Calvin Klein Inc v make [2004] DRS 02163 (06 January 2005)

Nominet UK Dispute Resolution Service

DRS Number 02163

Calvin Klein, Inc. and make

Decision of Independent Expert

1.	Parties: 

Complainant:		Calvin Klein, Inc.
Address:	205 West 39th Street
	New York, New York
	United States
Postcode:		10018
Country:		US

Respondent:		make
Address:	E. Tropicana Ave.
	#425
	Las Vegas, NV
Postcode:		89119
Country:		US

2.	Domain Name:

calvinklein.org.uk

3.	Procedural Background:

08/11/2004	Dispute entered into system
08/11/2004	Hardcopies received in full on: 08/11/2004
11/11/2004	Complaint validated
11/11/2004	Complaint documents generated
08/12/2004	No Response received
08/12/2004	No response to complainant documents generated
14/12/2004	Fees received from complainant on 13/12/2004
17/12/2004	Mr Chris Tulley selected as expert

4.	Outstanding Formal/Procedural Issues (if any):

None

5.	The Facts:

•	The Complainant is a long established business with a worldwide reputation relating to the sale of a wide range of merchandise under its well known CALVIN KLEIN brand name.

•	The Domain Name was registered on 14 April 2003 by the Respondent, giving its name simply as "make" and an address in Las Vegas that appears not to exist.

•	There is no evidence of any actual use of the Domain Name in relation to an email account or website.

•	The Respondent has not responded to the Complainant's letters nor to emails from Nominet UK in relation to this complaint.  

6.	The Parties’ Contentions:

Complainant:

In summary the Complainant says that:

•	The Complainant has Rights in the name CALVIN KLEIN, which is identical or similar to the Domain Name.

•	The CALVIN KLEIN brand name is protected by numerous trade mark registrations including more than a dozen registrations in the United Kingdom.

•	The Respondent registered the Domain Name more than six years after the Complainant registered CALVINKLEIN.COM, and over 30 years after the Complainant began using the CALVIN KLEIN trade marks. 

•	The Complainant sent a letter to the Respondent by certified mail and regular mail to the address listed in the WHOIS database. The certified letter was returned as undeliverable due to an “insufficient address”. Further, the United States Postal Service has confirmed that the address given is not a valid address. 

•	The Domain Name takes unfair advantage of the Complainant's rights because it makes a representation to persons who consult the register that the Respondent is connected or somehow associated with the Complainant.

•	The Respondent can make no legitimate non-commercial or fair use of the Domain Name without confusing or misleading users or abusing the Complainant’s trade mark rights. 

•	The Respondent cannot make a genuine offering of goods or services under the  Domain Name without violating the Complainant’s rights.

•	The Respondent’s possession of the Domain Name is preventing the Complainant from using a domain name to which it has a legal right.  

•	The burden rests on the Respondent to prove that the registration of the Domain Name was not abusive. 

•	The Respondent registered the Domain Name primarily for the purpose(s) of unfairly disrupting the business of the Complainant by selling, renting or otherwise transferring the Domain Name to the Complainant or its competitor for valuable consideration in excess of the Respondent’s documented out-of-pocket costs or as a blocking registration. 

Respondent:

The Respondent has not responded to the complaint. 

7.	Discussion and Findings:

General

In order to succeed the Complainant must prove, on the balance of probabilities, two matters, i.e. that: 

1.	The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

2.	The Domain Name, in the hands of the Respondent, is an Abusive Registration.

These terms are defined in the Nominet UK DRS Policy as follows:

•	Rights includes, but is not limited to, rights enforceable under English law. However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business.

•	Abusive Registration means a Domain Name which either:

i. was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; or

ii. has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.

Complainant’s Rights

The Complainant has provided substantial evidence that it has Rights in the CALVIN KLEIN name, having exhibited details of some of its trade mark registrations, copies of merchandise tags and labelling, and excerpts from independent publications. 

I find that the Complainant does have Rights in the name CALVIN KLEIN and that the name is identical to the Domain Name (ignoring the .org.uk suffix) 

Abusive Registration

The Respondent has not responded to the Complainant nor to Nominet UK in relation to the complaint so there is no information put forward by the Respondent to explain the reasons for registering the Domain Name.  

On the evidence before me none of the examples of factors set out in paragraph 4 of the Policy which may be evidence that the Domain Name is not an Abusive Registration appear to be relevant.

From the matters relied on by the Complainant in its submissions the following parts of paragraph 3 of the Policy (being factors which may be evidence that the Domain Name is an Abusive Registration) are potentially relevant:

Paragraph 3 a. i. "Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:

A - for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name;

B - as a blocking registration against a name or mark in which the Complainant has Rights; or

C - for the purpose of unfairly disrupting the business of the Complainant."

The Complainant says that the burden rests on the Respondent to prove that the registration of the Domain Name was not abusive and in the absence of such proof, an inference may fairly be drawn that the Respondent registered the Domain Name primarily for the purpose(s) set out in paragraph 3 a i of the Policy.  
The Complainant is wrong in relation to the burden of proof. The burden of proof is on the Complainant not the Respondent to prove on the balance of probabilities that the Domain Name is, in the hands of the Respondent, an Abusive Registration.  
However, I believe I may draw reasonable inferences where the Respondent has failed to respond to the complaint and there is no other evidence of the Respondent’s purpose of registration.  
Notwithstanding that, there does not appear to be anything to indicate an intention by the Respondent to disrupt the Complainant's business.  In relation to paragraph 3 a i A and B of the Policy, the Domain Name was registered nearly 20 months ago on 14 April 2003 and there is no evidence of any approach having been made during that time either to the Complainant or to any of their competitors to sell the Domain Name, whether at an inflated price or otherwise. 
The lack of use of the Domain Name is not in itself evidence of being an Abusive Registration (as is made clear from paragraph 3 b of the Policy) but I believe it can be taken into account in the overall circumstances.   
In the absence of any explanation from the Respondent I believe an inference can be drawn that the Domain Name, being identical to the Complainant's famous name and trade mark and apparently having been unused for some 20 months since its registration, was registered primarily as a blocking registration against a name or mark in which the Complainant has Rights or with a view to forcing the Complainant to purchase the Domain Name whenever they became aware of its registration.  

Paragraph 3 a. ii.  "Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant."
No actual use of the Domain Name has been shown but it is not easy to envisage the circumstances where the Domain Name could be used by a party unconnected with the Complainant without leading to a likelihood of such confusion and infringement of the Complainant's trade mark or other rights in its name.  
Whilst no actual use and no actual confusion has been shown, I am mindful of the fact that the list of factors set out in paragraph 3 of the Policy is expressly non-exhaustive; it is illustrative.  I believe that use of the Domain Name by the Respondent would be likely to lead to the confusion envisaged by paragraph 3 a ii of the Policy. If the abuse identified in paragraph 3 a ii indicates an Abusive Registration, then so must anything likely to lead to such a situation. 

Paragraph 3 a. iv. "It is independently verified that the Respondent has given false contact details to [Nominet UK]".

The Respondent registered the Domain Name using the name “make” and giving an address at “East Tropicana Ave. #425, Las Vegas, NV 89119.” The Complainant has provided evidence in the form of a letter addressed to this address that was returned by the United States Postal Service marked "insufficient address". 
The Complainant also says that the main branch of the United States Postal Service, as well as the local United States Postal Service branch in Las Vegas, Nevada, has confirmed by telephone that “East Tropicana Ave, # 425” is not a valid address. There is nothing to counter that evidence. 
The Complainant also says that no telephone or email address was provided by the Respondent.  However, the Nominet UK Register entry for the Domain Name includes a telephone number 702-739-9555 and an email address of soryn@iorgoveanu.com. Documents regarding this complaint were sent to that email address by Nominet UK but no reply was received.
Notwithstanding that, it seems clear that at least the postal address given was false.

8.	Decision:
For the reasons outlined above I find that the Complainant has proved on the balance of probabilities that it has Rights in respect of the name "Calvin Klein", being a name or mark which is identical or similar to the Domain Name, and that the Domain Name, in the hands of the Respondent, is an Abusive Registration.
In the circumstances I order that the Domain Name be transferred to the Complainant. 

Chris Tulley
6 January 2005