WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Karen Millen Fashions Limited v. Danny Cullen
Case No. D2011-1134
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 Danny Cullen of Pasadena, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name is <karenmillenoutletonline.com> (the “Domain Name”), which is registered with GoDaddy.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 GoDaddy.com, Inc. a request for registrar verification in connection with the 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 19, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 8, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 9, 2011.
The Center appointed William P. Knight as the sole panelist in this matter on August 15, 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 Panel, noting that the Complainant states in the Complaint that the goods offered by the Respondent on its website under the Domain Name had been “verified as being counterfeit” and that “members of the public have been confused into thinking that the website to which the Domain Name points is owned and operated by the Complainant and upon receipt of poor quality garments purchased from the website, complaints have been made to Complainant’s customer service representatives” but that no supporting evidence was provided in respect of these claims, by Administrative Panel Procedural Order No. 1 dated September 4, 2011 allowed the Complainant a further period of 7 days to provide such evidence. The Complainant requested a further 7 days to do so, and such request was granted. On each occasion, the Respondent has been informed of the extension and invited to any reaction received from the Complainant, if it wished to do so.
4. Factual Background
The Complainant is a company incorporated under the laws of England and Wales which has established a worldwide reputation in respect of its clothing products, in particular women’s clothing using the trade mark KAREN MILLEN, which it and its predecessors in tile have been using since 1981. The Complainant relies upon trade mark registrations for KAREN MILLEN as a significant component around the world, including in the United Kingdom, as well as Community Trade Mark, referred to in the Complaint.
The Respondent, who has provided an address in Pasadena in the United States, registered the Domain Name on April 15, 2011. The Domain Name is used as the address for a website devoted to the sale of what appear to be the Complainant’s products.
5. Parties’ Contentions
The Complainant asserts that the Domain Name is confusingly similar to the KAREN MILLEN trade mark in that the dominant component of the Domain Name is said to be the word “karenmillen”, the additional words “outletonline” and the top level domain “.com” not being sufficient to render the Domain Name distinct from the Complainant’s trade mark.
The Complainant further asserts that it has not permitted the Respondent to use the KAREN MILLEN trade mark.
The Complainant also states that the Respondent “is in no way connected with the Complainant and is not licensed by the Complainant to use the Domain Name”, that “[t]his clothing has been verified as counterfeit and these sales have been causing considerable damage to the Complainant’s business” and that “members of the public have been confused into thinking that the website to which the Domain Name points is owned and operated by the Complainant and upon receipt of poor quality garments purchased from the website, complaints have been made to Complainant’s customer service representatives.” However, notwithstanding being requested to provide its evidence supporting these claims, the Complainant was unable to do so.
The Respondent did not reply to the Complainant.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must establish each of the following three elements to prevail in its request for transfer of the Domain Name from the Respondent:
1. The Respondent’s Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
2 The Respondent has no rights or legitimate interests in respect of the Domain Name; and
3. The Domain Name has been registered and is being used in bad faith.
Notwithstanding the failure of the Respondent to respond to the Complaint in this matter, the Complainant still bears the burden of proof on each of these elements.
The Respondent’s default does not automatically result in a determination in favour of the Complainant. The failure of the Respondent to argue its case does not mean that the Panel must accept the propositions of the Complainant. As the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), section 4.6, observes, there are many examples of cases (typically involving complaints based on wholly unsupported assertions or mere conclusory statements) to which there has been no response where (not withstanding such respondent default) the decision has nonetheless gone in favor of the respondent on grounds that the complainant has failed to prove its case; see Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383, amongst others. Whilst there are certain matters that a panel may accept upon the assertion of a complainant that is not contradicted by the respondent, such as the ownership of trade mark rights or a certain trading history (particularly in the case of well-known marks), in the Panel’s view an assertion of dishonesty (such as, for example, offering for sales goods said to be counterfeit) on the part of the person is not among them. To this Panel, if such assertion is essential to the complainant’s claim, and is not supported in any way, then the Complaint will typically fail.
Furthermore, a complainant, particularly a complainant that is legally represented, should not, in the Panel’s view, be given more opportunity to support its claims than would be provided to a respondent in the same circumstances. It is fundamental to the Policy that the procedures under it be simple and speedy, without undue opportunities for filing or requesting additional evidence or submissions on the part of either party. Again, particularly if a party is legally represented, it is to be expected that it would be adequately informed of these requirements. In this particular case, the Panel has found it appropriate to grant both parties an opportunity to make further submissions to supplement the record in light of certain claims made (as described in Paragraph 3 above). However, parties (especially represented parties) should not rely on such opportunities in UDRP proceedings in which the usual process is for each party to state its case in a single round of pleadings.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has registered trade mark rights in KAREN MILLEN. The Panel is satisfied that the Domain Name is confusingly similar to the Complainant’s KAREN MILLEN trade mark in that the dominant component of the Domain Name is the word “karenmillen” and the words “outletonline” and the top level domain “.com” in the Domain Name are not distinctive.
The first element of the UDRP is satisfied.
B. Rights or Legitimate Interests
It is not disputed that the Respondent is not licensed by the Complainant nor, presumably, by any of the Complainant’s related corporations, to use the KAREN MILLEN trade mark in the Domain Name. The Respondent does not pretend to be known by the name KAREN MILLEN. The further question of whether the Respondent has a legitimate interest in the Domain Name is a much more difficult one.
The Complainant argues that, because the Respondent is not authorized by it to use the trade mark KAREN MILLEN in the Domain Name, then it is automatically entitled to a finding that the Respondent not only has no rights or legitimate interests in the Domain Name but that it must be using the Domain Name in bad faith.
Contrary to the Complainant’s argument, there are a number of circumstances in which a person may have a right or a legitimate interest in using another’s trade mark in a domain name. Relevant to this matter, if a person were using the trade mark in a proper and fair manner to refer to the character or quality of the goods being offered, that would be a permissible use. According to WIPO Overview 2.0, section 2.3, “[n]ormally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trade marked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trade mark holder”; see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The Oki Data decision related to an authorized reseller, but the same principles have been adopted in respect of an unauthorized reseller; see Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946, and National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc., WIPO Case No. D2007-1524, but it is noted that there is a minority opinion that favours the Complainant’s argument. The Panel prefers the majority view.
In the Panel’s assessment in this particular case, there is no doubt, it would appear from the Complaint and an inspection of the Respondent’s website, that the Respondent’s website purports to be devoted exclusively to promoting the Complainant’s products for sale. Although there have been a supplemental round of pleadings, the Panel finds that the Complainant has been unable to substantiate its assertion in the Complaint that the goods offered on the Respondent’s website are counterfeit and that there have been complaints regarding goods purchased from the Respondent’s website transpire. The mere fact that they appear to be cheap is not, in this Panel’s assessment here, of itself enough to justify a conclusion in this regard. Evidence to gauge relevant pricing was not supplied. The Complainant states that it does not concern itself any more with “trap” purchases. The Complainant appears to expect that its unsubstantiated assertion of registrant dishonesty should be accepted without question. In the circumstances of this case, the Panel is reluctant to do so.
In this Panel’s view, the fact alone that the Complainant has not supplied its goods to the Respondent, or licensed the Respondent to use the KAREN MILLEN trade mark or authorized the Respondent to use the Domain Name does not automatically support a conclusion that the Respondent has no rights or legitimate interests in the Domain Name or, indeed, that the goods offered by the Respondent are not genuine. The goods may be diverted or “grey” market goods. There is nothing here to say they are not, and there is nothing that has been drawn to the Panel’s attention to show that, for example, the Respondent has engaged in sale of counterfeit goods, or that the Respondent is a serial cybersquatter. (Indeed, the Panel has been unable to find any indication online that the Respondent has appeared in any prior UDRP decisions issued under the Policy, let alone decisions resulting in finding against it.) It is for these reasons that some evidence supporting the Complainant’s claim that the goods are counterfeit is central to its Complaint in this particular case. The Complainant argues that this proceeding concerns misuse of its trade mark, and it therefore should not have to support its claims of the Respondent’s dishonesty. Such an argument overlooks the requirements of the Policy to establish, on the balance of probabilities, both a lack of rights or a legitimate interest in the Domain Name and bad faith. The burden on a complainant is not heavy in the absence of contradiction from a respondent – some evidence would suffice in these circumstances, but a failure to provide any cannot be taken to establish anything.
The only consideration under the Oki Data principles in respect of which there is some doubt in the Panel’s view is the third, that the site must accurately disclose the Respondent’s relationship with the Complainant. For example, the site must not falsely suggest that it is operated by the trade mark owner, or that it is the official site if, in fact, it is only one of many sales agents; see Houghton Mifflin Co. v. The Weathermen, Inc., WIPO Case No. D2001-0211 (no bona fide offering where website’s use of Complainant’s logo, and lack of any disclaimer, suggested that website was the official Curious George website); R.T. Quaife Engineering, Ltd. and Autotech Sport Tuning Corporation d/b/a Quaife America v. Bill Luton, WIPO Case No. D2000-1201 (no bona fide offering because domain name <quaifeusa.com> improperly suggested that the reflected site was the official United States website for Quaife, an English company.
The Panel’s assessment of the cited authorities in respect of this criterion make it clear that the predominant concern is deceptiveness in the subject website, in the sense of conduct likely to mislead Internet users as to some relationship between the website operator and the trade mark owner. Conversely, if the absence of such a relationship is obvious from the website, even if not expressly stated, so that no reasonable person could be misled in the required way, this should be sufficient to absolve the website operator. The Panel further notes that, in the case of a group of companies, only one of which may be the trade mark owner and complainant, the website operator is not required to make clear an absence of a relationship (if that be the case, as here), with that company, but may meet this requirement by making clear the absence of any relationship with the complainant or any related entity or other entity capable of authorizing the website operator to use the domain name in suit. In this case, in the Panel’s view, most Internet users of average intelligence would be unlikely to confuse the Website as being owned or endorsed by the Complainant for two reasons: first, the Domain Name itself purports to describe the Respondent as an “outlet”; second, the English language descriptions used on the website are of a very poor standard, unlikely to be attributed to the Complainant, such as:
“Today’s Karen Millen England from a small clothing store in the country, suddenly become a store brand 150 multinational groups, in addition to the prestigious Women series, karen millen coats Originally the size of the store is not large, most of the clothing is also entrusted to the family of the master pattern making, in such hard work of small businesses under, Karen Millen and opened in England, two branches had also due to financial difficulties had, finally get through after the 1989 finally in London shop, which is located the first King’s Road shop, began to Karen and her partner have tasted the fruits of a large profit”.
Had the Complainant provided evidence to substantiate its claim in this case that the goods offered on the website were counterfeit (because, for example, they had been obtained and validated by an appropriate person as such), the Panel would have had little hesitation in concluding that the offering on the website was not bona fide for the purposes of the Policy. However, the Panel sees no such evidence in this record.
The Panel accordingly concludes that the Complainant has failed to establish, on the balance of probabilities, that the Respondent does not have a right or legitimate interest in the Domain Name.
C. Registered and Used in Bad Faith
The Complainant having failed on the second ground required to be established by it under the Policy, there is no need to make a determination regarding the third. However, it should be noted that, in cases such as these, the considerations relevant to the determination of the right or legitimate interest of the Respondent in the Domain Name tend to be similarly relevant to the issue of registration and use in bad faith, in the sense that expression is used in the Policy. In any event, for the reasons mentioned, the Panel concludes that the Complainant has failed on balance to prove its case in these particular Policy proceedings.
For the foregoing reasons, the Complaint is denied.
William P. Knight
Dated: September 24, 2011