World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Karen Millen Fashions Limited v. Fu Zhou Jin Shan, fjc003 fjc003

Case No. D2011-2109

1. The Parties

The Complainant is Karen Millen Fashions Limited of Oxfordshire, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Heatons LLP, UK.

The Respondent is Fu Zhou Jin Shan, fjc003 fjc003, of Fu Zhou Fu Jian, China.

2. The Domain Name and Registrar

The disputed domain name <karenmilleraustralia.com> is registered with GoDaddy.com, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2011. On December 2, 2011, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On the same date, GoDaddy.com, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Complainant filed an amended Complaint on December 9, 2011 in response to a notification by the Center that the Complaint was administratively deficient due to the fact that the registrant of record was not the person/entity specified in the Complaint as the Respondent.

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 December 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 2, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 9, 2012.

The Center appointed Gustavo Patricio Giay as the sole panelist in this matter on January 26, 2012. 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 is Karen Millen Fashions Limited, a company incorporated under the laws of the UK.

The Complainant was founded in 1981 by Karen Millen and is engaged in the retail sale of clothing.

The Complainant currently trades from over 288 stores in 39 countries.

The Complainant owns several trademark registrations for KAREN MILLEN. Particularly, UK Registration No. 2156187A, KAREN MILLEN , in classes 3, 9, 18 and 25; and European Community Registration No. 000814038, KAREN MILLEN, in classes 3, 18 and 25.

The Respondent is Fu Zhou Jin Shan, fjc003 fjc003, located in China.

The disputed domain name <karenmilleraustralia.com> was registered by the Respondent on October 4, 2011.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it is a company incorporated under the laws of the UK, doing business in connection with the retail sale of clothing since 1981, when it was founded in the UK by Ms. Karen Millen.

Moreover, the Complainant contends that it currently trades from over 288 stores in 39 countries, operating the international website “www.karenmillen.com”.

The Complainant contends that it owns trademark registrations for KAREN MILLEN. Particularly, it contends that it owns the following: UK Registration No. 2156187A, KAREN MILLEN, in classes 3, 9, 18 and 25; and European Community Registration No. 000814038, KAREN MILLEN, in classes 3, 18 and 25.

In that connection, the Complainant asserts that the Karen Millen brand has experienced rapid growth over the last thirty years to become a global business at the forefront of ladies fashion, with sales during 2010 amounting to £251.2 million and that they are projected to be £254.8 million during 2011.

Moreover, the Complainant contends that the disputed domain name is identical to its KAREN MILLEN trademarks and that the distinctive element on it is KAREN MILLEN.

Furthermore, the Complainant asserts that the Respondent has no relationship with the Complainant and that the Respondent is not licensed by the Complainant to use the disputed domain name.

The Complainant also contends that the Respondent offers for sale counterfeit Karen Millen branded products through the website to which the disputed domain name resolves. In this connection, the Complainant contends that such sales have been causing considerable damage to its business.

Finally, the Complainant asserts that the disputed domain name has been registered and is being used in bad faith since it has been registered solely for the purposes of offering for sale and selling counterfeit Karen Millen branded products at aggressively low prices.

In the light of the foregoing, the Complainant requests that the disputed domain name <karenmilleraustralia.com> be transferred to it.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

For a complaint to succeed in a UDRP proceeding, under paragraph 4(a) of the Policy, a complainant must prove that:

(i) The disputed domain name is identical or confusingly similar to a trademark 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.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The Complainant owns several trademark registrations for KAREN MILLEN, as noted under Section 4, “Factual Background” above.

The disputed domain name <karenmilleraustralia.com> incorporates the words “karen” and “miller”, which the Panel finds as a simple misspelling of the word “millen”. This conclusion is reinforced by simply looking at the website to which the disputed domain name resolves which, among others, at the top left of the main page clearly displays the trademark KAREN MILLEN. Moreover, the disputed domain name also includes the name of a country, i.e., “Australia”.

The Panel considers that neither the mere misspelling of the trademark KAREN MILLEN nor the addition of the word “Australia” in the disputed domain name <karenmilleraustralia.com> is sufficient to avoid the great similarity between them and therefore to avoid confusion by Internet users between the Complainant’s trademark and the disputed domain name. Particularly, since the Complainant has submitted relevant evidence showing that all the products offered for sale at the website located in the disputed domain name carry the trademark KAREN MILLEN.

In view of the foregoing, the Panel finds that the disputed domain name <karenmilleraustralia.com> is confusingly similar to a trademark in which the Complainant has rights, and therefore, the Complainant has succeeded on this first element under the Policy.

B. Rights or Legitimate Interests

According to paragraph 4(a)(ii), the second element that the Complainant must prove is that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Policy in its paragraph 4(c) sets out various ways in which a respondent may demonstrate rights or legitimate interests in a domain name.

Although the Policy states that the complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative, i.e., that a respondent has no rights or legitimate interests in respect of a domain name. It has therefore become generally accepted under the Policy that, once a complainant has presented a clear prima facie showing of a respondent’s lack of rights or legitimate interests in a domain name, the burden of submitting evidence therefore shifts to the respondent. The respondent must then demonstrate its rights or legitimate interests in a domain name in order to refute the prima facie case.

The Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests and so the burden of production has effectively been shifted to the Respondent, who did not reply to the Complainant’s contentions and, therefore, has not made such showing.

Moreover, there is no evidence showing that the Respondent is commonly known as or identified by “Karen Miller” or “karenmilleraustralia.com”. Furthermore, there is no evidence showing that the Respondent operates a business or any other organization under the disputed domain name.

For these reasons, and in absence of a plausible explanation from the Respondent in connection with its rights or legitimate interests, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the third element that a complainant must prove is that the domain name has been registered and is being used in bad faith.

The Policy in paragraph 4(b) sets out various circumstances, which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith.

The Complainant has filed relevant evidence to the Panel’s satisfaction showing that it owns trademark registrations for KAREN MILLEN, all of which have been registered before the disputed domain name was registered on October 4, 2011.

Moreover, the printouts of the website to which the disputed domain name resolves show that the Respondent is offering for sale what the Complainant has asserted to be counterfeit KAREN MILLEN branded goods.

In view of the foregoing, and in the absence of a rebuttal from the Respondent, the Panel finds that the Respondent was aware or must have been aware of the trademark KAREN MILLEN before registering the disputed domain name <karenmilleraustralia.com>, which evidences bad faith registration.

With regard to bad faith use, in the circumstances of the case, the above described use of the disputed domain name cannot be considered fair or non-commercial and, therefore, Panel finds that that the respondent is using the disputed domain name in bad faith.

For these reasons, the Panel finds that the Respondent both registered and is using the disputed domain name in bad faith and that the Complainant has therefore made out the third element of its case.

7. Decision

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 <karenmilleraustralia.com> be transferred to the Complainant.

Gustavo Patricio Giay
Sole Panelist
Dated: February 6, 2012

 

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