national arbitration forum

 

DECISION

 

Calvin Klein Trademark Trust & Calvin Klein, Inc. v. Alan Sleator

Claim Number: FA1403001547828

 

PARTIES

Complainant is Calvin Klein Trademark Trust & Calvin Klein, Inc. (“Complainant”), represented by David S Lipkus of Kestenberg Siegal Lipkus LLP, Ontario, Canada.  Respondent is Alan Sleator (“Respondent”), United Kingdom.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <fuckcalvinklein.com>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

            R. Glen Ayers served as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 10, 2014; the National Arbitration Forum received payment on March 10, 2014.

 

On March 10, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <fuckcalvinklein.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 March 11, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 31, 2014 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@fuckcalvinklein.com.  Also on March 11, 2014, 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, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

A timely Response was received and determined to be complete on March 30, 2014.

 

A timely Additional Submission from Complainant was received and determined to be complete on April 4, 2014.

 

A timely Additional Submission from Respondent was received and determined to be complete on April 7, 2014.

 

On April 9, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed R. Glen Ayers 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

  1. Complainant is engaged in the production sale and licensing of men’s and women’s apparel, fragrances, accessories, and footwear. Complainant owns several domain names, including <calvinklein.com>.
  2. Complainant has rights in the CALVIN KLEIN mark, used in connection with men’s and women’s apparel, fragrances, accessories, and footwear. Complainant owns registrations for the CALVIN KLEIN mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,086,041 registered February 21, 1978) and with the United Kingdom’s Intellectual Property Office (“UKIPO”) (e.g., Reg. No. B1,492,382 registered January 24, 1994).
  3. Respondent’s <fuckcalvinklein.com> is confusingly similar to Complainant’s CALVIN KLEIN mark. The disputed domain name incorporates Complainant’s mark in its entirety while adding the vulgar and generic term “fuck.”
  4. Respondent does not have any rights or legitimate interests in the <fuckcalvinklein.com> domain name.
    1. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its CALVIN KLEIN mark in any way.
    2. The <fuckcalvinklein.com> domain name resolves to a parked page. See  Complainant’s Exhibit R.
  5. Respondent registered and is using the <fuckcalvinklein.com> domain name in bad faith.
    1. Respondent is using the <fuckcalvinklein.com> domain name to disrupt Complainant’s business.
    2. The <fuckcalvinklein.com> domain name resolves to a parked page.

 

  1. Respondent registered and is using the <fuckcalvinklein.com> domain name in bad faith.
    1. Respondent is using the <fuckcalvinklein.com> domain name to disrupt Complainant’s business.
    2. The <fuckcalvinklein.com> domain name resolves to a parked page.

 

B.   Respondent

1.    The <fuckcalvinklein.com> domain name is not confusingly similar to Complainant’s CALVIN KLEIN mark because the message conveyed by the common vulgarity “fuck” in the disputed domain name makes it clear that there is no association with Complainant. Respondent does not believe any consumer could reasonably believe that the best route to finding Complainant’s goods on the Internet is by entering <fuckcalvinklein.com> into a web browser.

2.    Respondent registered the domain name to be used in the future as a protest site within a larger scheme of registering other domain names that include famous trademarks preceded by the word “fuck” so as to create a network of easily identifiable protest sites. However, Respondent admits that he is not yet using the <fuckcalvinklein.com> domain name.  He is only “preserving its potential as a site for the consumer’s voice, while a much better alternative is found.”

3.     Respondent states:

“It is ludicrous to imagine that I am going to triumph in any legal tussle with someone of David’s [counsel for Calvin Klein] caliber. Asked to wager between a highly trained and skilled IP lawyer such as David, and a fat, bald, 58-year-old, semi-retired Parish Councillor who has three unruly children, a Retriever who refuses to retrieve and a permanently aloof cat who has treated us all like servants for the past 16 years, I know precisely where I would place my money. And it wouldn't be on me. …”

4.    Respondent did not register the <fuckcalvinklein.com> domain name in bad faith and is not attempting to obtain monetary gain through the use of the disputed domain name.

 

C.   Complainant’s Additional Submission

  1. The <fuckcalvinklein.com> domain name is confusingly similar to Complainant’s CALVIN KLEIN mark because it incorporates that mark into the domain name, which signals an affiliation with Complainant, an affiliation to which Complainant did not and does not consent.
  2. Respondent’s admission that he does not intend to use the parked <fuckcalvinklein.com> domain name illustrates the fact that Respondent is not using the disputed domain in connection with a bona fide offering of goods or services.
  3. Operating a website containing criticism does not demonstrate rights or legitimate interests.
  4. Respondent stated that he registered the <fuckcalvinklein.com> domain name “before [Complainant] does the same.” By Respondent’s admission, he registered the domain name in order to prevent Complainant from reflecting its CALVIN KLEIN mark in a corresponding domain name.
  5. The <fuckcalvinklein.com> domain name resolves to a parked page featuring unrelated links, such as “onlinebootycall.com,” “casual sex,” “adult affair dating,” and “adult cam sex.”
  6. Even if Respondent purports to use the domain name as a protest or free-speech website, past decisions reveal that it is only the content of a website that may be protected, not the unlicensed use of registered trademarks in the actual domain name.

D.   Respondent’s Additional Submission

  1. Any advertising associated with the <fuckcalvinklein.com> domain name is done without Respondent’s permission, and Respondent does not derive any commercial benefit from the disputed domain name.
  2. Respondent has no intention of competing commercially with Complainant.
  3. Complainant cites to two cases with wholly irreconcilable facts. In both cases the connection between the respondent’s bad faith intents and the complainant’s business was clearer.
  4. Respondent’s only intention in regards to the <fuckcalvinklein.com> domain name is to “preserve this domain name as a potential forum for consumers in the future.”

 

FINDINGS

Respondent asserts that the <fuckcalvinklein.com> domain name is not confusingly similar to Complainant’s CALVIN KLEIN mark because the message conveyed by the vulgarity “fuck” in the disputed domain name makes it clear that there is no association with Complainant.

 

Past panels have found merit in arguments similar to Respondent’s argument here. See KB Home v. RegisterFly.com- Ref# 9323034, FA 506771 (Nat. Arb. Forum Aug. 30, 2005) (finding that the addition of the term “sucks” to the complainant’s KB HOME mark in the <kbhomesucks.com> domain name did not make the domain name confusingly similar to the mark because a reasonable person would not conclude that a person who registers a domain name containing the term “sucks” has any relation to the owner of the mark); see also Lockheed Martin Corp. v. Parisi, D2000-1015 (WIPO Jan. 26, 2001) (finding that common sense and a reading of the plain language of the Policy support the view that a domain name combining a trademark with the word “sucks” or other language clearly indicates that the domain name is not affiliated with the trademark owner and, therefore, <lockheedmartinsucks.com> and <lockheedsucks.com> cannot be considered confusingly similar to LOCKHEED MARTIN).

 

The Panel finds that Respondent’s <fuckcalvinklein.com> domain name is not confusingly similar to Complainant’s CALVIN KLEIN mark under Policy ¶ 4(a)(i), because the term “fuck” provides an indication that Respondent is not affiliated with Complainant and the Internet user entering the domain name could not possibly expect Complainant to be, or desire to be, affiliated with such a domain name.

Because the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), the Panel declines to analyze the other two elements of the Policy.  See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element[s] unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).

 

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

The addition of the graphic vulgarity “fuck” means that the domain name is neither identical to the Calvin Kline mark nor is it confusingly similar.  See, e.g., KB Home v. RegisterFly.com- Ref# 9323034, FA 506771 (Nat. Arb. Forum Aug. 30, 2005).

Because the Complainant has failed to meet the first element of the Policy, ¶4(a)(i), there is no need to examine the other two Policy elements. 

 

Rights or Legitimate Interests

This element is not considered.

 

Registration and Use in Bad Faith

This element is not considered.

 

DECISION

Having failed to  establish the first element required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <fuckcalvinklein.com> domain name REMAIN WITH Respondent.

 

 

R. Glen Ayers, Panelist

Dated:  April 11, 2014

 

 

 

 

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