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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Calvin Klein Trademark Trust and Calvin Klein, Inc. v. Cologne Zone
Case No. D2001-1039
1. The Parties
The Complainants are Calvin Klein Trademark Trust, a trust company incorporated under the laws of the State of Delaware, having its principal place of business at 1100 North Market Street, c/o Wilmington Trust Company, Rodney Square North, Wilmington, Delaware, and Calvin Klein, Inc., a corporation incorporated under the laws of the State of New York, having its principal place of business at 205 West 39th Street, New York, New York 10018, U.S.A.
The Respondent is Cologne Zone, located at 3303 NE 166th Street, North Miami Beach, Florida 33160, U.S.A.
2. The Domain Names and Registrar
The domain names at issue are <calvinkleinperfumes.com> and <calvinkleinperfumes.net> (referred to herein as the "domain names") registered with Internet Domain Registrars, San Francisco, California, U.S.A.
3. Procedural History
A Complaint dated August 16, 2001, was received by the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") in hard copy on August 21, 2001, and by e-mail on August 16, 2001, as stated in the Center’s September 5, 2001, Notification of Complaint and Commencement of Administrative Proceeding dated September 5, 2001, ("Commencement Notification"). On August 31, 2001, the Registrar confirmed receipt of the Complaint and registration of the domain name through the Registrar. The Registrar indicated that Cologne Zone was the current registrant. The September 5, 2001, Commencement Notification was sent by the Center to Respondent (by e-mail) and to the Registrar as Technical and Zone Contact for Respondent (by post/courier) with a copy to Complainant (by e-mail).
The Commencement Notification stated that in accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999, ("Rules") and Paragraph 5 of the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy, in effect as of December 1, 1999 ("Supplemental Rules"), the Center verified that the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 ("Policy"), Rules and Supplemental Rules. The Commencement Notification further stated that payment in the required amount was made by the Complainant to the Center. The Commencement Notification set the deadline for responding to the Complaint at September 25, 2001.
Having reviewed the communications records in the case file, the Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."
On September 27, 2001, having received no Response from Respondent, the Center transmitted to the parties a Notification of Respondent Default using the same methods as those used for the Commencement Notification. No Response or other document has been received by the Center from Respondent since the Notification of Default.
The Administrative Panel finds that Respondent received notice of the Complaint and failed to submit a Response as required by Paragraph 5 of the Rules. Accordingly, Respondent is in default and pursuant to Paragraph 14(a) of the Rules, the Administrative Panel shall proceed to a decision based on the allegations in the Complaint, the Rules and the Supplemental Rules, and shall draw such inferences as it considers appropriate.
In view of Complainant’s designation of a single panelist, on October 3, 2001, the Center invited Carol Anne Been to serve as a panelist in Case No. D2001-1039, and transmitted to her a Statement of Acceptance and Request for Declaration of Impartiality and Independence. The Center received Ms. Been’s Statement of Acceptance and Declaration of Impartiality and Independence on October 9, 2001. On October 11, 2001, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Ms. Been was formally appointed as the Panelist. The Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.
In the Notification of Appointment of Administrative Panel, the Projected Decision Date was set for October 25, 2001. The Transmission of Case File to Administrative Panel, dated October 11, 2001, set the Projected Decision Date as October 25, 2001.
4. Factual Background
The facts as presented in the Complaint are as follows, Complainants, Calvin Klein Trademark Trust and Calvin Klein, Inc., own over fifty trademark registrations or applications incorporating the name "Calvin Klein" or "CK" (referred to herein as the "Calvin Klein Trademarks").
Complainants have been selling their goods and services under the Calvin Klein Trademarks since at least as early as 1968. Complainants have spent millions of dollars throughout the United States and the world promoting their extensive offering of goods under the Calvin Klein Trademarks.
Complainants own at least five United States trademark registrations that include the name "Calvin Klein" or "CK" in International Class 3 for, among other goods, perfume, eau de toilette for men and women and cologne. See United States Trademark Registration Nos. 1,226,396, 1,969,912, 2,094,408, 2,133,753 and 2,234,623. Trademark Registration No. 1,226,396, for CALVIN KLEIN, was registered in 1983, and was first used in commerce in 1978. The description of goods includes perfume and cologne.
Respondent registered the domain names on December 30, 1999. The domain names are currently not in use, and when entered into a browser, they lead to a dialogue box announcing that the browser cannot open any websites linked to the domain names.
5. Parties’ Contentions
Complainants contend that their extensive use, advertising and promotion under the Calvin Klein Trademarks have caused Complainants and their trademarks to become well known and famous worldwide. Complainants further allege that the domain names are confusingly similar to Complainants’ famous Calvin Klein Trademarks. Complainants allege that confusion is likely because they manufacture, market and sell fragrances and perfumes under the Calvin Klein Trademarks. Complainants contend that consumers familiar with Complainants’ products will be confused into believing that Respondent’s domain names are linked to websites which are authorized by Complainants and provide access to Complainants’ goods, including perfumes.
Complainants argue that Respondent has no legitimate interest in the domain names because Respondent "is not currently using, has not used, and upon information and belief has made no preparation to use the domain names… [Respondent] has not been commonly known as [the domain name] or Calvin Klein as an individual, business or other organization."
Complainants argue that Respondent has registered and used the domain names in bad faith because it obtained the domain names "primarily for the purpose of selling, renting, or otherwise transferring them to" Complainants for more than Respondent expended in costs directly relating to the domain names.
Respondent has not filed a Response and thus has not contested the allegations of the Complaint.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainants must prove each of the following:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(ii) that the Respondent has no legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and used in bad faith.
A. Similarity of the Domain Names to Complainants’ Trademarks
Complainants have registered and/or applied for over fifty trademarks that incorporate the terms "CALVIN KLEIN" or "CK." Complainants first used the mark CALVIN KLEIN in commerce at least as early as 1968, and obtained their first United States Trademark Registration for CALVIN KLEIN in 1978. See Trademark Registration No. 1,086,041 for CALVIN KLEIN, for women’s clothing.
Complainants have been using the Calvin Klein Trademarks for perfume since at least as early as 1978, and obtained United States Trademark Registration No. 1,226,396, issued in 1983, for CALVIN KLEIN, for, among other goods, perfume and cologne.
Thus, Complainants have trademark rights in the name "Calvin Klein" for perfume. This name is included in both of the domain names.
The inclusion of the term "perfumes" with the name "Calvin Klein" in the domain names does not diminish the confusing similarity of the domain names to the Calvin Klein Trademarks, because the term "perfumes" describes the products offered by Complainants under the Calvin Klein Trademarks. Domain names that include a descriptive term with another’s trademark have been held to be confusingly similar to the trademark. See, e.g., AT&T Corp. v. WorldclassMedia.com, Case No. D2000-0553 (WIPO July 28, 2000) (Complainant who owned multiple trademark registrations incorporating "AT&T" brought successful ICANN Complaint against respondent who registered domain names <attmexico.com> and <att-latinamerica.com>).
Thus, the Administrative Panel holds that the domain names are confusingly similar to Complainants’ Calvin Klein Trademarks.
B. No Legitimate Interests
There is no evidence in the record of any legitimate interest of Respondent in the Calvin Klein Trademarks or the phrase "calvinkleinperfumes" used in the domain names, such as Respondent’s use of a corresponding name to offer goods or services; Respondent being known by a corresponding name; or Respondent making a legitimate noncommercial or fair use of the domain name. Because Respondent had the opportunity to respond to the Complaint, the Administrative Panel may conclude from Respondent’s failure to respond and provide contrary evidence that no such evidence exists. See, e.g., Mondich v. Brown, Case No. D2000-0004 (WIPO February 16, 2000), ("It is a general principle of United States law that the failure of a party to submit evidence on facts in its control may permit the court to draw an adverse inference regarding those facts."). Thus, the Administrative Panel holds that Respondent has no rights or legitimate interests in the domain names.
C. Bad Faith Registration and Use
When Respondent registered the domain names in 1999, it had at least constructive notice of Complainants’ prior rights in the Calvin Klein Trademarks. See 15 U.S.C. §1072. Respondent was given direct, actual notice of Complainants’ claim of rights and objections by Complainants’ demand letters sent in 2000 and 2001. Respondent did not answer the demand letters, and failed to respond to the Complaint to explain its registration of the domain names. Although Respondent has not activated a website linked to either domain name, registration without use of a domain name that incorporates another’s trademark can be found to satisfy the Policy’s definition of bad faith registration and use. See, e.g., Telstra Corp. Ltd. v. Nuclear Marshmallows, No. D2000-0003 (WIPO February 18, 2000); Sanrio Company Ltd. and Sanrio, Inc. v. DLI, D2000-0159 (WIPO April 20, 2000). Respondent’s silence concerning any possible legitimate use of the domain names assists the Panel in finding that this is one of those instances wherein registration without use amounts to bad faith.
Respondent’s registration of the domain names also is in bad faith as defined by Section 4(b)(ii) of the Policy, which states that bad faith exists when "you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct[.]" Respondent’s multiple registrations of domain names incorporating trademark rights of others, both in this case and as found in Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO February 21, 2001), (finding bad faith in Respondent’s registration of <chanelperfumes.com> and <chanelperfumes.net>), is indicative of such a pattern of bad faith registration of domain names.
Thus, based on Respondent’s disregard for Complainants’ known trademark rights in the name "Calvin Klein," and Respondent’s pattern of registering domain names to prevent the trademark owners from being able to use their trademarks in corresponding domain names, the Panel finds that Respondent registered the domain names in bad faith in violation of Section 4(a)(iii) of the Policy.
Accordingly, pursuant to Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Administrative Panel requires that the domain names <calvinkleinperfumes.com> and <calvinkleinperfumes.net> registered by Respondent, Cologne Zone, be transferred to Complainant Calvin Klein, Inc.
Carol Anne Been
Dated: October 26, 2001