WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Karen Millen Fashions Limited v. Kally
Case No. D2012-0215
1. The Parties
The Complainant is Karen Millen Fashions Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), represented by Heatons LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Kally of Hong Kong, China.
2. The Domain Name and Registrar
The disputed domain name <karenmillenbuy.com> (the “Domain Name”) is registered with HiChina Zhicheng Technology Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2012. On February 8, 2012, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the Domain Name. On February 9, 2012, HiChina Zhicheng Technology Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On February 10, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On February 13, 2012, the Complainant confirmed its request that English be the language of proceeding. The Respondent did not comment on the language of proceedings by the specified due date.
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 February 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 7, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 8, 2012.
The Center appointed Colin Yee Cheng Ong as the sole panelist in this matter on March 19, 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
4.1 The Complainant has claimed that it has been using the trademark KAREN MILLEN in connection with the retail sale of clothing since 1981, when it was founded by Ms. Karen Millen in the UK in the same year. The KAREN MILLEN brand has experienced rapid growth over the last thirty years to become a global business at the forefront of ladies’ fashion. The Complainant currently trades from over 288 Karen Millen stores in 39 countries including from the United States of America, the Russian Federation, Austria, as well as other European, Asian and Middle Eastern countries. It has an international website located at “www.karenmillen.com” from which it sells and delivers clothing.
4.2 The Complainant has provided evidence to show that it has registered its trademark in the UK under registered trademark number 2156187A in classes 3, 9, 18 and 25. These cover a range of goods, including clothing.
4.3 The Complainant has stated, without providing supporting evidence, that sales of clothing by the Complainant under the KAREN MILLEN mark were GBP 215.2 million for the year ending January 31, 2011.
5. Parties’ Contentions
5.1 The Complainant contends that the Domain Name <karenmillenbuy.com> is confusingly similar to KAREN MILLEN in which it holds rights for the following reasons:
(i) Having set out its ownership of the trademark with the same name, the Complainant explained that it currently trades from over 288 Karen Millen stores in 39 countries and it has an international website located at “www.karenmillen.com” from which it sells and delivers clothing.
(ii) Finally the Complainant submitted that the Domain Name is virtually identical to the KAREN MILLEN trademark owned by the Complainant. The distinctive element of the Domain Name is KAREN MILLEN and the Complainant is the lawful owner of the mark KAREN MILLEN.
5.2 The Complainant contends that the Respondent has no rights and legitimate interests in the Domain Name for the following reasons:
(i) The Respondent has no connection or affiliation with the Complainant and has not received any license.
(ii) The Respondent’s sale of purported Karen Millen products, which are in actual fact counterfeits, demonstrate that it is not making a bona fide offering of goods or services, nor does it have a legitimate interest.
(ii) The Respondent’s sales have been causing damage to the Complainant’s business.
5.3 The Complainant, lastly, contends that the Domain Name was registered and is being used in bad faith for the following reasons:
(i) The Complainant alleged that the Respondent has registered the Domain Name in bad faith as the Domain Name has been registered solely for the purposes of offering for sale and selling counterfeit Karen Millen branded products at aggressively low prices via the website to which the Domain Name points.
(ii) The Complainant also submitted that the Respondent’s attempt to attract consumers for commercial gain to the Domain Name by creating confusion among consumers by utilising the KAREN MILLEN mark is further compounded by the Respondent’s efforts to mislead consumers into believing the site was operated or authorized by the Complainant.
The Complainant requests a decision that the Domain Name be transferred to the Complainant
5.4 The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. The Complaint was filed in the English language. On February 10, 2012, the Center transmitted by email to the parties in both Chinese and English regarding the language of proceedings. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Center has been informed by the concerned Registrar that the language of the Registration Agreement for the Domain Name is Chinese. Although the Chinese language is the language of the Registration Agreement for the Domain Name, the Complainant asserted its request that English should be the language of proceedings. The Panel would like to make it clear that the inability of the Complainant to communicate in the Chinese language or its preference to communicate in English is not and cannot be a proper legal basis for not adopting the proper language of proceedings as set out in paragraph 11 of the Rules. This has been ruled in previous U including in the case of Compagnie Gervais Danone v. yunengdonglishangmao(beijing)youxiangongsi, WIPO Case No. D2007-1918.
6.2. It would be in fact a very poor argument for the Complainant to submit that because it has no knowledge of the Chinese language, it should pick a different language to deal with a legal case that it had initiated. The fact that the Complainant is a company registered in the UK and that English is the first language of the Complainant, is not a valid legal reason at all that can be accepted by this Panel. It is up to any Complainant to secure the services of counsel that can communicate in the language in which the language of the Registration Agreement is to be based.
6.3 What is deemed to be fair to one party may be deemed to be unfair to the other party. It is a fundamental rule of UDRP proceedings that a party including a respondent should be allowed to present his case. In the event that the language of the administrative proceeding has to be held in a particular language for the convenience of one party, thereby depriving the other party of being entitled to communicate in the language set down by the proper legal rules, this is inequitable.
6.4 Had this been a truly contested matter, the Respondent may have been likely to have been entitled to expect a Panel to rule that the language of the proceedings should be in Chinese, in strict adherence to paragraph 11 of the Rules. According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language. However, in the present case, considering the composition of the Domain Name and the Panel’s assessment of the unique circumstances of the case, bearing in mind its broad powers given to the Panel by paragraph 11(a) of the Rules, and bearing in mind the fact that the Respondent did not attempt to contest these proceedings, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of administrative proceeding in this case. The Panel has also been persuaded that this is the correct decision to adopt as all content on the website is written in the English language and the website has been designed to lead English speaking customers into thinking that the website is actually of the Complainant.
6.5 The Panel finds that the proceedings have been conducted in accordance with the Rules and the Policy. The procedural history of this case raises the question as to whether the Respondent has received notice of this proceeding. Having gone through the series of communications as set out above under the section on procedural history, the Panel concludes that the Center has notified the Respondent of this proceeding and has discharged its responsibility under paragraph 2(a) of the Rules. The Panel has reviewed the Complaint together with its annexes. This Panel does not find any exceptional circumstances pursuant to paragraph 5(e) of the Rules so as to prevent this Panel determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.6 The Respondent has been accorded with the opportunity to provide submissions and evidence to dispute the claims of the Complainant. Some previous UDRP panels have suggested that if the respondent chooses not to present any such evidence, an inference may be made that such evidence would not have been favorable to the respondent, or that he accepts the claims of the complainant, or even that he does not wish to respond or defend his perceived interest in the Domain Name. However, this Panel respectfully views that any such adverse inference is not conclusive at all and the Complainant would still be obliged to prove his case in accordance with the Policy and Rules. The burden of proof falls upon and remains on the Complainant. In such case of silence by the Respondent, the Complainant shall then continue with its case and shall have to prove the three elements that are required by the Policy. without opposition than the Complainant’s own ability to explain them. (See: PRL USA Holdings, Inc. v. Yan Shif, WIPO Case No. D2006-0700).
6.7 Under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences there from as it considers appropriate”. Therefore, in a case where a respondent fails to put in a response, a panel may draw negative inferences from the respondent’s default (see paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, “WIPO Overview 2.0”). Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects as set out in paragraph 4(a) of the Policy (see, PRL USA Holdings, Inc. v. Yan Shif, supra.). Namely, the complainant must prove that:
(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
6.8. Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. In line with such provision, the Complainant must prove two limbs, i.e., that it holds the trademark or service mark; and that the Domain Name is identical with or confusingly similar to its trademark or service mark. The test of identity or confusing similarity under the Policy is confined to a comparison of the Domain Name and the trademark alone, independent of the Domain Name’s use or other marketing factors, usually considered in trademark infringement (see, for example, Ebay Inc. v. Wangming, WIPO Case No. D2006-1107).
6.9 The Complainant has appended to the Complaint its registered trademark and registered domain names that incorporate the trademark KAREN MILLEN. The Domain Name consisting of the Complainant’s trademark KAREN MILLEN causes confusing similarity. Previous panel decisions pronounced under the UDRP in similar situations such as F. Hoffmann-La Roche AG v. Drug Sale, WIPO Case No. D2006-0066 had correctly decided that such additions of generic words such as “buy” are not enough to distinguish capacity in the context of the domain name and they do not alter the value of the trademark in the domain name. Given this, the Panel has little difficulty in concluding that the Domain Name is confusing similar to the trademark in which the Complainant has rights.
6.10. In the circumstances, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.11. The Panel accepts that the Complainant has satisfied it in providing evidence showing that the trademark for KAREN MILLEN has been properly registered and that it has been in business and known under that name since 1981. At the heart of the Complaint is the Complainant’s contention that the Respondent has taken the trademark of the Complainant with a view to attracting Internet users to its website to intentionally link its Domain Name with KAREN MILLEN and offering counterfeit products. The Panel accepts that such activity clearly does not provide the Respondent with a legitimate interest in the Domain Name.
6.12. According to paragraph 4(a)(ii) of the Policy, the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the Domain Name. However, it is the prevailing view among panelists that where a complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show, inter alia, one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack a right or legitimate interest in the domain name.
6.13. As previously held by other UDRP panels, “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”. (See eBay Inc. v. Akram Mehmood, WIPO Case No. DAE2007-0001).
6.14. As another panel had held in the case of Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Varentinuo inc. reg by sopao.com, WIPO Case No. D2008-0186, if a respondent wants to argue that it has a right or legitimate interest in a domain name on this basis, it is then for the respondent to positively advance that case and to bring forward evidence in support (see paragraph 6.16 of that decision).
6.15. The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the Domain Name. There is no evidence on the record of this proceeding to suggest that the Respondent has been commonly known by the Domain Name, or that the Respondent has made non-commercial or fair use of the Domain Name. The Respondent has also not used the Domain Name in connection with a bona fide offering of goods or services but has sold counterfeit Karen Millen products. The Panel thus finds that the Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the Domain Name which is confusingly similar to the Complainant’s mark.
6.16. Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the Domain Name and that the requirement of paragraph 4(a)(ii) is also satisfied.
C. Registered and Used in Bad Faith
6.17. Paragraph 4(b) of the Policy provides a list of examples of evidence of bad faith registration and use. Paragraph 4(b)(iv) refers to use of a domain name to intentionally attempt to attract for commercial gain Internet users to a website by creating a likelihood of confusion with the Complainant’s mark as to the source of a website.
6.18. The Panel accepts the Complainant’s submissions that the Respondent is using the Domain Name to intentionally gain commercially by attracting Internet users to a website, by creating a likelihood of confusion with the Complainant’s mark and that such use of the Domain Name clearly demonstrates the Respondent’s bad faith.
6.19. The Respondent has failed to show (for the reasons set out under the heading “Rights and Legitimate Interests” above) that it has been using the Domain Name genuinely for its own goods or services. It has also failed to disclose on the site the true relationship between it and the Complainant. The Panel accepts the submission that the Respondent is intentionally attempting for a commercial purpose to attract internet users to the Respondent’s website and the Panel concludes that the Respondent in this case did intentionally attempt to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s mark., The activities of the Respondent, therefore, fall within the scope of paragraph 4(b)(iv) of the Policy.
6.20. In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy. This is sufficient to dispose of this matter in favour of the Complainant. The Panel has been able to conclude that the Respondent registered and used the Domain Name 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 Domain Name <karenmillenbuy.com> be transferred to the Complainant.
Dr Colin Yee Cheng Ong
Dated: April 21, 2012