World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Karen Millen Fashion Limited v. chenzhen ling aka chen zhen

Case No. D2010-2221

1. The Parties

The Complainant is Karen Millen Fashion Limited of Whitney, Oxford, United Kingdom of Great Britain and Northern Ireland, represented by Heatons LLP, United Kingdom.

The Respondent is chenzhen ling aka chen zhen of Putian, Fujian, the People’s Republic of China.

2. The Domain Names and Registrar

The disputed domain names <karenmillendiscount.com> and <karenmillen2011.com> (“Disputed Domain Names”) are registered with Xiamen ChinaSource Internet Service Co., Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2010. On December 20, 2010, the Center transmitted by email to Xiamen ChinaSource Internet Service Co., Ltd. a request for registrar verification in connection with the Disputed Domain Names. On December 21, 2010, Xiamen ChinaSource Internet Service Co., Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On December 28, 2010, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceeding. On December 29, 2010, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 24, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 25, 2011.

The Center appointed Kar Liang Soh as the sole panelist in this matter on January 31, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a UK company founded in 1981 by Ms. Karen Millen. Since then, the Complainant has been using the name KAREN MILLEN in connection with the retail sale of clothing and the KAREN MILLEN brand has become a global business for ladies fashion. The Complainant currently has 288 stores in 39 countries around the world. Sales of the clothing by the Complainant under the KAREN MILLEN mark were £215.2 million in 2009 and are project to be £254.8 million for the year ending January 31, 2011.

The Complainant owns registrations for the trade mark KAREN MILLEN in various jurisdictions including the following:

Jurisdiction Trade mark number Registration date

United Kingdom 2156187A September 11, 1998

European Union 000814038 October 13, 1999

The Disputed Domain Names <karenmillendiscount.com> and <karenmillen2011.com> were both registered on August 2, 2010. Information about the Respondent is limited to that provided in the WhoIs records of the Disputed Domain Names and the Complaint. The disputed domain name <karenmillendiscount.com> redirects to a website at ”www.ikarenmillendress.com” which offered for sale clothing under the trade mark KAREN MILLEN. The disputed domain name <karenmillen2011.com> resolves to a website which also offered for sale clothing under the trade mark KAREN MILLEN. Both websites appear to provide facilities for online purchases of the clothing offered therein.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

1) The Disputed Domain Names are identical or confusingly similar to the trade mark KAREN MILLEN. The distinctive element of the Disputed Domain Names is “karen millen” which is lawfully owned by the Complainant;

2) The Respondent has no right or legitimate interests in respect of the Disputed Domain Names. The Respondent is not connected with the Complainant and is not licensed by the Complainant to use the Disputed Domain Names. The clothing offered for sale on the websites resolved from the Disputed Domain Names are counterfeits and the sale of these clothing has caused considerable damage to the Complainant; and

3) The Disputed Domain Names were registered and are being used in bad faith. The Disputed Domain Names were registered with the sole purpose of selling counterfeit Karen Millen branded products at aggressively low prices via the websites resolved from them. Members of the public have been confused into thinking that these websites were owned and operated by the Complainant and have lodged complaints about the poor quality of products purchased from the websites.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Language of the Proceeding

The Complainant has requested that English be used as the language of the proceeding. The Complainant submitted that the Registrar did not specify a language for the filing of complaints. It is immaterial that the Registrar did not specify a language for the filing of complaints because the language requirement is determined by the Rules. In particular, paragraph 11(a) provides that the default language shall be the language of the registration agreement. Since the registration agreement of the Disputed Domain Names is in Chinese, the default language of this proceeding is Chinese.

Nevertheless, having regard to the circumstances and in exercise of its powers under paragraph 10, the Panel determines that English should be the language of the proceeding. In coming to this determination, the Panel has taken cognizance of the following factors:

1) The Complainant has requested that English be used as the language of the proceeding;

2) The Complainant has already been filed in English;

3) English is the first language of the Complainant, its officers and legal advisors;

4) The websites resolved from the Disputed Domain Names are in fluent English which strongly indicates that the Respondent is familiar and conversant in English;

5) The Complainant would be unfairly prejudiced if it were put to the trouble and expense of having to conduct the proceeding in Chinese; and

6) The Respondent has chosen not to participate in the proceeding and will not be prejudiced by the adoption of English as the language of the proceeding. As such, insisting that Chinese be the language of the proceeding will not assist in the proper conduct of the proceeding.

6.2 Decision

To succeed in the proceeding, the Complainant must establish the following elements of paragraph 4(a) of the Policy:

1) The Disputed Domain Names are identical or confusingly similar to the Complainant’s trade mark;

2) The Respondent has no right or legitimate interest in the Disputed Domain Names; and

3) The Disputed Domain Names were registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant clearly owns trade mark rights in the trade mark KAREN MILLEN, by virtue of the trade mark registrations which were registered many years before the Disputed Domain Names. The only difference between the disputed domain name <karenmillendiscount.com> and the trade mark KAREN MILLEN is the suffix “discount” which is descriptive of the price of goods associated with the trade mark. Similarly, the only different between the disputed domain name <karenmillen2011.com> is the suffix “2011“ which must have been intended to represent the year 2011. Years are typically associated with fashion products.

The Panel considers the word “discount” and the number “2011” are non-distinctive elements which are incapable of distinguishing the Disputed Domain Names from the trade mark KAREN MILLEN. Therefore, the Panel holds that the Disputed Domain Names are confusingly similar to the trade mark KAREN MILLEN within the meaning of the first limb of paragraph 4(a).

B. Rights or Legitimate Interests

The Complainant has already confirmed that the Respondent is not connected with the Complainant and is not licensed by the Complainant to use the Disputed Domain Names. There is no objective basis from the available facts to suggest that the Respondent may legitimately claim any rights or interests in the Disputed Domain Names. The Respondent is an individual and no evidence exists to suggest that the Respondent goes by the name Karen Millen or anything resembling Karen Millen.

The Panel concludes that the Complainant has shown a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Names. Since no Response was filed, this prima facie case is not rebutted. The second limb of paragraph 4(a) is accordingly established on the facts.

C. Registered and Used in Bad Faith

Paragraph 4(b)(iv) of the Policy provides an example of bad faith registration and use:

“[…] by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] web site or location or of a product or service on [the Respondent’s] web site or location.”

The incorporation of the trade mark KAREN MILLEN in the Disputed Domain Names when the Respondent has no rights or legitimate interests thereto is an obvious attempt at associating with the Complainant and the Complainant’s products. The websites resolved from the Disputed Domain Names appear offer online purchasing facilities and are clearly for commercial gain. The inference that the Respondent is using the Disputed Domain Names to attract Internet users to these websites by creating a likelihood of confusion with the Complainant’s trade mark KAREN MILLEN is difficult to deny on the facts.

A reasonable person who visits any of these websites is likely to be misled in relation to the source, sponsorship, affiliation, or endorsement of the website and the products purportedly made available for online sale on the website. The Complainant has provided unchallenged evidence that the websites resolved from the Disputed Domain Names have led to confusion by customers that clothing offered on and purchased from these websites originate from the Complainant.

These facts are consistent with the scenario of paragraph 4(b)(iv) of the Policy. In the circumstances, the Panel is of the view that the third limb of paragraph 4(a) is also established on the facts.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names,<karenmillendiscount.com> and <karenmillen2011.com>, be transferred to the Complainant.

Kar Liang Soh
Sole Panelist
Dated: February 14, 2011

 

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