WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Karen Millen Fashions Limited v. Chen Zhenling
Case No. D2011-0081
1. The Parties
The Complainant is Karen Millen Fashions Limited of Witney, Oxfordshire, United Kingdom of Great Britain and Northern Ireland, represented by Heatons LLP, United Kingdom.
The Respondent is Chen Zhenling of Putian, Fujian Province, the People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <karenmillensell.com> is registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 14, 2011. On January 17, 2011, the Center transmitted by email to Beijing Innovative Linkage Technology Ltd. dba dns.com.cn a request for registrar verification in connection with the disputed domain name. On January 18, 2011, Beijing Innovative Linkage Technology Ltd. dba dns.com.cn transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details. On January 19, 2011, the Center transmitted an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Center requested the Complainant to submit an amendment regarding the information of the concerned Registrar.
On January 19, 2011, 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 Complainant filed an amended Complaint on January 19, 2011.
The Center has verified that the Complaint together with the amended Complaint satisfy 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 25, 2011. In accordance with the Rules, paragraph 5(a), the due date for the Response was February 14, 2011. The Respondent did not submit any Response. Accordingly, the Center notified the parties of the Respondent’s default on February 15, 2011.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on February 21, 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 company incorporated in the United Kingdom and the owner of an international portfolio of registrations for the trade mark KAREN MILLEN (the “Trade Mark”), including in particular a CTM registration and a United Kingdom national registration.
The Respondent is an individual apparently with an address in China.
The disputed domain name was registered on August 14, 2010.
5. Parties’ Contentions
The Complainant made the following submissions in the Complaint.
The Complainant has been using the Trade Mark in connection with the retail sale of women’s fashion clothing since 1981. The Complainant currently operates 288 stores in 39 countries and has an international website, “www.karenmillen.com”, from which it sells and delivers clothing. Sales by the Complainant of clothing under the Trade Mark are expected to be £254.8 million for the year ended January 31, 2011 and were £215.2 million in the previous year.
The disputed domain name is virtually identical to the Trade Mark. The distinctive element of the disputed domain name is the Trade Mark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is in no way connected to the Complainant and is not licensed by the Complainant to use the disputed domain name. The website to which the disputed domain name is resolved (the “Website”) offers for sale unauthorised counterfeit products under the Trade Mark. This is causing considerable damage to the Complainant’s business.
The Respondent has registered and is using the disputed domain name in bad faith. The disputed domain name has been registered solely for the purpose of offering for sale and selling counterfeit clothing under the Trade Mark at aggressively low prices via the Website. Members of the public have been confused into thinking that the Website is owned and operated by the Complainant and upon receipt of poor quality garments purchased from the Website, have made complaints to the Complainant’s customer service representatives. The Complainant included its customer service log relating to such complaints as an exhibit to the Complaint.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of the Proceeding
The language of the Registration Agreement for the disputed domain names is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. No agreement has been entered into between the Complainant and the Respondent to the effect that the proceeding should be English.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co.ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).
The Complainant has requested that English be the language of the proceeding for the following reasons:
(1) The Complainant is a company registered in England and Wales and English is the first language of the Complainant, its officers and legal advisors;
(2) The Respondent is completely familiar with and conversant in the English language, as is apparent from visiting the Website. In particular, all content on the Website is written in English and the Website has been designed so as to confuse English speaking customers into thinking that the Website is actually that of the Complainant;
(3) There is no prejudice to the Respondent for the language to be in English, whereas the Complainant would be unfairly prejudiced if it were to be put to the trouble and expense of having to conduct the proceeding in Chinese; and
(4) The Registration Agreement does not specify a language in which the Complaint should be filed.
The Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
The Panel finds that sufficient evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language (Finter Bank Zurich v. Shumin Peng, supra).
In view of the above, it is not foreseeable that the Respondent will be prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding.
B. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate the date of registration of the disputed domain name by 30 years.
UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
It is also established that the addition of generic terms to the disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does generally not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
In the present case, the disputed domain name contains the Trade Mark in its entirety. The Panel concludes that the addition of the non distinctive word “sell”, a word frequently used in retailing and marketing of branded goods, does not serve to distinguish the disputed domain name from the Trade Mark in any way.
The Panel finds that the disputed domain name is confusingly similar to the Trade Mark.
The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name by three decades. There is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v.Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Complainant has asserted that the Website is used by the Respondent to market and sell counterfeit goods under the Trade Mark at aggressively low prices and that, as a result of such conduct, the Complainant’s customer service representatives have received complaints. There can be no legitimate interest in the sale of counterfeits (Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750).
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
“By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location.”
The Complainant has submitted compelling evidence that the disputed domain name has been used to offer for sale counterfeit products under the Trade Mark via the Website. This is strong evidence of bad faith (Prada S.A. v. Domains For Life, WIPO Case No. D2004-1019).
The Panel therefore finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
The Panel further notes that, at some stage following the filing of the Complaint, the Respondent ceased active use of the Website. In the present circumstances, the Panel finds these amounts to further evidence of bad faith as was held in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Given the circumstances of this case, the Panel also considers the failure of the Respondent to file a Response to the Complaint further supports an inference of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 name <karenmillensell.com> be transferred to the Complainant.
Sebastian M.W. Hughes
Dated: March 1, 2011