1. The Parties Complainant Calvin Klein Trademark Trust is a Delaware (USA) trust company that has its registered office in Wilmington, Delaware, USA, and is the owner of the trademarks discussed in part 4 below. Complainant Calvin Klein, Inc. is a New York (USA) corporation with its principal office in New York, New York, USA, and is the beneficial owner of the trademarks. Complainants are represented by Jessie F. Beeber of the firm of Frankfurt Garbus Kurnit Klein & Selz, PC, New York, New York, USA.
Respondent is Jonathan Dardashti, an individual with an address in Beverly Hills, California, USA.
3. Procedural History and Jurisdiction The WIPO Arbitration and Mediation Center (the Center) received the complaint on September 21, 2001, (electronic version) and October 9, 2001, (hard copy). The Center verified that the complaint satisfied the formal requirement of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Complainant made the required payment to the Center.
On September 28, 2001, the Center transmitted, via email to the Registrar, a request for registrar verification in connection with this case. On October 1, 2001, the Registrar transmitted via email to the Center its Verification Response, confirming that the Respondent is the registrant and administrative and billing contact for the Domain Name, and that WorldNIC Name Host is the technical contact.
Having verified that the complaint satisfied the formal requirements of the Policy and the Rules, on October 15, 2001, the Center transmitted to the Respondent its Notification of Complaint and Commencement of the Administrative Proceeding, via post/courier and e-mail. The courier's tracking system indicates delivery to Respondent on October 17, 2001.
Respondent has not answered the Complaint or otherwise contacted Complainants or the Center. On November 7, 2001, the Center notified Respondent of his default.
The formal date of the commencement of this administrative proceeding is December 5, 2001.
Complainant requested a single panelist. The Center invited Richard G. Lyon to serve as a panelist. Having received Mr. Lyon's Statement of Acceptance and Declaration of Impartiality and Independence, on December 5, 2001, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date of December 19, 2001. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules and that the Panel has jurisdiction by virtue of Section 4(a) of the Policy.
4. Factual Background Complainants (referred to as Calvin Klein) are a well-known name in fashion. Calvin Klein designs, manufactures, markets, and sells at retail a variety of clothing products and accessories, including fragrances and cosmetics. They possess and have made widespread and successful use of many trademarks (more than fifty in the United States) that incorporate the name Calvin Klein. Calvin Klein products are sold in more than 190 countries around the world, using the Calvin Klein name. Complainant advertises (and has advertised) heavily, and has built substantial goodwill in its name. It registered the domain name in June 1997.
Complainant has not licensed Respondents to use its marks or its name.
Respondent registered the Domain Name in May 1999, two years after Complainants registered their own domain name and long after Complainants' marks and products had become famous.
There is no evidence of any actual commercial or other use of the Domain Name. A recent viewing provided only a generic notice that the site was "under construction."
Complainants first became aware of Respondent's registration of the Domain Name in July 1999, shortly after Respondent registered the name. Complainants' attorneys sent cease and desist letters to Respondent in July 1999, July 2000, April 2001, and July 2001.1 Complainants allege, without particulars such as dates or substance of the conversation, that their representative "spoke with Respondent by telephone,"2 and that Respondent "has not agreed to abandon the [Domain Name] or transfer it to Calvin Klein."
5. Parties' Contentions The parties' contentions are summarized as follows:
Complainant: The Domain Name incorporates its valuable mark. Particularly when the name one of its product lines (cosmetics) is added to its mark, Respondent's use of the Domain Name is likely to cause confusion as to ownership or affiliation of the Domain Name. Respondents registered the Domain Name subsequently to Complainants products' gaining their worldwide popularity. Complainants have not licensed Respondents, and none of the words in the Domain Name is associated with Respondent or any business operated by Respondent; thus Respondent has no legitimate interest in the Domain Name. Bad faith is established by Respondent's presumed knowledge of Complainant's marks, registering the Domain Name after the marks had become famous, and no use of the Domain Name for any purpose.
Respondent: Respondent has not made any submission to the Center and there is nothing in the record to indicate that Respondent contests any of Complainants' contentions.
6. Discussion Paragraph 15(a) of the Rules instructs the Administrative Panel as to the principles the Administrative Panel is to use in determining the dispute:
"A Panel shall 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."
Paragraph 4(a) of the Policy directs that the Complainant must prove each of
(1) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service in which the Complainant has rights;
(2) that the Respondent has no rights or legitimate interests in respect to the Domain Name; and
(3) that the Domain Name has been registered and is being used in bad faith.
Complainant bears the burden of proof on each of these elements. Respondent's default does not automatically result in judgment for the Complainant.
Identity and Confusion. The Domain Name incorporates Complainants' popular product name and marks, and is therefore likely to cause confusion as to the ownership of the site. The addition of cosmetics – a word descriptive of one of Complainants' product lines -- at the end of the Domain Name only exacerbates this confusion.3 Legitimate Interest. Nothing in the record suggests any legitimate interest of Respondent in the Domain Name. Complainants have not licensed Respondents to use its marks, and the site itself offers no connection (legitimate or otherwise) to the Calvin Klein name.
Bad Faith. A panel may infer bad faith from the registration of a domain name that combines a well-known mark and one of the mark owners' products. CBS Broadcasting v. Hassad, supra; United States Olympic Committee v. Tri-B-U-N Eco, WIPO Case No. D2000-0435. Failure to make any use of its website for more than two years, especially in the face of four cease and desist letters that undeniably put Respondent on notice of the marks and the mark owners' objection, is also evidence of bad faith. World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Respondent presents nothing to counter this evidence. Complainants have established bad faith.
7. Decision For the foregoing reasons, the Administrative Panel orders that the registration of the Domain Name be transferred to the Complainants.
Richard G. Lyon
Dated: December 18, 2001
1 Copies of the letters are annexed to the Complaint.
2The Panel notes its disapproval of unsupported pleading of empty conclusions instead of facts that would lead the Panel to the desired conclusion. Especially in contested proceedings, particulars of telephone conversations are the only means for a panel to evaluate what was said. Ordinarily the particulars should be provided by the sworn declaration of a person with actual knowledge of the conversation. Accordingly the Panel gives no weight to Complainants' conclusionary allegation regarding the telephone conversation.
3E.g.,CBS Broadcasting v. Hassad, WIPO Case No. D2000-1064.