WIPO Domain Name Decisions

Document Sample
WIPO Domain Name Decisions Powered By Docstoc
					                WIPO Arbitration and Mediation Center

                       ADMINISTRATIVE PANEL DECISION

Calvin Klein Trademark Trust and Calvin Klein, Inc. v. Steven Heiberger and Legacy
                            Development USA Corp.

                                  Case No. D2002-0336




1.   The Parties

     The Complainants are indicated in the Complaint as Calvin Klein Trademark Trust, a
     trust company incorporated in the State of Delaware, whose principal place of business
     is 1100 North Market Street, c/o Wilmington Trust Company, Rodney Square North,
     Wilmington, Delaware 19890 and Calvin Klein, a corporation incorporated in the State
     of New York with its principal place of business at 205 West 39th Street, New York,
     New York 10018, United States of America.

     The Respondent is identified in the Complaint as Steven Heiberger and Legacy
     Development USA Corp. with an address in New York, New York, United States of
     America.


2.   The Domain Name and Registrar

     The disputed domain name is <calvinkleinonline.com> (“the Domain Name”).

     The Registrar is Register.com in New York, NY United States of America. In a letter
     dated April 15, 2002, to the WIPO Arbitration and Mediation Center (“the Center”),
     Register.com confirmed that the ICANN Uniform Domain Name Dispute Resolution
     Policy (“the Policy”) applies to the Domain Name registered by Respondent on
     September 9, 1999.


3.   Procedural History

     On April 9, 2002, the Complaint, which is in the format required by the Policy, was
     filed electronically with the Center. The Complaint certifies that the Respondent and
     Registrar were duly served by the Complainants. The Center verified that the
     Complaint satisfied the formal requirements of the ICANN Uniform Domain Name
     Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain



                                           page 1
     Name Dispute Resolution (the “Rules”), and the Supplemental Rules for Uniform
     Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

     On April 13, 2002, a hardcopy of the complaint was received by the Center.

     On April 15, 2002, having duly sought and obtained verification from the Registrar, the
     Center completed a formal compliance checklist.

     On April 17, 2002, the Center duly served a Notification of Complaint to the
     Respondent both electronically and by courier.

     On May 13, 2002, having received no response to the Complaint from Respondent
     within the time specified in the Notification of Complaint, the Center notified the
     Respondent that it was in default.

     On June 3, 2002, the Center issued to both parties a Notification of Appointment of
     Administrative Panel and Projected Decision Date. This Notification informed the
     parties that the Administrative Panel would be comprised of a single Panelist,
     Lynda Zadra-Symes of Newport Beach, California, who was appointed by the Center
     after an invitation had been issued and an acceptance and Declaration of Independence
     and Impartiality had been duly returned.


4.   Factual Background

     The Complaint asserted, and provided evidence in support of, the following facts,
     which Respondent did not dispute and the Panel finds established:

     The Respondent registered the Domain Name with Register.com on
     September 9, 1999, according to the WHOIS report provided by the Complainants.

     Complainants Calvin Klein, Inc. is in the business of, among other things, designing,
     manufacturing, marketing, and retailing a variety of merchandise, including men’s,
     women’s and children’s apparel, shoes, accessories, underwear, sleepwear, hosiery,
     socks, swimwear, eyewear, watches, coats, fragrances, cosmetics, home furnishings,
     jeans, t-shirts, sweatshirts, caps, leather goods, eyeglasses and sunglasses.

     The Complainants, Calvin Klein Trademark Trust and Calvin Klein, Inc. (collectively
     known hereafter as “Calvin Klein”) are the record owner and beneficial owner,
     respectively, of the world famous CALVIN KLEIN trademarks (collectively referred to
     as the “Calvin Klein Trademarks”). In addition, it appears that Calvin Klein has
     registered its trademark throughout the world, covering a similarly broad range of
     products. Complainants, Calvin Klein, also submitted evidence of worldwide trademark
     registration in an appendix to the complaint. Calvin Klein has been using the Calvin
     Klein trademarks in the United States and in over 190 countries since 1968, and has
     developed substantial consumer recognition in that trademark for the goods and
     services described in its trademark registrations listed below, among others:

     Trade Mark Registration No. 1086041, registered on February 21, 1978, renewed
     March 23, 1998, for “Women`s wearing apparel-namely, skirts, shirts, blouses, jackets,
     pants, coats, fur-trimmed coats, (( furs, )) vests, dresses, sweaters, (( bathing suits,
     robes, beach and swimming cover-ups, )) t-shirts, (( tennis and golf dresses, )) shorts,
     skirts and shirts, warm-up suits, rainwear, capes, (( ponchos, hats, )) scarves, shawls, ((
     robes, )) belts, walking shorts, tank tops and jump suits"

                                            page 2
     Trade Mark Registration No. 1633261, registered January 29, 1991, renewed
     January 26, 2001, for "Women's shoes, boots and slippers; men's and boys' underwear
     and men's and boys' shorts; women's and girls' underwear (including brassieres and
     underpants); women's nightgowns; men's hosiery and socks"

     Trade Mark Registration No. 2210511, registered December 15, 1998, for "Advertising
     agencies and developing promotional campaigns for businesses."

     Trade Mark Registration No. 2160138, registered May 26, 1998, for "Silverware and
     cutlery, furniture, hand held mirrors, and furniture mirrors, hair combs and brushes,
     housewares and glass."

     Trade Mark Registration No. 2250072, registered June 1, 1999, for "Carpets, rugs,
     hard surface coverings for floors, and wall coverings."

     The Panel notes that the registration dates of all of the above referenced United States
     trademark registrations predate the date of registration of the Domain Name by the
     Respondent.

     Calvin Klein also submitted evidence of worldwide trademark registration in an
     appendix to the Complaint.


5.   Parties’ Contentions

     A.    Complainants

     The Complaint requests a decision in accordance with paragraph 4(a) of the Policy, that
     the contested domain name be transferred to the Complainants on the grounds that the
     said domain name is identical or confusingly similar to a trademark or service mark in
     which the Complainants has rights; that the Respondent has no rights or legitimate
     interests in respect of the domain name; and that the said domain name was registered
     and is being used in bad faith.

     The Complainants made the following submissions, which Respondent did not contest:

     a.   Respondent is not affiliated with Calvin Klein in any way and has not been
          authorized by Calvin Klein to use the CALVIN KLEIN Trademarks.

     b.   Upon information and belief, the Domain Name was registered with Register.com in
          September of 1999, over two years after the <calvinklein.com> domain name was
          registered, and over 30 years after Calvin Klein began using the CALVIN KLEIN
          Trademarks. Calvin Klein first became aware of Respondent’s domain name,
          <calvinkleinonline.com>, in November of 2001, at which time it sent a letter to
          Respondent by certified mail, to inform Respondent that said use infringed upon
          Calvin Klein’s rights. See Complaint Exhibit D. As described more fully below,
          Calvin Klein has had additional communications with Respondent, but Respondent has
          refused to abandon the Domain Name or transfer it to Calvin Klein.

     c.   The Domain Name is confusingly similar to Calvin Klein’s domain name,
          <calvinklein.com>, and to the CALVIN KLEIN Trademarks, because it
          incorporates the entire CALVIN KLEIN trademark, in conjuction with the suffix
          “online,” which means having to do with computers, communication and the

                                            page 3
     internet. Consumers, who are highly familiar with Calvin Klein and its products,
     are likely to be misled into thinking that www.calvinkleinonline.com is a website
     through which they can access Calvin Klein’s goods or services online, or that
     some authorized connection exists between Respondent and Calvin Klein and/or
     its products.

d.   Upon information and belief, Respondent registered the Domain Name primarily
     for the purpose of selling, renting, or otherwise transferring it to Calvin Klein for
     valuable consideration.

e.   The basis of this belief is that on November 26, 2001, someone, who identified
     himself as Respondent’s brother and an attorney, called an attorney for
     Complainants and demanded $3,500.00 in exchange for transferring the Domain
     Name to Calvin Klein. Upon information and belief, the demanded amount is far
     in excess of Respondent’s out-of-pocket costs directly related to transfer of the
     domain name. Calvin Klein sent a letter to Respondent on December 7, 2001,
     informing Respondent that it would not pay the demanded sum in exhange for the
     domain name. See Complaint Exhibit E. Calvin Klein received no response to
     that letter.

f.   Not having heard from Respondent, Calvin Klein sent a third letter to Respondent
     on February 22, 2002, to which Calvin Klein attached a draft of its ICANN
     complaint. See Complaint Exhibit E. On or about March 10, 2002, an attorney
     for Complainants Calvin Klein, followed up with Respondent by telephone to see
     if Respondent would transfer the domain name and thus avoid the necessity for
     these proceedings. Respondent stated that he would transfer the domain name to
     Calvin Klein if Calvin Klein agreed to pay Respondent $1,380.00 for modeling
     services that Respondent claimed to have provided to a Calvin Klein licensee in
     August of 2000.

g.   On or about March 14, 2002, Complainants' representative conveyed to
     Respondent by telephone that Calvin Klein did not contract for the services at
     issue, that the services were unrelated to the instant dispute, and that Calvin Klein
     would not pay for those services in exchange for the domain name. During this
     telephone call, Respondent requested that Calvin Klein delay filing an ICANN
     proceeding for one week so that he could have time to consider whether he would
     voluntarily transfer the domain name to Calvin Klein. Respondent did not
     contact Calvin Klein after the requested one week period, and since then
     Respondent has not returned any of the at least five telephone calls made to him
     by Complainants' representative.

h.   On April 2, 2002, Calvin Klein sent a final letter to Respondent, again giving him
     the opportunity to resolve this dispute without legal proceedings. See Complaint
     Exhibit E.

i.   In addition, Respondent is not currently using, has not used, and upon information
      and belief has made no preparations to use the Domain Name in connection with
      the provision of any legitimate goods or services. The Domain Name does not
      resolve to an active website. See Complaint Exhibit F.

j.   Moreover, upon information and belief, Respondent has not been commonly
     known as <calvinkleinonline.com> or Calvin Klein as an individual, business or
     other organization.


                                       page 4
     B.     Respondent

     Respondent did not respond to the Complaint, and has made no submissions to
     controvert the Complainants' contentions.


6.   Discussion and Findings

     Pursuant to paragraph 4(a) of the Policy, Complainants must prove the following three
     elements:

     (i)    the Domain Name is identical or confusingly similar to a trademark or service
            mark in which the Complainants has rights; and

     (ii)   the Respondent has no rights or legitimate interests in respect of the domain
            name; and

     (iii) the Domain Name has been registered and is being used in bad faith.

     This Panel, as directed by paragraphs 14(a), 14(b) and 15(a) of the Rules, shall render
     the decision on the basis of the statements and documents submitted, in accordance
     with the Policy, the Rules and principles of law that it deems applicable. The Panel
     may draw such inferences as it deems appropriate on the basis of Respondent's
     Response and give such weight as it considers appropriate to the Complainants'
     undisputed representations.

     The Respondent did not submit any response and made no attempt to rebut
     Complainants' prima facie showing. Thus, the Complainants' representations are
     undisputed.

     A.     The Domain Name is Identical Or Confusingly Similar to the
            CALVIN KLEIN Trademark

     There can be no doubt that the domain name <calvinkleinonline.com> is confusingly
     similar to Complainants' CALVIN KLEIN trademarks. The relevant part of the domain
     name is "calvinklein." The Panel finds that this part of the domain name is confusingly
     similar to the numerous trademark registrations including the words CALVIN KLEIN
     held by the Complainants. In addition, the Panel finds that the whole of the domain
     name is confusingly similar to those trademark registrations.

     By adding the word “online” to Complainants’ trademark, Respondent does not
     diminish the likelihood of confusion. “The addition of the non distinctive words ‘on
     line’ does nothing to prevent the confusing similarity of the Domain Names with the
     Complainants’ trade marks.” Barclays Bank PLC v. Mr. Mohammed Hassan, WIPO
     Case No. 2001-0253.

     Accordingly, the Panel finds that the Domain Name is confusingly similar to, and
     incorporates, the CALVIN KLEIN trademark, to which Complainants has rights.

     B.     The Respondent Does Not Have A Legitimate Interest in the Domain Name

     While no evidence has been submitted to show that Respondent had actual knowledge
     of the Calvin Klein trademark prior to registration of the domain name, it is difficult to
     believe that the Respondent could not have been aware of the mark at the time of

                                            page 5
registration. Calvin Klein has extensively used the trademark in connection with sales
and promotion of its goods throughout the world for many years and the
CALVIN KLEIN trademarks are world famous.

In addition, the record indicates that Respondent has not used or prepared to use the
Domain Name in connection with any bona fide offering of goods or services as
contemplated under paragraph 4(c)(i) of the Policy. Respondent is not commonly
known by the Domain Name as contemplated under paragraph 4(c)(ii) of the Policy,
nor is Respondent making a legitimate non-commercial or fair use of the Domain Name
as contemplated under paragraph 4(c)(iii) of the Policy. The Panel notes that, even
though almost three years have elapsed since Respondent registered the Domain Name
in September 1999, the Domain Name does not resolve to any active website, but only
to the register.com holding page.

Accordingly, this Panel finds that Complainants has proved that the Respondent has no
rights or legitimate interests in respect of the Domain Name.

C.     The Respondent Registered and Used the Domain Name in Bad Faith

Paragraph 4(b)(i) of the Policy provides that the following circumstances, amongst
others, if found by the Panel to be present, shall be evidence of the registration and use
of a domain name in bad faith:

(i)    circumstances indicating that Respondent registered or acquired the domain name
       primarily for the purpose of selling, renting, or otherwise transferring the domain
       name registration to the Complainant who is the owner of the trademark or
       service mark or to a competitor of that Complainant, for valuable consideration in
       excess of Respondent's out-of-pocket costs directly related to the domain name;
       or

(ii)   Respondent has 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 Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the domain name primarily for the purpose of
      disrupting the business of a competitor; or

(iv) by using the domain name, Respondent has intentionally attempted to attract, for
     commercial gain, Internet users to its web site or other on-line location, by
     creating a likelihood of confusion with the Complainant's mark as to the source,
     sponsorship, affiliation, or endorsement of Respondent's web site or location or of
     a product or service on Respondent's web site or location.

Each of the four circumstances in paragraph 4(b), if found, is a separate instance of
"registration and use of a domain name in bad faith."

The record indicates that Complainants' CALVIN KLEIN trademark is well-known.

The record also indicates that Respondent sought a substantial sum of money, $3,500,
from Complainants in return for the transfer of the Domain Name. This sum is far in
excess of the expected transfer costs incurred by the Respondent. After Calvin Klein
turned down Respondent’s initial proposal, the Respondent lowered the amount it was
seeking in the telephone conversation with Complainants' representative. It was then


                                       page 6
seeking $1,380 allegedly owed to Respondent for unrelated services allegedly provided
to a Calvin Klein licensee.

These circumstances clearly fall within paragraph 4(b)(i) because they indicate that
Respondent registered or acquired the domain name primarily for the purpose of
selling, renting, or otherwise transferring the Domain Name registration to the
Complainants, who is the owner of the trademark, for valuable consideration in excess
of Respondent's out-of-pocket costs.

Although the Domain Name does not presently resolve to a website and thus does not
appear to be in "use" by Respondent, the circumstances described in paragraph 4(b)(i)
are present and sufficiently support a finding that Respondent registered and used the
Domain Name in bad faith. In any event, this is a case where the concept of "passive
use" referred to in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case
No. D2000-0003, would be applicable because the website has been without content for
over three years. Considering all the circumstances of the case, it can be said that the
Respondent is acting in bad faith. See also Compagnie Générale des Etablissements
Michelin-Michelin & Cie v. la bon vie and Gilles Epie, WIPO Case No. D2002-0092,
Brown Thomas & Company Limited v. Domain Reservations WIPO Case No. D2001-
0592; Voigtländer GmbH v. Scott Hall, WIPO Case No. 2002-0013.

The circumstances present in this case support a finding of bad faith. In particular,

(i)    for thirty years, the Complainants has developed significant goodwill in the
       name CALVIN KLEIN, and substantial goodwill and common law rights have
       been accumulated by the Complainants;

(ii)   the Respondent has provided no evidence whatsoever of any actual or
       contemplated good faith use by it of the domain name, even when given the
       chance to respond to this Complaint;

(iii) such information as there is about the Respondent would appear to indicate that
      the Respondent is likely to be engaged in some form of commercial activity as
      distinct from non-commercial activity;

(iv) it is highly improbable that the Respondent was unaware of the Complainants'
     long and established national and international reputation and trademarks rights
     when the said domain name was registered;

(v)    it is unlikely that any use of the said domain name by the Respondent as a
       website address could be legitimate; any site established by the Respondent
       under the Domain Name would amount to passing off and/or trademark
       infringement because it would confuse the public into believing there is some
       connection between the Domain Name and the Complainants. It would be
       absurd if the Complainants had to wait for the Respondent to commence such
       use and commit the torts of passing off and/or trademark infringement before
       making this Complaint.

Accordingly, the Panel concludes that Respondent has registered and used the Domain
Name in bad faith on the grounds that (1) Respondent was aware of Complainants'
rights in the CALVIN KLEIN trademark at the time of registration; (2) Respondent has
no rights or legitimate interests in the Domain Name; (3) Respondent attempted to sell
the Domain Name to the Complainants for substantially more than Respondent's out-of-


                                       page 7
     pocket costs; and (4) the Respondent could not legitimately use the Domain Name,
     which incorporates Complainants' well-known CALVIN KLEIN trademark.


7.   Decision

     For all of the foregoing reasons, the Panel decides that the Complainants has met its
     burden of proof under paragraph 4 of the Policy; the Domain Name is confusingly
     similar to trademarks in which Complainants has rights; Respondent lacks a legitimate
     interest in the Domain Name; and Respondent has registered and used the Domain
     Name in bad faith. Accordingly, this panel concludes that the domain name
     <calvinkleinonline.com> should be transferred to the Complainants.



                            ____________________________
                                  Lynda Zadra-Symes
                                     Sole Panelist

                                  Dated: June 28, 2002




                                          page 8

				
DOCUMENT INFO
Shared By:
Categories:
Tags:
Stats:
views:3
posted:7/7/2012
language:
pages:8