Calvin Klein Trademark Trust & Warnaco Inc. v. Jade Wai, John Neil, Berth Jonny, John Adams and Hafida Ketrouci
Claim Number: FA1303001490228
Complainant is Calvin Klein Trademark Trust & Warnaco Inc. (“Complainant”), represented by David S Lipkus of Kestenberg Siegal Lipkus LLP, Ontario, Canada. Respondent is Jade Wai of China, John Neil of Australia, Berth Jonny of Pennsylvania, USA, John Adams of Iowa, USA, and Hafida Ketrouci of France (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cku-uk.com>, <ckusale.com>, and <ckuunderwearllc.com>, registered with Name.com LLC and <ukcalvinklein.com>, <ukckstore.com>, <aucku.com>, <ck-australia.com>, <ckunderwear365.com>, <ukckoutlet.com>, and <ukcku.com>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 15, 2013; the National Arbitration Forum received payment on March 15, 2013.
On March 15, 2013, Name.com LLC confirmed by e-mail to the National Arbitration Forum that the <cku-uk.com>, <ckusale.com>, <ckuunderwearllc.com> domain names are registered with Name.com LLC and that Respondent is the current registrant of the names. On March 18, 2013, GoDaddy.com, LLC, confirmed by e-mail to the National Arbitration Forum that the <ukcalvinklein.com>, <ukckstore.com>, <aucku.com>, <ck-australia.com>, <ckunderwear365.com>,<ukckoutlet.com>, and <ukcku.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC and Name.com LLC have verified that Respondent is bound by the respective GoDaddy.com and LLC, Name.com LLC 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 March 19, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 8, 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@cku-uk.com, postmaster@ukcalvinklein.com, postmaster@ukckstore.com, postmaster@aucku.com, postmaster@ck-australia.com, postmaster@ckunderwear365.com, postmaster@ckusale.com, postmaster@ckuunderwearllc.com, postmaster@ukckoutlet.com, and postmaster@ukcku.com. Also on March 19, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 16, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
The Complainant in this administrative proceeding is the CALVIN KLEIN TRADEMARK TRUST, a Business Trust organized under the laws of Delaware, whose principal place of business is 1100 North Market Street, c/o Wilmington Trust Company, Rodney Square North, Wilmington, Delaware 19890 and WARNACO INC., a corporation organized under the laws of Delaware, whose principal place of business is 501 Seventh Avenue, New York, New York 10018. CALVIN KLEIN TRADEMARK TRUST is the registered owner of the Calvin Klein trade-marks that are the subject matter of this UDRP proceeding. WARNACO INC. is the beneficial owner of the trade-marks owned by CALVIN KLEIN TRADEMARK TRUST and exclusive licensee of CALVIN KLEIN TRADEMARK TRUST for men’s underwear and intimate apparel and men’s and women’s loungewear. Calvin Klein Trademark Trust and Warnaco Inc. shall be collectively referred to herein as the “Complainant”.
The Complainants respectfully submit that the multiple respondents are in fact one Respondent, using fake registration information. The Complainant respectfully submits:
1) All of the domain names resolve to the same type of web site, namely, selling counterfeit underwear bearing the Complainant’s marks. Specifically, all the web sites are nearly identical. The Complainant’s marks are contained in the upper left-hand portion of the web site, each web site has the same reference and images relating to their satisfaction guarantee, free delivery and 128 bit SSL encryption.
2) A reverse search of the IP addresses indicate shared IP addresses for each of the following sites:
a. 89.248.169.11 - Cku-uk.com, ck-australia.com www.ckunderwearllc.com and ukcku.com;
b. 89.248.161.5 – ukcalvinklein.com and ckunderwear365.com; and
c. 89.248.169.12 - ukckstore.com, aucku.com, ukckoutlet.com and ckusale.com
3) All of the disputed domain names were registered around the same time – see paragraph 7 below.
4) All of the domains are hosted by the same Internet Service Provider – namely – ecatel, located at President Kennedylaan 19, 2517 JK The Hague , Netherlands; and
5) A cease and desist letter was delivered to each of the e-mail addresses associated with the registrant and ISP, and no response was received.
A. Background
Complainant’s Trademark Rights in CK, CKU and CALVIN KLEIN
Calvin Klein Trademark Trust and Warnaco, Inc. shall hereinafter collectively be referred to as “Complainant.” The Complainant has been engaged in the production, sale and licensing of men’s and women’s underwear and loungewear and women’s intimate apparel, all in association with one or more of the Calvin Klein Intellectual Properties. Since its formation, the Complainant has used and registered several of its marks in the United States and throughout the world.
Specifically in the United States, Complainant has used its CALVIN KLEIN, CKU and/or CK trade-mark since as early as 1968. As a result of its long-standing use, Complainant owns common law trademark rights in its CALVIN KLEIN, CKU and CK trade-marks. Complainant has acquired these rights through continuous, extensive and exclusive use of the mark for over thirty years. As a result of such use, customers in the United States and worldwide have come to associate the CALVIN KLEIN, CKU and CK mark with Complainant’s high quality products. Accordingly, Complainant has developed considerable goodwill in the CALVIN KLEIN, CKU and CK marks.
In addition to Complainant’s common law rights, Complainant owns numerous United States Trademark Registrations for its CALVIN KLEIN, CKU and CK marks in connection with underwear and other merchandise. These trademark registrations are as follows[1]:
<<image redacted>>
CK (stylized)
Reg. No. 2,064,064
Registered May 20, 1997
CKU
Reg. No. 3,617,591
Registered May 5, 2009
<<image redacted>>
CALVIN KLEIN (stylized)
Reg. No. 1,633,261
Registered January 29, 1991
CALVIN KLEIN
Reg. No. 1,086,041
Registered February 21, 1978
A federal trademark registration is prima facie evidence of the validity of the registered mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark. See Annex C (15 U.S.C. § 1115; McCarthy on Trademarks and Unfair Competition (hereinafter “McCarthy”) (4th ed.), § 19:9). The Complainant’s registrations were secured well before the Respondent registered its disputed domain names in 2012.
Complainant also owns a number of domain name registrations which wholly incorporate Complainant’s CK, CKU and CALVIN KLEIN marks, including: (1) calvinklein.com, (2) ck.com and, (3) calvinkleinunderwear.com, and (4) cku.com. Since their registration, Complainant has used and continues to use these domain names in connection with its various websites, which provide information about Complainant and its products and services as well as offer its products for sale. Complainant’s referenced domain names have been registered and in use since long before Respondent’s registration of the disputed domain names in 2012.
Complainant’s Advertising and Promotion of the CK, CKU and CALVIN KLEIN Marks
Complainant has used the CK mark continuously since at least as early as 1996 in connection with the advertising, offering for sale, and sale of its various products in the United States and elsewhere. Complainant’s use of the CK, CKU and CALVIN KLEIN trademarks have resulted in millions of customers worldwide and billions of dollars in sales. These numbers clearly speak volumes regarding the commercial strength of the CK and CALVIN KLEIN trademark, which has been used prominently, continuously and substantially exclusively in connection with Complainant.
The CK, CKU and CALVIN KLEIN marks are well known and famous and has been for many years. Over these years, Complainant has expended millions of dollars in advertising and promoting its products under its CK and CALVIN KLEIN trademark in a variety of media throughout the world, including print, television, and radio advertisements.
Complainant has also advertised its CK, CKU and CALVIN KLEIN mark through direct mail and on the Internet, including on the website(s) associated with its domain name(s) referenced above. Such advertising reaches a vast range of consumers: by way of example, since Complainant’s www.ck.com website first launched in 1994, it has received hundreds of millions of visitors seeking information about Complainant’s CK and CALVIN KLEIN products.
Complainant’s CALVIN KLEIN, CKU and CK products are sold exclusively through Complainant’s own retail stores, outlet stores and websites including www.cku.com and, through Authorized Dealers. Authorized Dealers include national specialty stores, such as Neiman Marcus, Saks Fifth Avenue and Bergdorf Goodman.
Through Complainant’s extensive promotional efforts, advertising expenditures and sponsorship activities, Complainant has been successful in educating the public to associate the CK, CKU and Calvin Klein trademark with Complainant’s products since long before 2012, when Respondent(s) registered the disputed domain names.
UDRP Rule 3(b)(viii).
B. Respondent’s Domain Name is Confusingly Similar to Complainant’s Mark
The trademarks on which this Complaint is based is CK, CKU and CALVIN KLEIN. Complainant’s numerous federal trademark registrations and widespread use, advertising, and promotion of the CK, CKU and CALVIN KLEIN marks since 1968 (and 1996 for the CK mark) sufficiently establish rights in the mark pursuant to UDRP ¶4(a)(i). (Mary’s Futons, Inc. v. Texas Int’l Prop. Assoc., NA NA, FA0706001012059 (Nat. Arb. Forum, Aug. 13, 2007)); see also Expedia, Inc. v. Tan, FA070500991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶4(a)(i).”); see also Paisley Park Enters. v. Lawson, FA0412000384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶4(a)(i) through registration of the mark with the USPTO); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA07030000932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Respondent’s domain names <cku-uk.com>, <ukcalvinklein.com>, <ukckstore.com>, <aucku.com>, <ck-australia.com>, <ckunderwear365.com>, <ckusale.com>, <ckuunderwearllc.com>, <ukckoutlet.com> and <ukcku.com> incorporates Complainant’s CK, CKU and/or CALVIN KLEIN trademark in its entirety. The addition of the generic terms “uk”, “store”, “au”, “australia”, “underwear”, “sale”, “llc” and “outlet” does not sufficiently distinguish the domain name from Complaint’s mark. See, e.g., Annex G (Juicy Couture, Inc. v. Wang Kunkun et al., FA1005001323092 (Nat. Arb. Forum, June 18, 2010) (finding the addition of the generic term “my” to create the domain name “myjuocycouture.com” insufficient to defeat confusing similiarity)). Further the addition of a generic top level domain such as “.com” fails to distinguish the domain from the mark pursuant to UDRP ¶4(a)(i). (American Airlines, Inc. v. Texas Int’l Prop. Assoc., FA 07020000914854 (Nat. Arb. Forum, April 10, 2007)). Accordingly, Respondent’s domain name is confusingly similar to Complainant’s mark.
C. Respondent Has No Rights or Legitimate Interests in the Disputed Domain Names
Complainant’s first use and first registration of its CK, CKU and CALVIN KLEIN mark predate any use Respondent may have made of <cku-uk.com>, <ukcalvinklein.com>, <ukckstore.com>, <aucku.com>, <ck-australia.com>, <ckunderwear365.com>, <ckusale.com>, <ckuunderwearllc.com>, <ukckoutlet.com> and <ukcku.com> as trade names, domain names, marks, or common names. Respondent’s domains was registered in 2012, more than thirty years after Complainant first used its marks. Additionally, Complainant registered the domain names and began operating its websites at calvinklein.com, cku.com and ck.com, several years before Respondent registered the domain names in dispute in this case. The Respondent was aware of Complainant’s domain names and websites associated with the same before it registered the disputed domain names because Complainant’s sites were operational, and thus easily accessible to Respondent, at the time Respondent registered the disputed domain names. Because Complainant’s federal registrations and common law use predate Respondent’s domain name registration, and because the Respondent is charged with constructive knowledge of Complainant’s CK, CKU and CALVIN KLEIN trademark registrations, Respondent has no proprietary rights, or legitimate interests, in the disputed domain names.
In addition, Complainant’s CK, CKU and CALVIN KLEIN marks are well-known and famous and has been for many years. Respondent registration of a domain name wholly incorporating a famous mark is not supported by legitimate interests. See, e.g., (Hewlett Packard Co. v. Inversiones HP Milenium C.A., FA0203000105775 (Nat. Arb. Forum, Apr. 12, 2002) (“Furthermore, based on the fame of Complainant’s HP mark it would be very difficult for Respondent to show that it had rights and legitimate interests in the disputed domain name. Any use by Respondent of the <hpmilenium.com> domain name, confusingly similar to the Complainant’s mark…for its own commercial gain…”)).
Respondent also has no proprietary rights or legitimate interest in “cku uk”, “uk calvin klein”, “uk ck store”, “au cku”, “ck australia”, ck underwear 365”, “cku sale”, “ck underwear llc”, “uk ck outlet” and/or “uk cku” or the disputed domain names because there Respondent is not using or preparing to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. A review of the websites to which Respondent’s domain names resolve reveals that it prominently displays the CALVIN KLEIN trademark, and is selling counterfeit underwear bearing the Complainant’s marks. Complainant has not authorized or licensed Respondent to manufacture, sell or offer for sale such underwear, through the disputed domain names.
Respondent’s use of the disputed domain names to sell counterfeit products bearing Complainant’s marks does not constitute a bona fide offering of goods. See, e.g., (Juicy Couture, Inc.) (where Respondent’s website prominently displayed Complaint’s trademarks and offered “mirror images” of Complainant’s products, the panel found: “Respondent’s use of the <myjuicycouture.com> and <juiceycouturebuy.com> domain names to offer counterfeit versions of Complainant’s products does not constitute a bona fide offering of goods or services under Policy P 4(c)(i) or a legitimate noncommercial or fair use under Policy P 4(c)(iii).”); see also (Hewlett-Packard Co.) (“Respondent’s use of a confusingly similar domain to sell counterfeit versions of Complainant’s products is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i).”).
Respondent has no proprietary rights or legitimate interest in “cku uk”, “uk calvin klein”, “uk ck store”, “au cku”, “ck australia”, ck underwear 365”, “cku sale”, “ck underwear llc”, “uk ck outlet” and/or “uk cku” or the <cku-uk.com>, <ukcalvinklein.com>, <ukckstore.com>, <aucku.com>, <ck-australia.com>, <ckunderwear365.com>, <ckusale.com>, <ckuunderwearllc.com>, <ukckoutlet.com> and <ukcku.com> domain names because Respondent is not commonly known by that name. (Skyhawke Techs., LLC v. Texas Int’l Prop. Assoc., FA0705000977213 (Nat. Arb. Forum, June 21, 2007), citing Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969, (Nat. Arb. Forum, Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent…is not commonly known by the name ‘welsfargo’ in any derivation”)); see also (ACE Ltd. v. Texas Int’l Prop. Assoc., FA0707001045124 (Nat. Arb. Forum, Sept. 18, 2007) (finding that Respondent is not commonly known by the disputed domain name and accepting evidence that WHOIS information identifies respondent as “Texas International Property Associates”). In this case, WHOIS information identifies the Respondent through the use of various fictitious names, demonstrating that Respondent is not commonly known by the names “cku uk”, “uk calvin klein”, “uk ck store”, “au cku”, “ck australia”, ck underwear 365”, “cku sale”, “ck underwear llc”, “uk ck outlet” and/or “uk cku”. Further, Complainant has not authorized or licensed Respondent to use or register a domain name which incorporates Complainant’s CKU, CK or CALVIN KLEIN marks. See Annex A, ¶24-25; see also Annex M (adidas AG and adidas Am, Inc. v. Texas Int’l Prop. Assoc. – NA NA, FA1005001322490 (Nat. Arb. Forum June 8, 2010), citing Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent was not commonly known by the domain name in part based upon the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name)).
For the reasons discussed herein, Respondent has no rights or legitimate interests in the disputed domain name.
D. Respondent Registered and Is Using the Disputed Domain Names in Bad Faith
Respondent registered and is using the disputed domains in bad faith based on the following facts. Respondent is diverting Complainant’s customers or potential customers seeking information about Complainant to the website which Respondent’s domain name resolves, where Respondent presumably obtains commercial benefits through the sale of counterfeit products bearing Complainant’s marks. This constitutes registration and use in bad faith. (Hewlett-Packard Co.) (“Respondent registered the disputed domain name in order to sell counterfeit versions of Complainant’s products. Therefore, Respondent registered <hpmilenium.com> in order to create a likelihood of confusion as to the source, sponsorship, and affiliation of its domain name and products. This type of behavior is in bad faith pursuant to Policy ¶4(b)(iv).”); see also (Juicy Couture, Inc.) (“The Panel finds this use of the disputed domain names disrupts Complainant’s business and constitutes registration and use in bad faith pursuant to Policy ¶4(b)(iii).
Given the fame of Complaints CK, CKU and CALVIN KLEIN marks and the fact that Respondent is using the domain name to sell counterfeit versions of Complaint’s products, it is clear that Respondent had knowledge of the CK, CKU and CALVIN KLEIN marks when it registered the domain name. (Hewlett-Packard Co.) (“The registration of an infringing domain name despite actual notice is evidence of bad fiath.”); see also Annex N (Victoria’s Secret et al. v. Sherry Hardin, FA0102000096694 (Nat. Arb. Forum, Mar 31, 2001) (“In light of the notoriety of Complainant’s famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name Registration with actual or constructive knowledge of Complainant’s marks is evidence of bad faith.”).
For the above reasons, Respondent’s registration and use of the domain disputed domain names is in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(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.”).
Preliminary Issue: Multiple Complainants
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any 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.”
There are two Complainants in this matter: Calvin Klein Trademark Trust and Warnaco Inc. Complainant claims the Calvin Klein Trademark Trust (“the Trust”) is a business trust organized under the laws of Delaware, with a principal place of business in Delaware. Warnaco Inc. (“the Corporation”) is a corporation organized under the laws of Delaware, with a principal place of business in New York. The Trust is the registered owner of the trademarks in this dispute, while the Corporation is the beneficial owner of the marks and the exclusive licensee of the Trust for men’s underwear, intimate apparel, and men’s and women’s loungewear (in effect a beneficial owner of the marks).
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 (Nat. Arb. 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 (Nat. Arb. 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 Servs. Group, LLC v. Logan, FA 220049 (Nat. Arb. 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. But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
Complainant sufficiently established a nexus or link between the Complainants and the Panel will treat them all as a single entity in this proceeding because they are both indispensable parties for the purposes of this proceeding.
Preliminary Issue: Multiple Respondents
Complainant claims the entities which control the domain names at issue are the same unknown person, who is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant claims all of the listed registrants are fictitious names, and that Respondent is one anonymous person, unknown to Complainant. Complainant notes all of the domain names resolve to similar websites selling counterfeit underwear sold by Complainant. All of the domain names list the same Internet Service Provider—“ecatel.” All of the domain names share three IP addresses. All of the disputed domain names were registered about the same time.
Complainant has presented sufficient evidence to make a prima facie case the disputed domain names are controlled by the same entity and this Panel chooses to proceed with the instant proceedings.
Complainant uses its CALVIN KLEIN, CKU, and CK trademarks for the sale of apparel. Complainant has rights in its marks by virtue of its United States Patent & Trademark Office (“USPTO”) registrations for the marks. See CKU (Reg. No. 3,617,591 registered on May 5, 2009; CALVIN KLEIN (Reg. No. 1,086,041 registered on Feb. 21, 1978); CK (Reg. No. 2,064,064 registered on May 20, 1997). Complainant’s federal trademark registrations are prima facie evidence of the validity of the registered marks. The Panel finds Complainant has rights in the marks under Policy ¶4(a)(i), regardless of where Respondent may be located. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (Stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant claims Respondent’s domain names are all confusingly similar to Complainant’s marks. All of the domain names incorporate the entirety of one of Complainant’s marks, along with various generic terms. The addition of a gTLD (or ccTLD) does not adequately distinguish a domain name from a mark because a gTLD or ccTLD is required for all domain names.
The CKU mark and the <cku-uk.com>, <aucku.com>, <ckusale.com>, <ckuunderwearllc.com>, and <ukcku.com> domain names contain generic terms such as “llc,” descriptive terms such as “underwear,” and geographic terms, in addition to the gTLD “.com.” The geographic descriptors such as “uk” and “au” do qdequatly distinguish the disputed domain names from the Complainant’s marks. See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”). The generic term “llc” likewise does not adequately distinguish the disputed domain name from Complainant’s marks. See Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity). The descriptive term “underwear” increases the confusing similarity of the <ckuunderwearllc.com> domain name, because the term refers to a specific type of product sold by Complainant. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶4(a)(i) because the appended term related directly to the complainant’s business). The <cku-uk.com>, <aucku.com>, <ckusale.com>, <ckuunderwearllc.com>, and <ukcku.com> domain names are confusingly similar to the CKU mark under Policy ¶4(a)(i).
The <ukckstore.com>, <ck-australia.com>, <ckunderwear365.com>, and<ukckoutlet.com> domain names’ geographic descriptors such as “uk” and “australia” (which is admittedly misspelled) do nothing but create confusing similarity. See Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that the respondent’s domain name <net2phone-europe.com> is confusingly similar to the complainant’s mark because “the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar"). The generic and descriptive terms such as “underwear,” “outlet,” “store,” and “365” do nothing to distinguish these domain names from the CK mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the mark of the complainant combined with a generic word or term); Nokia Corp. v. Franklin, FA 104592 (Nat. Arb. Forum Mar. 22, 2002) ([T]he addition of a random numeral such as "1" does not create a distinct mark capable of overcoming a claim of confusing similarity.); Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶4(a)(i) because the appended term related directly to the complainant’s business). The <ukckstore.com>, <ck-australia.com>, <ckunderwear365.com>, and<ukckoutlet.com> domain names are confusingly similar to the CK mark under Policy ¶4(a)(i).
The CALVIN KLEIN mark and the <ukcalvinklein.com> domain name are confusingly similar even though the geographic description “uk” was added. See Am. Online, Inc. v. Oxford Univ., FA 114654 (Nat. Arb. Forum Aug. 21, 2002) (“Neither the addition of an ordinary descriptive word nor a geographic qualifier transform Respondent’s domain name into separate and distinct marks for the purpose of a Policy ¶4(a)(i) analysis.”).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent is not commonly known by any of the disputed domain names and the WHOIS information confirms this even though it contains a variety of fictitious names. Complainant has not authorized or permitted Respondent to use Complainant’s marks in domain names. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶4(c)(ii) does not apply).
Complainant claims Respondent is not making a bona fide offering of goods and services. Respondent is using all of the disputed domain names to host websites that sell counterfeit underwear bearing Complainant’s marks. Complainant provided evidence of all of the disputed domain names, showing that each of them resolves to a website using Complainant’s marks and logos to sell counterfeit goods. The Panel concludes Respondent is making neither a Policy ¶4(c)(i) bona fide offering of goods or services, nor a Policy ¶4(c)(iii) legitimate noncommercial or fair use of the disputed domain names because it is selling counterfeit goods. See eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered the domain names with the intent to confuse Internet users into believing Complainant and its marks are affiliated with the content on the disputed domain names. Respondent sells counterfeit products on the disputed domain names, liberally using Complainant’s marks. Respondent’s actions to attract Internet users to a website in hopes of selling the counterfeit goods under the pretense that they are buying from Complainant is both bad faith use and registration under Policy ¶4(b)(iv). See H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion).
Complainant argues Respondent has actual knowledge of Complainant’s rights in the mark, as evidenced by Respondent’s decision to use these domain names to sell counterfeits of Complainant’s products. It seems obvious Respondent must have known about Complainant and its marks…otherwise Respondent would not be selling counterfeits of Complainant’s products. The Panel finds Respondent registered the disputed domain names in bad faith under Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <cku-uk.com>, <ukcalvinklein.com>, <ukckstore.com>, <aucku.com>, <ck-australia.com>, <ckunderwear365.com>, <ckusale.com>, <ckuunderwearllc.com>, <ukckoutlet.com>, and <ukcku.com> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, May 2, 2013
[1] Complainant is either the original owner or the current owner of said registrations. See Annex A, ¶6.
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