WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Karen Millen Fashions Limited v. Bernhard Frei
Case No. D2011-1131
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 States of America.
The Respondent is Bernhard Frei of Miami, United States of America.
2. The Domain Name and Registrar
The disputed domain name <karenmillenoutletusa.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and MediationCenter (the “Center”) on July 5, 2011. On July 5, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Disputed Domain Name. On July 6, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 July 12, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 1, 2011. No formal Response was received. However an email communication was received by the Center on August 3, 2011 from […]@hotmail.com. That email communication is discussed further below.
The Center appointed Philip N. Argy as the sole panelist in this matter on August 12, 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.
All other administrative and procedural requirements appear to have been satisfied.
4. Factual Background
The following basic facts, taken from the Complaint and its annexures, are uncontested:
The Complainant owns the registered trademark KAREN MILLEN in classes 3, 9, 18 and 25 in a number of countries covering a range of goods but with a focus on clothing. The Complainant was founded in 1981 by Ms. Karen Millen and her fashions have developed a wide reputation since that time. In 2011 the Complainant operates under the KAREN MILLEN name nearly 300 retail outlets in the Russian Federation, Australia, the Middle East and, in particular, the United States. It also sells clothing at its international website reached via <karenmillen.com> which appears from the Wayback Machine [www.archive.org”] to have been in use since October 2000.
In the year to January 31, 2011 sales of KAREN MILLEN branded clothing exceeded GBP250 million.
The Disputed Domain Name appears to have been registered on March4, 2011. The website to which the Disputed Domain Name resolves offers for sale at very low prices poor quality clothing under the KAREN MILLEN trademark. The Complainant has found the clothing available from that website to be entirely counterfeit product.
5. Parties’ Contentions
The Disputed Domain Name contains the Complainant’s KAREN MILLEN trademark.
The addition of the descriptive words “outlet usa” does not remove the confusing similarity with the Complainant’s trademark but, given that the Complainant operates retail outlets under the KAREN MILLEN brand in United States, can only increase and compound the deception of Internet users.
The Respondent has made no legitimate use of the KAREN MILLEN trademark and does not claim to be known as Karen Millen. The Complainant has not authorized or licensed the Respondent’s use of the KAREN MILLEN trademark.
It is self evident that the Disputed Domain Name was registered with full knowledge of the Complainant’s retail outlets and website with the intention of deceiving Internet users looking for legitimate KAREN MILLEN branded clothing.
The Respondent did not reply to the Complainant’s contentions and no formal Response was filed before the Panel delivered its decision. However, as noted above, an email was received by the Center on August 3, 2011 from a Hotmail address that purported to be from a person with the first initial and family name of the Respondent. That email communication contained the following material statements:
“[E]vidently its [sic] a case of identity theft, because even though they have my name and mailing address, I have no relation whatsoever to the domain in question nor have registered under my name, and absolutely have no idea who email@example.com is. I would like to know if you can track these people down and have this immediately cancelled or modified to the correct owner or registrant, as they are using my name and mailing address without my permission for some unknown purpose.”
The Panel has interpreted the email as a submission from the Respondent disclaiming any interest in the Disputed Domain Name and confirming that it had been registered in his name by a person unknown and without his knowledge or consent.
6. Discussion and Findings
The Complainant bears the onus of proof in relation to the three limbs of the Policy which have to be established. Taking that principle as the starting point, the Panel’s formal findings and reasoning follow.
A. Identical or Confusingly Similar
The Disputed Domain Name plainly includes the Complainant’s primary trademark, KAREN MILLEN, to which it appends the ordinary English word “outlet” and the recognized abbreviation of “usa” for the United States of America, a country in which the Complainant does indeed operate retail outlets.
The addition of “outletusa” to the Complainant’s KAREN MILLEN trademark and its founder’s name does nothing to alleviate and everything to compound the likelihood that Internet users will be confused about the trade source of any products or services referred to on the website to which the Disputed Domain Name resolves. The Disputed Domain Name is self-evidently intended to be confusingly similar to the Complainant’s trademark and the Panel finds it to be so.
B. Rights or Legitimate Interests
The email communication of August 3, 2011 was from a Hotmail account the bona fides of which cannot easily be verified, and which is not the email address recorded for the registrant of the Disputed Domain Name in the WhoIs record kept by the registrar. However, absent any evidence to the contrary, the Panel is prepared to accept it at face value as a statement by a person with the same name and mailing address of the registrant of the Disputed Domain Name. Since that email communication disclaims any right or interest in the Disputed Domain Name, it is easy for the Panel to conclude that the registrant has no such interest. The Panel also takes into account the fact that the email address given in the (public) WhoIs record does not on its face correspond to the name of the Respondent, which makes the August 3 hotmail communication all the more plausible.
C. Registered and Used in Bad Faith
Given that the website to which the Disputed Domain Name resolves appears to be offering counterfeit clothing under the Complainant’s trade mark, and was registered without the knowledge or consent of the person who has the name and address of the registrant, it matters little to the Panel whether the name of the entity appearing in the WhoIs corresponds nominally to the person who beneficially holds the Disputed Domain Name. The Policy requires a finding that the Disputed Domain Name was registered and is being used in bad faith. If the name of the person operating the website to which the Disputed Domain Name resolves is not the name of the person appearing in the WhoIs for the Disputed Domain Name then the Disputed Domain Name was registered and is being used in bad faith by a person or persons unknown. Alternatively, the Respondent has provided a false or misleading email communication to the Center which is itself evidence from which the Panel can infer the requisite bad faith. The Panel again takes into account the fact that the email address given in the WhoIs record does not correspond to the name of the Respondent, which adds credibility to the August 3 hotmail communication’s disavowal.
Whichever view one takes, the Panel can be, and is, satisfied beyond doubt that the Disputed Domain Name was registered in bad faith and is being used in bad faith and the Panel so finds.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <karenmillenoutletusa.com> be transferred to the Complainant.
Philip N. Argy
Dated: August 25, 2011