WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Karen Millen Fashions Limited v. Karen Riley
Case No. D2011-1893
1. The Parties
The Complainant is Karen Millen Fashions Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Heatons LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Karen Riley of NanNingShi, Guangxi, People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <karenmillendressesuk.com> is registered with Todaynic.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 1, 2011. On November 1, 2011, the Center transmitted by email to Todaynic.com, Inc. a request for registrar verification in connection with the disputed domain name. On November 11, 2011, Todaynic.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 November 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 1, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 2, 2011.
The Center appointed Ross Wilson as the sole panelist in this matter on December 13, 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’s business was founded in England by Ms. Karen Millen in 1981 and it has been using the name KAREN MILLEN in connection with the retail sale of clothing since its commencement. It has expanded over the last thirty years to become a global business at the forefront of ladies fashion with over 288 stores in 39 countries in the areas of Europe, the Americas, Russia, Australasia and the Middle East. In addition to the shops the Complainant sells and delivers clothing from its website. Sales of clothing by the Complainant under the KAREN MILLEN mark exceeded £215 million in 2010.
The Complainant is the proprietor of an international portfolio of registered trademarks for the mark KAREN MILLEN including the United Kingdom and other countries in Europe. The Complainant’s Community Trademark was registered on October 13, 1999.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is virtually identical to its registered trademark. The distinctive element of the disputed domain name is “Karen Millen” and the Complainant is the lawful owner of the KAREN MILLEN mark.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name that is the subject of the Complaint. The Complainant states that the Respondent is in no way connected with the Complainant and is not licensed by the Complainant to use the disputed domain name and yet the Respondent has been offering KAREN MILLEN branded product for sale via its website to which the disputed domain name points. The Complainant states that the clothing sold from the Respondent’s website has been verified as being counterfeit and these sales have been causing considerable damage to the Complainant’s business.
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. The disputed domain name has been used solely for the purposes of offering for sale and selling counterfeit KAREN MILLEN branded products at aggressively low prices via the Respondent’s website. Also, the Complainant argues that 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, complaints have been made to the Complainant’s customer service representatives.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant provided evidence demonstrating that it has registered rights in the trademark KAREN MILLEN since 1999.
The only difference between the Complainant’s trademark and the disputed domain name is the addition of the term “dressesuk” made up of the descriptive word “dresses” and the geographical location “uk”, neither of which can be considered distinctive. As found in Revlon Consumer Products Corporation v. Amar Fazil, WIPO Case No. D2011-0014 and Tag Heuer S.A. v. JBlumers Inc. Jerald Blume, WIPO Case No. D2004-0871 the addition of a descriptive term does not serve to distinguish a disputed domain name but, serves to accentuate rather than to diminish the confusing similarity. Also, the addition of a geographical indicator does not serve to distinguish it from the Complainant’s mark (see L’Oreal v. Liao Quanyong, WIPO Case No. D2007-1552).
In view of the above, the Panel finds that the Complainant’s trademark is readily recognizable as such within the disputed domain name despite the addition of the words “dressesuk” and, overall, it is likely to lead to Internet user confusion. Therefore, the Complainant has proven that the disputed domain name is identical or confusingly similar to the trademark in which it has demonstrable rights. The Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out how a respondent can demonstrate rights to or legitimate interests in a disputed domain name. In this case, the Respondent has not filed any submission or evidence to demonstrate its rights or legitimate interests in the disputed domain name. Consequently, paragraph 14(b) of the Rules allows the Panel, in the absence of exceptional circumstances, to draw such inferences from the absence of a Response from the Respondent as it considers appropriate.
The Panel finds that the Respondent is trying to benefit from the reputation of the Complainant’s widely-known trademark. The Respondent has chosen to use the disputed domain name that contains the Complainant’s trademark in its entirety without authorisation by the Complainant. According to the Complainant’s unrefuted allegations the disputed domain name resolved to a website which is strikingly similar to the Complainant’s website and was used to sell counterfeit dresses. No rights or legitimate interests derive from this type of use of another’s trademark. Previous UDRP panels have held that rights and legitimate interests cannot be created where the respondent would not choose such a domain name unless it was seeking to create an impression of association with the complainant (see Drexel University v. David Brouda, WIPO Case No. D2001-0067).
There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the disputed domain name. In addition, the Complainant has denied having any connection with the Respondent or providing any license or authorisation at all. In Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055, the panel stated, “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by the Respondent”.
Despite the opportunity provided through this administrative procedure, the Respondent has chosen not to rebut the Complainant’s case or assert any rights in the disputed domain name.
Based on the above, the Panel considers the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel is satisfied that the Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
For the purposes of determining if there was bad faith registration and use, the Panel considered the circumstances of the registration and use of the disputed domain name as set out in paragraph 4(b) of the Policy, noting that it does not impose any limitation on how the registration and use of the disputed domain name in bad faith may be evidenced.
The Panel considers that the Complainant has made a case that the Respondent has registered and used the disputed domain name in bad faith.
The Respondent’s use of the disputed domain name represents deliberate disregard of the Complainant’s trademark rights. Clearly the Respondent knew of the Complainant’s well-known trademark at the time of registration because the Complainant’s mark is used in its entirety in the disputed domain name and the website to which it resolves is deceptively similar to the Complainant’s website which incorporates images of the Complainant’s trademark. As expressed in Singapore Airlines Limited v. European Travel Network, WIPO Case No. D2000-0641, where the selection of domain names is so obviously connected to the complainant’s trademark their very use by someone with no connection with the company suggests opportunistic bad faith. Similarly, in Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409, where the respondent registered a number of domain names incorporating a well-known trademark in its entirety, the panel stated, “that it is inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the complainant”.
In fact in this case by copying the style of the Complainant’s genuine website the Respondent was deliberating confusing Internet users in order to create the impression that users would be purchasing the Complainant’s products at discounted prices. In similar circumstances in Hermes International v. Jody Chris, Hairlord, WIPO Case No. D2011-0047 the panel found bad faith had been demonstrated because “the Respondent had knowledge of the reputation and goodwill of the HERMES trademark when it sought to register the disputed domain name and it intended to use and indeed used this disputed domain name to sell counterfeit or unauthorised imitations of the Complainant’s Hermes products”.
Noting that the Respondent has not rebutted any of the Complaint the Panel considers that the Respondent’s choice of the disputed domain name was a deliberate action to gain a commercial advantage. As stated in Oakley, Inc. v. Joel Wong/Blue Host.com- INC., WIPO Case No. D2010-0100 “It is inconceivable that the Respondent registered the disputed domain name without prior knowledge of the Complainant’s rights”.
On the basis of the above and the Respondent posing as the Complainant to sell counterfeit dresses and the fact that the Respondent has no rights or legitimate interests in the disputed domain name, the Panel is satisfied that the Respondent’s conduct falls within paragraph 4(b)(i) and 4(b)(iv) of the Policy. Therefore, the Panel finds that the Complainant has demonstrated that the disputed domain name was registered and used in bad faith.
For 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 <karenmillendressesuk.com> be transferred to the Complainant.
Dated: December 23, 2011