WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Karen Millen Fashions Limited v. DFS Xcxc
Case No. D2011-2114
1. The Parties
The Complainant is Karen Millen Fashions Limited, of Witney, Oxfordshire, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Heatons LLP, United Kingdom.
The Respondent is Dfs Xcxc, of Fremont, Alabama, United States of America (“United States”).
2. The Domain Name and Registrar
The Domain Name <karenmillenfashion.net> is registered with Melbourne IT Ltd. D/B/A Internet Names Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2011. On December 5, 2011, the Center transmitted by email to Melbourne IT Ltd. D/B/A Internet Names Worldwide a request for registrar verification in connection with the Domain Name. On December 6, 2011, Melbourne IT Ltd. D/B/A Internet Names Worldwide 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 December 12, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 1, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 2012.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on January 13, 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 a fashion company incorporated under the laws of England and Wales. The Complainant holds a variety of registrations for the mark KAREN MILLEN, inter alia, the UK registered trademark No. 2156187A in classes 3, 9, 18 and 25 covering a range of goods including clothing, and the Community Trade Mark No. 000814038 in classes 3, 18 and 25 covering goods including articles of clothing. The Complainant has been using the name “Karen Millen” in connection with the retail sale of clothing since its foundation in 1981 by Ms. Karen Millen. The Complainant currently trades from over 288 “Karen Millen” stores in 39 countries from Europe to the United States, the Russian Federation, Australia, Asia, and the Middle East and has an international website of “www.karenmillen.com” from which it sells and delivers clothing.
The Respondent registered the Domain Name <karenmillenfashion.net> in October 2011 and has used the Domain Name to direct Internet users to a website selling KAREN MILLEN branded products.
5. Parties’ Contentions
The Complainant contends that the Domain Name is virtually identical to its registered trademark. The distinctive element of the 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 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 Domain Name and yet the Respondent has been offering KAREN MILLEN branded products for sale via its website to which the Domain Name resolves. 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 Domain Name in bad faith. The 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 Internet users could be confused into thinking that the website to which the Domain Name resolves is owned and operated by the Complainant and upon receipt of poor quality garments purchased on 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
To succeed in a complaint, the Complainant must, in accordance with paragraph 4(a) of the Policy, satisfy the Panel of the following three elements:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has introduced sufficient evidence to show that it has established rights in the KAREN MILLEN mark. The Complainant’s mark KAREN MILLEN is protected as a trademark and the Complainant holds a trademark registration for the United Kingdom as well as Community trademarks registered since the year 1999.
The Panel further holds that the Domain Name incorporates the Complainant’s trademark KAREN MILLEN in its entirety, which in itself is sufficient to support the claim that the Domain Name is confusingly similar to the Complainant’s mark. The term “fashion” added to the Domain Name is generic. In addition, the word “fashion” is related to the Complainant’s products. The Panel finds that the addition of a generic word is insufficient to dispel the confusing similarity arising from the incorporation of the Complainant’s KAREN MILLEN mark.
Accordingly, the Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark KAREN MILLEN because the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services;
(ii) the fact that respondent has been commonly known by the domain name; or
(ii) legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant has rights in the KAREN MILLEN trademark and trades from over 288 Karen Millen stores in 39 countries from Europe to the United States, the Russian Federation, Australia, Asia, and the Middle East. Moreover, according to the Complainant, the Respondent has never been licensed to use “Karen Millen” in the Domain Name.
The Panel is satisfied that the Complainant has established prima facie evidence that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(c) of the Policy. It is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
The Panel also notes that the Respondent has failed to file a response to prove its rights or legitimate interests in the Domain Name under paragraph 4(c) of the Policy.
For all of the above reasons, the Panel therefore finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) showing that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
For the purposes of determining if there was bad faith registration and use, the Panel considers the circumstances of the registration and use of the 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 Domain Name in bad faith may be evidenced.
The Panel considers that the Complainant has made a prima facie case that the Respondent has registered and used the Domain Name in bad faith.
The Panel finds that the Respondent’s use of the Domain Name represents deliberate disregard of the Complainant’s trademark rights. Clearly in this Panel’s view 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 Domain Name and also in the website to which it resolves with content related to the Complainant’s products and services. 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 may suggest opportunistic bad faith.
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent: “By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Complainant has submitted that the Domain Name has been used to offer for sale counterfeit products under the trademark via the website. Respondent has not denied this assertion of Complainant. This is in this Panel’s view further strong evidence of bad faith (Prada S.A. v. Domains For Life, WIPO Case No. D2004-1019).
The Panel therefore finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
Given the circumstances of this case, the Panel also considers the failure of the Respondent to file a response to the Complaint further supports an inference of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).
For all the foregoing reasons, the Panel concludes that the Domain Name has been registered and is being used in bad faith and thus the third condition of paragraph 4(a)(iii) of the Policy has been fulfilled.
For the foregoing reasons, in accordance with paragraphs 4(a) of the Policy and 15 of the Rules, the Panel orders that the domain name <karenmillenfashion.net> be transferred to the Complainant.
Pablo A. Palazzi
Dated: January 17, 2012