Calvin Klein Inc -v- Dodsworth [2003] DRS 732 (29 January 2003)

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The Complaint was lodged with Nominet on 26th November 2002. Nominet notified the Respondent of the validated Complaint on 29th November 2002. The Respondent failed to respond within the required time period of 15 days and Nominet so informed the Complainant on 27th December 2002. Mediation not being possible in these circumstances, the Complainant paid Nominet the appropriate fee for a decision of an Expert, pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy (“the Policy”), before the stated deadline of 13th January 2003.

Steve Ormand, the undersigned, (“the Expert”) confirmed to Nominet on 13th January 2003, that he knew of no reason why he could not properly accept the invitation to act as expert in this case and that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality.

The Respondent’s address is quoted as c/o What, Where, Why, 3 Gateshead Close, Sandy Bedforshire, SG19 1RS on some correspondence presented to the Expert and also as the Netbenefit administration contact address. On other correspondence and the Complaint form, the address quoted in 1 above is used. From file notes of telephone conversations with the Complainant’s solicitors, it is clear that the Respondent has received letters at either address. The Expert concludes that this is not an issue that prevented the Respondent from submitting a Response to Nominet in compliance with paragraph 5a of the Nominet Dispute Resolution Service Procedure (“the Procedure”).

There is no evidence before the Expert to indicate the presence of exceptional circumstances; accordingly, the Expert will now proceed to a Decision on the Complaint in accordance with paragraph 15b of the Procedure.

The Complainant describes itself as a clothing, fragrance and fashion company that has been trading in the USA since 1968 and selling its goods in the UK since 1981. It has submitted copy documents to show successful registrations of the trade marks “Calvin Klein” and “CK” in several classes in the UK between October 1991 and November 1997 and in the European Community in October 1998 and January 1999. Calvin Klein Trademark Trust is the registered proprietor of Calvin Klein trade marks; the Complainant is the beneficial owner of these trade marks.

The Complainant solicitors wrote to the Respondent on 19th February 2002 drawing his attention to the Complainant’s rights in the trade marks Calvin Klein and CK and requesting transfer of the Domain Name. The Respondent did not reply but a telephone conversation occurred on 22nd February 2002. The Complainant’s solicitors wrote again on 7th March 2002. The Respondent did not reply.

The Complainant’s solicitors explained the contents of the letters in a telephone call with the Respondent on 19th March 2002 and offered the possibility of the Complainant paying the costs of transfer.

The Complainant’s solicitors wrote again on 25th April 2002 explaining that action under the Nominet Dispute Resolution Service would commence if the Respondent failed to reply and offered £50 towards the Respondent’s costs.

The Complainant’s solicitors explained the offer to pay £50 towards costs of transfer in a telephone call with the Respondent on 3rd May 2002. The Respondent stated that a more reasonable estimate of costs was around £8,000 and that he would only be willing to transfer the Domain Name for the right amount of money. The Complainant declined to pay the requested £8,000 in a letter on 31st May 2002.

The Complainant has submitted hard copies of correspondence and file notes of telephone conversations with the Respondent.

1. Calvin Klein Trademark Trust is the registered proprietor of a number of trade marks around the world incorporating the highly distinctive trade marks “CALVIN KLEIN” and “CK” used for a wide range of goods and services, including clothing, caps, watches, cosmetics, eyewear and handbags. In addition to the UK trade marks, Calvin Klein Trademark Trust is the registered proprietor of equivalent trade mark registrations in the U.S.A. and worldwide.

2. Calvin Klein, Inc., a company incorporated under the laws of the State of New York, U.S.A is the beneficial owner of the famous CALVIN KLEIN and CK trade marks, a world famous clothing, fragrance and fashion brand. The Complainant has through extensive sales, advertising and marketing, acquired a substantial reputation in the UK for its products. Each year, approximately US$200 million is spent worldwide by the Complainant on advertising and promoting the CALVIN KLEIN and CK brands.

3. The Complainant has a strict policy of protecting its intellectual property rights. It does not authorise any single retailer to use its trade marks for the retailer’s own business activities, such as for a trading name, unless under a specific store licence agreement. This policy extends to domain names and the Complainant seeks to pursue third parties who register domain names which incorporate any of its trade marks. Indeed, in 2001, the Complainant was successful in obtaining agreement for the transfer to it of the domain names CALVINKLEIN.ORG.UK, and CALVINKLEINCOLLECTION.CO.UK from third parties.

4. The Respondent has not established a web site under CALVINKLEIN.CO.UK. The Complainant first became aware that the domain name CALVINKLEIN.CO.UK had been registered in June 2001 during a routine review of domain name registrations incorporating its trade marks. Despite having no relationship with the Complainant, the Respondent has consistently refused to accept that he has no right to register a domain name incorporating the Complainant’s famous trade mark.

5. The Respondent has registered a domain name incorporating the Complainant’s registered trade mark “CALVIN KLEIN” despite not being authorised by the Complainant or its licensees to use any of the Complainant’s trade marks. This unauthorised use by the Respondent of an identical trade mark amounts to trade mark infringement under Section 10(1) and/or Section 10(2) of the Trade Marks Act 1994. The Respondent’s use of the Complainant’s famous trade mark “CALVIN KLEIN” in its domain name also creates the impression that the Respondent has some official or authorised relationship with the Complainant, which is not the case. This misrepresentation is likely to confuse members of the public such that they will believe the domain name CALVINKLEIN.CO.UK is connected or associated with the Complainant and will erode the Complainant’s exclusive goodwill in the trade mark “CALVIN KLEIN”. Therefore, the Respondent’s registration of CALVINKLEIN.CO.UK amounts to passing off in the manner set out in the Court of Appeal decision in Marks & Spencer v One in a Million Ltd and is likely to cause loss and damage to the Complainant. Furthermore, at the time of filing, the Respondent has not created an active web site under the domain name but has merely registered the domain name in order to reserve it for the Respondent with the result that the Complainant is not able to use the domain name. The most logical reason for the Respondent’s registration of the domain name is for the purpose of profiting from the sale or transfer of the domain name to the Complainant or a competitor of the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name. The Complainant has offered, as a gesture of goodwill and in an attempt to resolve this matter amicably, to pay the Respondent the sum of £50 towards his costs of transferring the domain name. However, the Respondent refused to accept this figure and stated that a reasonable estimate of his costs would be around £8,000 and he would only be willing to transfer the domain name to the Complainant on payment of such a sum. It is highly improbable that this figure represents the Respondent’s reasonable costs of registering and transferring the domain name. The Complainant rejected the sum suggested by the Respondent and stated that the Complainant had no option but to take action to recover the domain name. No reply has been received to this letter. Therefore, the Respondent’s conduct in this matter clearly demonstrates that this domain name amounts to an Abusive Registration.

6. Despite a number of bona fide attempts by the Complainant to resolve this matter amicably, the Respondent has either delayed in responding or obstructed the resolution of this matter. The Respondent’s failure to cooperate in this way demonstrates his intention to cause continued disruption to the Complainant’s business by preventing the Complainant from being able to use the domain name and protect its intellectual property rights. Furthermore, the fact that the Respondent has demanded the payment of £8,000 in return for transfer of the domain name, a sum which is clearly in excess of the amount which the Respondent could be legitimately expected to receive, demonstrates the Respondent’s clear intention to attempt to profit from his registration of the domain name. Therefore, this domain name clearly amounts to an Abusive Registration.

To succeed in this Complaint, the Complainant has to prove to the Expert, pursuant to paragraph 2 of the Policy on the balance of probabilities, both legs of the test that:

1. it has rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the Domain name; and
2. the Domain Name, in the hands of the Respondent, is an Abusive Registration (as defined in paragraph 1 of the Policy).

The Complainant is the proprietor of registered trade mark rights in the name or mark “Calvin Klein”. The Domain name comprises the name or mark <calvinklein> and the suffix <.co.uk>. The domain suffix is discounted as it is of no relevant significance and wholly generic. The lack of a space between calvin and klein in the Domain Name is considered irrelevant by the Expert.

The Expert finds that the Complainant has rights in respect of a name or mark that is identical to the Domain Name.

A non-exhaustive list of factors, which may be evidence of Abusive Registration, is presented in paragraph 3a of the Policy.

The Complainant states that the most logical reason for the Respondent’s registration of the Domain Name is to sell, rent or otherwise transfer 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 (sub-paragraph 3a.i.A of the Policy).

The Complainant’s strict policy of protecting its intellectual property rights is irrelevant. It cannot demonstrate the Respondent’s intentions in registering the Domain Name. The Respondent’s refusal to accept the Complainant’s assertion that he, the Respondent, has no right to register a domain name incorporating the Complainant’s trade mark does not demonstrate the Respondent’s intentions.

The Complainant’s claims that the Respondent’s use of the trade mark amounts to a trade mark infringement and that the use of the Domain Name is passing off in the manner set out by the Court of Appeal in Marks & Spencer v One in a Million Ltd are matters for the Courts. The Expert is only concerned with establishing whether the Domain Name is an Abusive Registration under the terms of the Policy. However, the Expert considers that where a domain name is a distinctive mark or name, the decision in One in a Million assists a complainant in establishing the respondent’s intention when registering or acquiring the domain name.

The Complainant’s mark is a well known and distinctive name. Therefore, in the Expert’s opinion, it is likely, on the balance of probabilities, that the Respondent knew the name Calvin Klein at the time of registration and he understood that he was not registering a generic or descriptive term as a domain name. Did the Respondent register the Domain Name with the intention of profiting from the Complainant’s goodwill attaching to the name? Although the Respondent’s request for £8,000 to transfer the Domain Name to the Complainant does not by itself indicate the Respondent’s primary intention in registering the Domain Name, the Expert considers that in the circumstances of this case, in particular the Respondent’s behaviour and lack of response to the Complaint, it is more likely an indication of his primary intention rather than just a response to an opening offer of £50 from the Complainant.

The registration of the Domain Name has prevented the Complainant from using it and could be a blocking registration (sub-paragraph 3a.i.B), but there has to be evidence that the Domain Name was registered or acquired by the Respondent with this intention. Although failure to use the Domain Name for the purposes of e-mail or a web site is not in itself evidence of Abusive Registration (paragraph 3b), the Expert considers that in the circumstances of this case there is some weight to be attached to the Respondent’s failure to use the site for over 3 years: it is an indication of an intent to wait for an opportunity to profit from the Domain Name rather than an intention to make fair use of the web site.

The Complainant presents no evidence to show that the Respondent’s primary purpose for registering the Domain Name was to unfairly disrupt the Complainant’s business (sub-paragraph 3a.i.C).

The Complainant asserts that the Respondent’s use of its trade mark in the Domain Name creates the impression that he has some authorised relationship with the Complainant and that it is likely to confuse members of the public. The Expert considers that this does not satisfy sub-paragraph 3a.ii since the web site is not in use.

There is no suggestion that the Respondent has engaged in a pattern of making Abusive Registrations (sub-paragraph 3a.iii) or that he has given false contact details to Nominet (sub-paragraph 3a.iv).

Pursuant to paragraph 15c of the Procedure, in the absence of exceptional circumstances, the Expert considers that the appropriate inference to be drawn from the Respondent’s failure to respond to the Complaint is that it is indicative of the Respondent’s inability to demonstrate that the Domain Name is not an Abusive Registration by the non-exhaustive list of factors in paragraph 4a of the Policy.

Accordingly, the Expert finds that on the balance of probabilities the Domain Name is an Abusive Registration within the definition of that term in paragraph 1 of the Policy on the basis that it was registered primarily 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.

In light of the foregoing findings, namely that the Complainant has rights in respect of a name or mark which is identical to the Domain Name and that the Domain name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Name, calvinklein.co.uk, be transferred to the Complainant.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Calvin Klein Inc -v- Dodsworth [2003] DRS 732 (29 January 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/732.html Cite as: [2003] DRS 732