
<calvinkleinecuador.com>, <calvin-kleinegypt.com>, <calvinklein-es.com>, <calvinkleinfinland.com>,
<calvinklein-fr.com>, <calvinklein-gr.com>, <calvinklein-hu.com>, <calvinklein-ie.com>,
<calvin-kleinindonesia.com>, <calvinklein-malaysia.com>, <calvinklein-malta.com>, <calvinklein-mx.com>,
<calvinkleinnederlandonline.com>, <calvinklein-no.com>, <calvinklein-peru.com>, <calvinkleinpoland.com>,
<calvinklein-portugal.com>, <calvinklein-saudiarabia.com>, <calvinklein-se.com>, <calvinklein-sg.com>,
<calvinkleinsit.com>, <calvinklein-sk.com>, <calvinklein-slovenija.com>, <calvinklein-srbija.com>,
<calvinklein-thailand.com>, <calvinklein-turkiye.com>, and <calvinklein-za.com> be transferred to

Complainant.

/Lorelei Ritchie/
Lorelei Ritchie
Sole Panelist
Date: April 22, 2024