Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Calvin Klein, Inc., New York, NY, USA ("Complainant") represented by Paul Rawlinson, of Baker & McKenzie. The Respondent is Sufir Scelomo, Roma, Italia, IT ("Respondent").

The domain name at issue is "e-calvinklein.com" registered with Network Solutions, Inc.

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as a panelist in this proceeding.

John J. Upchurch as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on December 21, 2000; the Forum received a hard copy of the Complaint on December 28, 2000.

On January 3, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name "e-calvinklein.com" is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").

On January 5, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 25, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@e-calvinklein.com by e-mail.

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 February 2, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed John J. Upchurch 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 Rules for Uniform Domain Name Dispute Resolution Policy (the "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.

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

A. Complainant

(a) The domain name is confusingly similar to a trademark or service mark in which the Complainant has rights;

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

(c) The domain name was registered and is being used in bad faith by the Respondent.

B. Respondent

Respondent submitted no response in this UDRP proceeding.

Complainant is the world famous fashion, clothing, and accessories retailer and has acquired a very substantial reputation in Italy and worldwide in its "Calvin Klein" and "cK Calvin Klein" marks.

Complainant is the registered proprietor of a number of trademarks around the world for many different kinds of products including, relevant to this dispute, Italian trademark registration No. 346124 for "CALVIN KLEIN" (registered 18 March 1985 in classes 3,9,14,18,24 and 25) and No. 675,586 (registered 12 April 1996 in class 25) for "CK/CALVIN KLEIN." In addition to the Italian trademarks, Complainant is the registered proprietor of equivalent trademark registrations in the USA and worldwide.

Respondent registered the domain name in question on March 25, 1999, although Complainant first became aware of the infringing domain name in June 2000.

The site that has been posted under this domain name has the message "Sito in allestimo," which is Italian for "site under construction."

Complainant’s representative sent Respondent a letter on July 7, 2000 asking that the domain name be withdrawn from the Internet. Complainant never received a response to this letter.

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."

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

Paragraph 4(a) of the 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.

Complainant has rights in the CALVIN KLEIN mark given its numerous trademark registrations in countries across the world.

Respondent has registered a domain name which adds the single letter "e" and a hyphen to Complainant’s registered mark. The addition of the letter "e" and hyphen does not dilute the similarity between Complainant’s mark and the domain name. Prior UDRP decisions reveal comparable holdings when such a domain name is registered. See Crédit Lyonnais v. Association Etre Ensemble, D2000-1426 (WIPO Dec. 7, 2000) (finding that the addition of the letter "e" and a hyphen does not affect the power of the mark in determining confusing similarity); Canadian Tire Corp. v. 849075 Alberta Ltd., D2000-0985 (WIPO Oct. 19, 2000) (finding that the domain names "ecanadiantire.com" and "e-canadiantire.com" are confusingly similar to Canadian Tire’s trademarks).

The Panel finds that the Respondent has no rights or legitimate interests under Policy ¶ 4(c) for the following reasons:

Accordingly, Policy ¶ 4(a)(iii) is satisfied.

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, "e-calvinklein.com" be transferred from the Respondent to the Complainant.