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Calvin Klein v. Spanno Industries [2000] GENDND 933 (21 August 2000)

National Arbitration Forum

DECISION

Calvin Klein, Inc. v. Spanno Industries

Claim Number: FA0007000095283

PARTIES

The Complainant is Calvin Klein, Inc., New York, NY, USA ("Complainant"). The Respondent is Spanno Industries, United Kingdom ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is "CALVINKLINE.COM", registered with Network Solutions Inc ("NSI").

PANELIST

The Panelist 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.

Hon. James A. Carmody, as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on July 24, 2000; The Forum received a hard copy of the Complaint on July 24, 2000.

On July 26, 2000, NSI confirmed by e-mail to The Forum that the domain name "CALVINKLINE.COM" is registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 4.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On July 26, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting August 8, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by e-mail. It was also emailed to postmaster@calvinkline.com.

On August 16, 2000, having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, The Forum transmitted to the parties a Notification of Respondent Default.

On August 18, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed the Hon. James A. Carmody as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that The Forum has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, The Forum’s Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any Response from the Respondent.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

The Complainant contends that:

1. the domain name is confusingly similar to a trademark or service mark in which the Complainant’s have rights; and
2. the Respondent has no rights or legitimate interests in respect of the domain name; and
3. the domain name was registered and is being used in bad faith by the Respondent.

B. Respondent

The Respondent did not submit a response to the Complaint.

Because Respondent has failed to submit a response to the Complaint based on the Policy, the Panel accepts as true all allegations set forth in the Complaint. See 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").

FINDINGS

The Complainant is the famous fashion, clothing, and accessories retailer worldwide. The Complainant is the owner of many trademarks in countries around the world. In the United Kingdom, the Complainant owns the registered marks No. 1,492,382 for "CALVIN KLEIN" (registered February 25, 2000) and No. 1,545,492 for "CK/CALVIN KLEIN" (registered August 19 1993). The Complainant also owns corresponding marks in the United States.

As a result of this widespread, long-time, continuous, and prominent use of the CALVIN KLEIN mark, the CALVIN KLEIN mark has acquired significant goodwill, wide public recognition, and fame as a means by which Complainant and its merchandise are known to the public and its source and origin are identified.

The Respondent registered the domain name in question on September 26, 1998.

The Complainant first became aware of the Respondent’s registration of the domain name in May 2000. At this time, the website located at this domain name displayed a pornographic image and contained obscene language.

The Complainant wrote to the Respondent seeking removal of the obscene material and requested the transfer of the domain name. The Respondent did not reply to the correspondence from the Complainant.

The pornographic material was removed and replaced with material that refers to terrorist activities.

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 cancelled 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.

The Complainant has rights in the registered mark CALVIN KLEIN. The Respondent’s domain name is confusingly similar to the Complainant’s mark. The misspelling of the Complainant’s mark, "KLEIN", to "KLINE" does not avoid the confusingly similarity. See Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding that the domain names, <davemathewsband.com> and <davemattewsband.com>, are common misspellings and therefore confusingly similar).

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

There is no evidence that would indicate that the Respondent has any rights or legitimate interests in the domain name in question, other than it has registered the domain name to display obscene and disturbing material. The Respondent is not using the domain name for a bona fide offering of goods or services. Policy ¶ 4.c.(i). The Respondent is not using the domain name for a legitimate noncommercial or fair use of the domain name. Policy ¶ 4.b.(iii).

The Respondent is not commonly known by the domain name "CALVINKLINE.COM". Policy ¶ 4.c.(ii). 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 has been using its mark in commerce for a long period of time.

Based on the above, the panel determines that the Respondent has no rights or legitimate interests in the domain name in question.

The Complainant contends that the Respondent registered and used the domain name in bad faith. The Respondent does not deny this assertion.

The Respondent (and an associated entity named Another Media Creation, which has identical WHOIS registration details as the Respondent) has registered numerous domain names containing sexual references and domain names which are confusingly similar to third party trade marks. For example, the Respondent has registered <quake6.com> and <mcd0nalds.com>, and Another Media Creation has registered <guinessbookofrecords.com>, <annwiddecombe.com> (a well known English politician), and <turnerprize.com>.

These activities point to a pattern of conduct on the part of the Respondent, revealing that the Respondent is registering domain names in order to prevent trademark owners from reflecting their marks in corresponding domain names. Policy ¶ 4.b.(ii). 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, including <bmw2000.com>, <mercedesbenz2000.com>, <saab2000.net>, etc.)

The Respondent has registered the domain name to attract Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Policy ¶ 4.b.(iv). In addition, linking Internet users that are seeking the Complainant’s website to pornographic material is evidence of bad faith. See CCA Indust., Inc. v. Dailey, D2000-0148 (WIPO Apr. 26, 2000) (finding that that "this association with a pornographic web site can itself constitute a bad faith"). The Panel also concludes that attracting Internet users to a website publishing terrorist activities also constitutes use in bad faith.

Based on the above, the Panel determines that the Respondent registered and used the domain name in bad faith.

DECISION

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain name, "CALVINKLINE.COM", be transferred from the Respondent to the Complainant.

James A. Carmody, Former Judge, Arbitrator
Dated: August 21, 2000