WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Karen Millen Fashions Limited v. passion international trade
Case No. D2011-1132
1. The Parties
The Complainant is Karen Millen Fashions Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Heatons LLP, United Kingdom.
The Respondent is passion international trade of Xiamen, Fujian, China.
2. The Domain Name and Registrar
The disputed domain name <karenmillenoutlet-usa.com> (“the Domain Name”) is registered with Bizcn.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 5, 2011. On July 5, 2011, the Center transmitted by email to Bizcn.com, Inc. a request for registrar verification in connection with the Domain Name. On July 6, 2011, Bizcn.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. On July 6, 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 Complainant submitted a request that English be the language of the proceeding and the Respondent indicated in English that the website connected to the Domain Name (“the Website”) would be closed. However, the Respondent did not comment on the language of the proceeding by the specified due date. In response to a notification by the Center regarding the registrant information, the Complainant filed an amended Complaint on July 6, 2011.
The Center verified that the Complaint together with the amended 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. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 2, 2011.
The Center appointed Karen Fong as the sole panelist in this matter on August 10, 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.
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceedings.
The language of the Registration Agreement is Chinese. However, having considered the Complainant’s submissions in its email to the Center on July 6, 2011, the Panel accepts that the Respondent is familiar with the English language as the Website is an English language website and it has also communicated with the Center via email in English. The Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. Furthermore, the Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English, and the Respondent did not comment on the language of the proceeding by the specified due date. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
4. Factual Background
The Complainant is a retail clothing chain founded in England by Ms. Karen Millen in 1981. The Complainant currently trades from over 288 Karen Millen stores in 39 countries from Europe to United States of America, Russian Federation, Australasia and the Middle East. Sales of clothing by the Complainant under the KAREN MILLEN trade mark were 215.2 million pounds last year.
The Complainant has a worldwide portfolio of registered trade marks for KAREN MILLEN including United Kingdom trade mark registration number 2156187A and Community trade mark registration number 000814038. The CTM was registered April 27, 2008. The Complainant also owns the domain name <karenmillen.com> which is connected to an international website “www.karenmillen.com” from which it sells and delivers clothing.
The Domain Name was registered on May 2, 2011. At the time of filing of the Complaint, the Domain Name resolved to an active Website which appears to be selling and offering for sale clothing under the Karen Millen brand at marked down prices.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to the KAREN MILLEN trade mark; the Respondent has no rights or legitimate interests with respect to the Domain Name; and that the Domain Name was registered and used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
B. Identical or Confusingly Similar
The Panel accepts that the Complainant has established that it has rights to the trade mark KAREN MILLEN and that the KAREN MILLEN brand is well-known in the clothing industry.
The Complainant’s registered trade mark, KAREN MILLEN, is the dominant portion of the Domain Name. The addition of the descriptive term “outlet” and geographical term “USA” do nothing to minimise the risk of confusing similarity. Moreover, for the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the generic domain suffix “.com”. The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
The Complainant contends that the Respondent is not connected to the Complainant and is not licensed by the Complainant to use the Domain Name. Further, the Karen Millen branded products sold on the Website have been verified by the Complainant as counterfeit.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
The Complainant contends that the Domain Name was registered solely for the purpose of offering for sale and selling counterfeit Karen Millen products on the Website at aggressively low prices. Since the KAREN MILLEN trade mark has been used and registered prior to the registration of the Domain Name, the Respondent either knew or ought to have known of the Complainant’s use and rights in the KAREN MILLEN trade mark especially since it is offering to sell and selling counterfeit Karen Millen products. The Panel is satisfied that the Respondent must have been aware of the Complainant’s mark when it registered the Domain Name. The fact that the Domain Name incorporates the Complainant’s well-known trade mark in its entirety is in the Panel’s view evidence that the registration of the Domain Name was in bad faith.
The Panel also concludes that the actual use of the Domain Name is in bad faith. Not only is the KAREN MILLEN trade mark used on the Website, it purports to sell the Karen Millen branded products. There is a clear intention to attract for commercial gain by confusing and misleading Internet users into believing that the Respondent’s Website is and the products sold on them are authorised or endorsed by the Complainant. The Complainant has alleged that members of the public have made complaints to the Complaint’s customer service representatives. However, no evidence was submitted to substantiate this. In any event, upon receipt of the Complaint, the Respondent emailed the Center to inform that it will remove the Website. This could be taken to be an admission that the Complainant’s complaint was justified. The above clearly shows bad faith under paragraph 4(b)(iv) of the Policy.
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, <karenmillenoutlet-usa.com>, be transferred to the Complainant.
Dated: August 24, 2011