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Calvin Klein v. AMG [2000] GENDND 1726 (14 December 2000)


National Arbitration Forum

DECISION

Calvin Klein, Inc. v. AMG

Claim Number: FA0011000095963

PARTIES

The Complainant is Calvin Klein, Inc. and Calvin Klein Trademark Trust, USA ("Complainant") represented by Paul Rawlinson, Baker & Rawlinson. The Respondent is AMG, Farnham, Surrey, UK ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is calvinklein-on-line.com registered with Network Solutions.

PANELIST

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 the panelist in this proceeding.

The Honorable Charles K. McCotter, Jr. as Panelist.

PROCEDURAL HISTORY

The Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on November 9, 2000; The Forum received a hard copy of the Complaint on November 13, 2000.

On November 13, 2000, Network Solutions confirmed by e-mail to The Forum that the domain name calvinklein-on-line.com is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that the Respondent is bound by the Network Solutions 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On November 14, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 4, 2000 by which Respondent could file a Response to the Complaint, was transmitted to the Respondent via e-mail, post and fax, to all entities and persons listed on the Respondent’s registration as technical, administrative and billing contacts, and to postmaster@calvinklein-on-line.com by email.

On December 6, 2000, pursuant to the Complainant’s request to have the dispute decided by a One member panel, the Forum appointed the Honorable Charles K. McCotter, Jr. as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

    1. Complainant

The Complainant contends that:
    1. The domain name is confusingly similar to a trademark or service mark in which the Complainant has rights. The "Calvin Klein" brand name and trademarks are famous throughout the world, including in the UK, and the Complainant is the legitimate and rightful owner of the trademarks by virtue of use and registration.
    2. The Respondent has no rights or legitimate interests in respect of the domain name. The Respondent has not used the domain name in connection with a bona fide offering of goods and services.
    3. The domain name was registered and is being used in bad faith by the Respondent.
    1. The Respondent’s use of the domain name calvinklein-on-line.com, which includes the Complainant’s famous "Calvin Klein" trademark, misrepresents to the public that some connection exists between the Respondent and the Complainant or the Complainant’s products. This misrepresentation will cause damage to the Complainant’s business reputation, sales and goodwill.
    2. The Respondent has registered and used the domain name calvinklein-on-line.com in bad faith, with the intention of attracting browsers seeking the Complainant’s likelihood of confusion caused by the Respondent’s domain name and web site and its purported link to the official site is increased.
    3. The Respondent registered the domain name for the purpose of selling the domain name to the Complainant, or to a competitor, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs.
    1. Respondent

The Respondent contends that:

    1. The Respondent has a valid business interest in the domain name, although the Respondent acknowledges the validity of the Complainant’s trademark. Given the opportunity, the Respondent’s site will promote the Complainant’s business.
    2. The Respondent has not acted in bad faith.
    3. The Respondent has not been given long enough to utilize the domain name.
    4. The Respondent recently offered to transfer the domain name to the Complaint for a nominal sum to cover Respondent’s costs.

FINDINGS
    1. Calvin Klein Trademark Trust is the registered proprietor of a number of trademarks around the world for many different kinds of products including, relevant to this Complaint, UK trademark registration No. 1,492,382 for "CALVIN KLEIN" (registered 25 February, 1992) and No. 1,545,492 (registered 19 August, 1993) for "CK/CALVIN KLEIN", both in Class 25 in respect of articles of clothing. In addition to the UK trademarks specified above, Calvin Klein Trademark Trust is the registered proprietor of equivalent trademark registrations in the USA and worldwide.
    2. The Complainants are world famous fashion, clothing and accessories retailers and are the owners of the famous "Calvin Klein" and "cK Calvin Klein" trademarks world-wide. The Complainant’s have, through extensive sales, advertising and marketing acquired a very substantial reputation in the UK and world-wide in their "Calvin Klein" and "cK Calvin Klein" trademarks.
    3. Respondent acknowledges the existence and validity of Complainant’s trademarks.
    4. The Respondent registered the domain name calvinklein-on-line.com on 2 March, 2000. However, no site has been launched under this domain name. The Respondent’s website contains the message "the future home of…calvinklein-on-line.com" and links to other websites which are registered to other entities.
    5. The Respondent registered other names at the same time as the disputed domain name (i.e. milan-on-line.com, rodeodrive-on-line.com and bondstreet-on-line.com).
    6. A review of the ‘Whois’ database shows that the Respondent has similarly registered hilfigeronline.com and guccionline.com
    7. The Complainant has a valid domain name located at the site calvinklein.com and intends to launch its website in due course. Calvin Klein, Inc. is the registrant of the domain name calvinklein.com but its web site is not yet in use.
    8. The Respondent is not a licensee of the Complainant, nor is the Respondent otherwise authorized to use the Complainant’s marks.
    9. The Respondent’s domain name was not registered until after the Complainants had obtained and used their trademarks for a significant period of time.
    10. The Respondent admits that the domain name has not yet been put to a bona fide use. The Respondent says that it intends to launch an affiliate scheme and/or information service that would involve a number of parties fully authorized to utilize the Calvin Klein trademark and name in their activities. However, the Respondent says that it has not had the domain long enough to fulfill its plans. The Respondent does not indicate what steps have been taken toward the fulfillment of its plans.
    11. The Respondent offered to sell the domain name to the Complainant at a price in excess of the cost of registering a domain name (₤ 300 $436.99 US)

DISCUSSION

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the complainant must prove each of the following three elements to obtain an order that a domain name should be canceled or transferred:
    1. The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
    2. The 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 Complainant has rights in the registered mark CALVIN KLEIN. The Respondent’s domain name is confusingly similar to the Complainant’s mark. See Quixtar Investments, Inc. v. Smithberger and QUIXTAR-IBO, D2000-0138 (WIPO April 19, 2000) (finding that because the domain name quixtar-sign-up.com incorporates in its entirety the Complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar).

Rights and Legitimate Interests

The Respondent has no rights or legitimate interests in the domain name.

The Respondent is not using the domain name calvinklein-on-line.com for a bona fide offering of goods or services or for a legitimate noncommercial or fair use. The Respondent is not commonly known by the domain name. The Respondent is not a licensee of the Complainant nor is the Respondent otherwise authorized to use the Complainant’s marks. The domain name was not registered until after the Complainant had been using its mark in commerce for a long period of time. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interest where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; and (3) Respondent is not commonly known by the domain name in question).

The Respondent contends that the domain name was registered with the intent of using it in connection with a legitimate business venture. Making demonstrable preparations to use the website before any notice of a dispute is evidence of rights and legitimate interests in the domain name. See Casual Corner Group, Inc. v. Young, FA 95112 (Nat. Arb. Forum August 7, 2000) (finding that Respondent has rights and legitimate interests in the domain name even though he has made no use of the website at the time of the Complaint). However, the Respondent has failed to show the preparations for the use of the website.

Registration and Use in Bad Faith

The Respondent registered and used the domain name in bad faith. The Respondent is registering domain names in order to prevent trademark or service mark owners from reflecting their marks in corresponding domain names. See Hitachi, Ltd. v. Fortune Int’l Dev. Ent. D2000-0412 (WIPO July 2, 2000) (finding a pattern of conduct where the Respondent registered numerous domain names with the number 2000). Having engaged in a pattern of such conduct, the Respondent registered the domain name to prevent the Complainant from reflecting its marks in corresponding domain names. See Harcourt, Inc. v. Jeff Fadness, FA 95247 (Nat. Arb. Forum September 8, 2000).

The Respondent registered the domain name in bad faith for the purpose of disrupting the Complainant’s business. See Reuters Ltd. v. Teletrust IPR Ltd, D2000-0471 (WIPO September 8, 2000) (finding that the Complainant demonstrated bad faith where the Respondent was aware of the Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names); See also, Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) ("Use in bad faith can be inferred from the totality of circumstances even when the Registrant has done nothing more than register the names").

The Respondent registered the domain name primarily for the purpose of selling the domain name in excess of the Respondent’s out-of-pocket costs.

DECISION

Based upon the above findings and conclusions, I find in favor of the Complainant. Therefore, the relief requested by the Complainant pursuant to Paragraph 4.i of the Policy is granted. The Respondent shall be required to transfer to the Complainant the domain name calvinklein-on-line.com.

The Honorable Charles K. McCotter, Jr.

Dated: December 14, 2000

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