Calvin Klein Trademark Trust & Calvin Klein, Inc. v. zenggongyong / gongyong zeng
Claim Number: FA1309001518731
Complainant is Calvin Klein Trademark Trust & Calvin Klein, Inc. (“Complainant”), represented by David S Lipkus of Kestenberg Siegal Lipkus LLP, Canada. Respondent is zenggongyong (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <calvinkleincom.com>, registered with Hang Zhou E-Business Services Co. Ltd., and <calvinkleinbaratos.com>, registered with Jiangsu Bangning Science & Technology Co. Ltd.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 10, 2013; the National Arbitration Forum received payment on September 10, 2013. The Complainant was submitted in both English and Chinese.
On September 10, 2013, Hang Zhou E-Business Services Co. Ltd. confirmed by e-mail to the National Arbitration Forum that the <calvinkleincom.com> domain name is registered with Hang Zhou E-Business Services Co. Ltd. and that Respondent is the current registrant of the name. Hang Zhou E-Business Services Co. Ltd. has verified that Respondent is bound by the Hang Zhou E-Business Services Co. Ltd. registration agreement 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 September 10, 2013, Jiangsu Bangning Science & Technology Co. Ltd. confirmed by e-mail to the National Arbitration Forum that the <calvinkleinbaratos.com> domain name is registered with Jiangsu Bangning Science & Technology Co. Ltd. and that Respondent is the current registrant of the name. Jiangsu Bangning Science & Technology Co. Ltd. has verified that Respondent is bound by the Jiangsu Bangning Science & Technology Co. Ltd. registration agreement 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 September 12, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of October 2, 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@calvinkleincom.com, postmaster@calvinkleinbaratos.com. Also on September 12, 2013, the Chinese language 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 October 8, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
a) Calvin Klein Trademark Trust is the registered owner of the CALVIN KLEIN mark that is the subject matter of this UDRP proceeding. Calvin Klein Inc. is the beneficial owner of the CALVIN KLEIN mark and a licensee of Calvin Klein Trademark Trust for a variety of merchandise. For the purposes of this dispute, Complainants should be considered collectively.
b) Complainant is the owner of the CALVIN KLEIN mark, which it uses in connection with the production, sale, and licensing of apparel, fragrances, accessories, and footwear. Complainant has since registered its CALVIN KLEIN mark (Reg. No. 1,086,041 registered Feb. 21, 1978) with the United States Patent and Trademark Office (“USPTO”). See Complainant’s Annex D.
c) The <calvinkleincom.com> and <calvinkleinbaratos.com> domain names are confusingly similar to the CALVIN KLEIN mark. The additions of the generic terms “com” and “baratos,” the Spanish word for “cheap,” do not sufficiently distinguish the domain names from Complainant’s mark. Further, the addition of the generic top-level domain (“gTLD”) “.com” fails to create a meaningful distinction between the <calvinkleincom.com> and <calvinkleinbaratos.com> domain names and the CALVIN KLEIN mark.
d) Respondent is not commonly known by the disputed domain names. Respondent is identified in the WHOIS records for the disputed domain names as “zenggongyong” or “gongyong zeng.”
e) Respondent uses the <calvinkleincom.com> and <calvinkleinbaratos.com> domain names to offer counterfeit goods bearing Complainant’s mark, such as underwear.
f) Respondent is diverting Complainant’s customers or potential customers seeking information about Complainant to the website to which Respondent’s domain names resolve.
g) Respondent’s registration and use of the <calvinkleincom.com> and <calvinkleinbaratos.com> domain names was done solely for the purpose of taking advantage of Complainant’s famous mark. Respondent presumably obtains commercial benefits through the sale of counterfeit products bearing Complainant’s CALVIN KLEIN mark.
h) Respondent’s addition of the term “com” to the CALVIN KLEIN mark in the <calvinkleincom.com> domain name was calculated to capitalize off of the inevitable mistake that some Internet users will make, forgetting to include the period before “com” when they intend to include it as a gTLD.
i) Given the fame of Complainant’s mark and the fact that Respondent is using the disputed domain names to sell counterfeit versions of Complainant’s products, it is clear that Respondent had knowledge of Complainant’s rights in the CALVIN KLEIN mark at the time Respondent registered the <calvinkleincom.com> and <calvinkleinbaratos.com> domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a prominent United States company engaged in the production, sale, and licensing of apparel, fragrances, accessories, and footwear.
2. Complainant is the owner of the CALVIN KLEIN mark, which it uses in connection with the production, sale, and licensing of its apparel, fragrances, accessories, and footwear and it has registered the mark (Reg. No. 1,086,041 registered Feb. 21, 1978) with the United States Patent and Trademark Office (“USPTO”).
3. Respondent has registered the <calvinkleincom.com> on or about November 19, 2011 and the <calvinkleinbaratos.com> domain name on or about July 18, 2012.
4. Respondent uses the <calvinkleincom.com> and <calvinkleinbaratos.com> domain names to offer counterfeit goods bearing Complainant’s mark and
is diverting Complainant’s customers seeking information about Complainant to the website to which Respondent’s domain names resolve.
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 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 Calvin Klein, Inc. Calvin Klein Trademark Trust is the registered owner of the CALVIN KLEIN mark that is the subject matter of this UDRP proceeding. Calvin Klein Inc. is the beneficial owner of the CALVIN KLEIN mark and a 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 (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 Srvs. 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.”).
As the Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, it will treat them both as a single entity in this proceeding. Accordingly, throughout this decision, the Complainants will be collectively referred to as “Complainant.”
Language of the Proceedings
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
The first question that arises is whether Complainant has rights in a trademark or service mark on which it can rely. Complainant contends that it is the owner of the CALVIN KLEIN mark, which it uses in connection with the production, sale, and licensing of apparel, fragrances, accessories, and footwear. Complainant demonstrates that it has since registered its CALVIN KLEIN mark (Reg. No. 1,086,041 registered Feb. 21, 1978) with the USPTO. See Complainant’s Annex D. The panel in Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002), found that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations. Further, the panel in Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007), held that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence. Therefore, the Panel finds that Complainant has rights in the CALVIN KLEIN mark under Policy ¶ 4(a)(i).
The second question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s CALVIN KLEIN mark. Complainant asserts that the <calvinkleincom.com> and <calvinkleinbaratos.com> domain names are confusingly similar to the CALVIN KLEIN mark. Complainant has submitted that the additions of the generic words “com” and “baratos,” the latter being the Spanish word for “cheap,” do not sufficiently distinguish the domain names from Complainant’s mark. Further, Complainant argues that the addition of the gTLD “.com” fails to create a meaningful distinction between the <calvinkleincom.com> and <calvinkleinbaratos.com> domain names and the CALVIN KLEIN mark. In Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004), the panel found that the respondent’s domain name was confusingly similar to the complainant’s mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i). In Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007), the panel concluded that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis. Therefore, the Panel finds that the <calvinkleincom.com> and <calvinkleinbaratos.com> domain names are confusingly similar to the CALVIN KLEIN mark pursuant to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s CALVIN KLEIN mark and to use it in its domain names, merely adding the word “com” in one case and the word “baratos”, being the Spanish word for “ cheap” in the other case, thus implying that the domain names are official domain names of Complainant and that they will lead to official websites of Complainant, neither of which is true;
(b) Respondent is using the disputed domain names to offer counterfeit goods bearing Complainant’s mark and to divert Complainant’s customers seeking information about Complainant to the website to which Respondent’s domain names resolve;
(c)Respondent has engaged in these activities without the consent or
approval of Complainant;
(d)Complainant asserts that Respondent is not commonly known by the disputed domain names. Complainant notes that Respondent is identified in the WHOIS records for the disputed domain names as “zenggongyong” or “gongyong zeng.” The panel in M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), found that the respondent was not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record. Therefore, the Panel finds that Respondent is not commonly known by the <calvinkleincom.com> and <calvinkleinbaratos.com> domain names under Policy ¶ 4(c)(ii);
(e) Complainant contends that Respondent uses the <calvinkleincom.com> and <calvinkleinbaratos.com> domain names to offer counterfeit goods bearing Complainant’s mark, such as underwear. In C. & J. Clark Int’l Ltd. v. Shanhua, FA 1388854 (Nat. Arb. Forum June 17, 2011), the panel determined that a respondent’s use of a confusingly similar domain name to sell counterfeit products is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Accordingly, the Panel finds that Respondent’s use of the <calvinkleincom.com> and <calvinkleinbaratos.com> domain names to sell counterfeit CALVIN KLEIN products is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). The Panel thus finds that Respondent does not have rights or legitimate interests in the domain names.
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant asserts that Respondent registered and is using the <calvinkleincom.com> and <calvinkleinbaratos.com> domain names in bad faith. According to Complainant, Respondent is diverting Complainant’s customers or potential customers seeking information about Complainant to the websites to which Respondent’s domain names resolve by having registered confusingly similar domain names and using them to sell counterfeit CALVIN KLEIN merchandise. Panels have found that the sale of counterfeit goods disrupts the complainant’s business. See Brainetics, LLC v. Zhang, FA 1389740 (Nat. Arb. Forum June 22, 2011) (“The Panel finds that respondent’s use of the disputed domain name to sell counterfeit versions of Complainant’s products constitutes bad faith registration and use under Policy ¶ 4(b)(iii).”). Therefore, the Panel finds that Respondent’s registration and use of the <calvinkleincom.com> and <calvinkleinbaratos.com> domain names is a product of bad faith under Policy ¶ 4(b)(iii).
Secondly, Complainant submits that Respondent’s registration and use of the <calvinkleincom.com> and <calvinkleinbaratos.com> domain names was done solely for the purpose of taking advantage of Complainant’s famous mark. Complainant presumes that Respondent obtains commercial benefits through the sale of counterfeit products bearing Complainant’s CALVIN KLEIN mark. The Panel finds that Respondent registered and is using the <calvinkleincom.com> and <calvinkleinbaratos.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iv) as it determines that Respondent’s actions were calculated to take commercial advantage of Internet users’ mistakes as a result of the creation of a likelihood of confusion as to association between the disputed domain names and Complainant. See C. & J. Clark Int’l Ltd. v. Shanhua, FA 1388854 (Nat. Arb. Forum June 17, 2011) (finding the respondent to have registered and used the disputed domain name in bad faith by selling counterfeit products and capitalizing on the likelihood that Internet users may find a respondent’s website whilst searching for the complainant’s website, become confused as to the affiliation with or sponsorship of the disputed domain name to the complainant, and purchase goods through the disputed domain name rather than through the complainant).
Thirdly, Complainant argues that Respondent’s addition of the term “com” to the CALVIN KLEIN mark in the <calvinkleincom.com> domain name represents an attempt to capitalize off the inevitable mistake that some Internet users will make in forgetting to include the period before “com” when they intend to include it as a gTLD. Panels have held typosquatting to evince bad faith where a domain name takes advantage of mistypings by Internet users. See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.). Therefore, the Panel finds that Respondent registered the <calvinkleincom.com> domain name in bad faith under Policy ¶ 4(a)(iii).
Fourthly, Complainant asserts that, given the fame of Complainant’s mark and the fact that Respondent is using the disputed domain names to sell counterfeit versions of Complainant’s products, it is clear that Respondent had knowledge of Complainant’s rights in the CALVIN KLEIN mark at the time Respondent registered the <calvinkleincom.com> and <calvinkleinbaratos.com> domain names. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Fifthly, in addition and having regard to the totality of the evidence, the Panel
finds that, in view of Respondent’s registration of the disputed domain names using the mark and in view of the conduct that Respondent has engaged in when using them, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <calvinkleincom.com> and <calvinkleinbaratos.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 10, 2013
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