WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Karen Millen Fashions Limited v. Brian Condon
Case No. D2011-1136
1. The Parties
The Complainant is Karen Millen Fashions Limited of Oxfordshire, United Kingdom of Great Britain and Northern Ireland, represented by Heatons LLP, United Kingdom of Great Britain and Northern Ireland (“UK”).
The Respondent is Brian Condon of Arizona, United States of America (“USA”).
2. The Domain Name and Registrar
The disputed domain name <karenmillenukoutlet.com> 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 6, 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, the Complainant filed an amended Complaint. On July 8, 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 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 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 2, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 3, 2011.
The Center appointed Petter Rindforth 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 Panel shall issue its Decision based on the amended Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in the English language.
4. Factual Background
The Complainant is the owner of the trademark KAREN MILLEN, registered as:
CTM No 000814038 KAREN MILLEN (word)
Registered on October 13, 1999 in respect of goods in classes 3, 18 and 25
(Copy of the Certificate of Registration provided as Annex 3 of the Complaint).
The disputed domain name <karenmillenukoutlet.com> was created on March 4, 2011.
No detailed information is provided about the Respondent’s activities, apart from what is mentioned below by the Complainant.
5. Parties’ Contentions
The Complainant states that it is the registered proprietor of an international portfolio of registered trademarks for the mark KAREN MILLEN, and that the Complainant has used KAREN MILLEN in connection with the retail sale of clothing since the Complainant was founded by Ms Karen Millen in 1981. According to the Complainant, KAREN MILLEN has become a global business at the forefront of ladies fashion, and the Complainant currently trades from over 288 stores in 39 countries. The Complainant is also using an international website at “www.karenmillen.com” to sell and deliver clothes. The Complainant informs that the 2010 sales of clothing under the KAREN MILLEN trademark was GBP 215.2 million.
The Complainant states that the disputed domain name is virtually identical to the Complainant’s registered trademark.
According to the Complainant, the Respondent has no rights or legitimate interests in respect of <karenmillenukoutlet.com>, as the Respondent is not connected with the Complainant, nor is the Respondent licensed by the Complainant to use the disputed domain name. The Respondent is offering KAREN MILLEN marked products for sale on the website connected with the disputed domain name, the said products identified by the Complainant as counterfeited goods.
Finally, the Complainant states that the Respondent has registered and is using the disputed domain name in bad faith, claiming that <karenmillenukoutlet.com> has been registered solely for the purpose of offering for sale counterfeited goods market with the Complainant’s trademark. Members of the public have been confused into thinking that the website connected to the disputed domain name is owned and operated by the Complainant and, upon receipt of poor quality garments purchased from the Respondent’s website, have complained directly to the Complainant’s customer service.
The Complainant requests that the Panel issue a decision that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is the owner of the KAREN MILLEN trademark, registered in a number of countries, including the European Community trademark KAREN MILLEN (word) from 1999. See Koninklijke KPN N.V. v. Telepathy Inc., WIPO Case No. D2001-0217 (finding that “the Policy does not require that the mark be registered in the country in which the Respondent operates. It is sufficient that the complainant can demonstrate a mark in some jurisdiction”).
The relevant part of the disputed domain name is “karenmillenukoutlet”. The Panel concludes that the disputed domain name consists of the Complainant’s trademark KAREN MILLEN, with the addition of the ISO (International Organization for Standardization) country code for UK, and the generic word “outlet”.
This does not preclude a finding of confusingly similarity between the trademark and the disputed domain name. For pure technical reasons, there are only two ways to create a domain name based on a two worded trademark: either to write the two worded trademark with a hyphen, or – as in this specific case – combine the two words into one. Further, the addition of UK seems to refer to the home country of the Complainant, and “outlet” may well indicate that the domain name is related to a specific website of the Complainant. See Scholastic Inc. v. 366 Publications, WIPO Case No. D2000-1627, holding that “[t]he addition of the generic term ”online” is not a distinguishing feature. In fact, in this case it seems to increase the likelihood of confusion because it is an apt term for [the] Complainant’s online business”; see also Bang & Olufsen a/s v. BlueHost.com- INC , and Chris Albano, WIPO Case No. D2010-0406, “the minor change from Bang & Olufsen to bang-olufsen, and the addition of the generic word “outlet”, as a suffix after the words “bang-olufsen”, in the Domain Name, does little to distinguish the Domain Name from the Trade Mark, and the likelihood of confusion between the Domain Name and the Trade Mark is high”.
The Panel therefore concludes that <karenmillenukoutlet.com> is confusingly similar to the Complainant’s trademark KAREN MILLEN.
B. Rights or Legitimate Interests
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy, see Clerical Medical Investment Group Limited v. Clericalmedical.com (Clerical & Medical Services Agency), WIPO Case No. D2000-1228 (finding that, under certain circumstances, “the mere assertion by the Complainant that the Respondent has no right or legitimate interest is sufficient to shift the burden of proof to the Respondent to demonstrate that such a right or legitimate interest does exist”).
The Respondent is apparently not an authorized agent or licensee of the Complainant and has no other permission from the Complainant to apply for any domain name incorporating the trademark KAREN MILLEN.
By not submitting a Response, the Respondent has failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name, or to rebut the Complainant’s prima facie case under this paragraph of the Policy.
There is nothing in the Respondent’s name that indicates it may have become commonly known by the disputed domain name, enabling it to establish a legitimate interest in the disputed domain name thereby.
As shown by the Complainant (Annex 4 of the Complaint), the Respondent is using <karenmillenukoutlet.com> for a website offering KAREN MILLEN market products, suspected by the Complainant to be counterfeited goods.
The Panel concludes that such use, counterfeited goods or not, cannot constitute a bona fide use of the domain name pursuant to paragraph 4(c)(i) of the Policy. See Mpire Corporation v. Michael Frey, WIPO Case No. D2009-0258 (stating that “the Respondent is not connected with the Complainant, but uses the Complainant’s mark with an intention to derive advantage from user confusion. Such use by the Respondent is not legitimate use and does not confer any rights in favor of the Respondent”), see also Sanofi-Aventis v. DomainsByProxy.com and Ravikant Singh, WIPO Case No. D2007-0540 (“The mere fact that the owner of a website is selling another’s branded product on the Internet does not give the owner of the website the right to register a domain name incorporating another’s trademark”).
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant is a U.K. based company, referring to a trademark registered within the European Union, whereas the Respondent’s home country is the USA.
However, the disputed domain name is clearly referring to the Complainant, as it consists of the trademark KAREN MILLEN, followed by the country code UK (the Complainant’s home country), and the descriptive word “outlet”.
Further, the disputed domain name is used for a website that refers to the Complainant’s goods in a way that the Panel concludes is a deliberate attempt to create a likelihood of confusion with the Complainant’s trademark and services as to the source, sponsorship, affiliation, or endorsement of the website connected with the domain name. See Swarovski Aktiengesellschaft v. Chen Meifeng, WIPO Case No. D2011-0364 (“the incorporation of Complainant’s trademark in the disputed domain name combined with the content featured on the domain name exhibits intent to deceive consumers into believing that the domain name is somehow associated with, affiliated with, and/or endorsed by the Complainant. Continued use of the domain name in this manner contributes to a risk of consumers mistakenly believing that the products featured are offered, sponsored, endorsed, or otherwise approved by Complainant, thereby diverting web traffic from Complainant’s <swarovski.com> and <swarovski.net> domain names”).
In the absence of any response from the Respondent, this Panel cannot draw any other conclusion than the one that the Respondent has tried to create an illusion of commercial relationship with, or endorsement from, the Complainant.
Thus, the Panel concludes that the domain name is both registered and used in bad faith, and that the Complainant has succeeded in proving the three elements within paragraph 4(a) 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, <karenmillenukoutlet.com> be transferred to the Complainant.
Dated: August 15, 2011