WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Karen Millen Fashions Limited v. Lily Andy
Case No. D2012-0437
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.
The Respondent is Lily Andy of Fuzhou, China.
2. The Domain Name and Registrar
The disputed domain name <karenmillendresses-australia.com> is registered with FastDomain, Inc (“the Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2012. On March 6, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 6, 2012, the Registrar 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 March 9, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 29, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 30, 2012.
The Center appointed David H. Bernstein as the sole panelist in this matter on April 4, 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.
On April 12, 2012, the Administrative Panel issued a Procedural Order, discussed further below.
4. Factual Background
Complainant is a company incorporated under the laws of England and Wales and is the owner of numerous registrations for the Trademark KAREN MILLEN (the “Trademark”) worldwide. Its Community Trademark, number 000814038, was registered in 1999, and the Trademark has been in use since the Complainant’s founding in 1981. The Complainant also relies on its United Kingdom registered Trademark number 2156187A.
The Respondent appears to be an individual based in China.
The disputed domain name was registered on October 8, 2011.
5. Parties’ Contentions – Initial Pleadings
Complainant asserts that it has been using the Trademark in connection with the retail sale of women’s fashion clothing since 1981. According to Complainant, it currently operates 288 stores in 39 countries and operates an international website located at “www.karenmillen.com,” from which it sells and delivers clothing. Sales by Complainant of clothing under the Trademark are expected to be GBP 254.8 million for the year ending January 31, 2011and were GBP 215.2 million in the previous year.
Complainant alleges that the disputed domain name is virtually identical to the Trademark. Complainant states that the distinctive element of the disputed domain Name is the Trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. In support of this allegation, Complainant asserts that Respondent is in no way connected to Complainant and is not licensed by Complainant to use the disputed domain Name. Complainant claims that the website to which the domain name resolves (the “Website”) offers for sale clothing branded with the Trademark. Complainant asserts that the clothing for sale “has been verified as being counterfeit” and has caused considerable damage to Complainant’s business.
Complainant also contends that Respondent has registered and is using the disputed domain name in bad faith. Complainant argues that the disputed domain name has been registered solely for the purpose of offering for sale and selling counterfeit clothing under the Trademark at aggressively low prices via the Website. Complainant asserts 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, have made complaints to Complainant’s customer service representatives.
The Respondent did not reply to the Complainant’s contentions.
6. Procedural Order
As noted above, on April 12, 2012, the Panel issued Administrative Panel Procedural Order No. 1 (“the Order”) to apply to this case and to Karen Millen Fashions Limited v. Lily Rose, WIPO Case No. D2012-0428 and Karen Millen Fashions Limited v. Belle Kerry, WIPO Case No. D2012-0436, two other cases filed by Complainant and assigned to this Panel. The text of the Order in relevant part is copied below:
Possibility of Consolidation
The registrants for the three domain names at issue in these three proceedings are identified in the various registrar verifications as being three different parties. However, the websites to which these three domain names resolve are virtually identical in their format and content. Furthermore, all three domain names were registered within a month of each other, are registered with the same registrar, and are hosted on the same servers. In addition, the registrants (who provided incomplete contact information) are listed as being located in the same city (Fuzhou, China), and two of the three on the same road (Wuyi Road) (the third is listed as being located on Liuyi Road). No specific street numbers were provided.
These facts raise the question of whether these three matters should be consolidated under paragraph 10(e) of the Rules. If Complainant would like to make a request for consolidation, it may submit a request, supported by appropriate allegations and argument, by April 18, 2012. See generally Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281.
Request for Supplemental Submissions
In all three Complaints, Complainant states that the clothing on the allegedly infringing websites “has been verified as being counterfeit.” According to dictionary.com, “verified” means “confirmed as to accuracy or truth by acceptable evidence, action, etc.” http://dictionary.reference.com/browse/verified?s=t The Complaints do not, however, state how Complainant has verified that the products sold on the three websites are counterfeit.
The only other statement concerning the counterfeit nature of the products at issue is that “members of the public have been confused into thinking that the website to which the Domain Name points is owned and operated by the Complainant and upon receipt of poor quality garments purchased from this website, complaints have been made to the Complainants customer service representatives.” All three complaints use this exactly same language (which, significantly, is exactly the same language that Complainant also used in the Complaint in Karen Millen Fashions Limited v. Danny Cullen, WIPO Case No. D2011-1134, along with the statement about having “verified” that the products are counterfeit). Yet, in all three cases – as in the Cullen case – Complainant has not included any details about the alleged consumer complaints. Complainant has not, for example, included any information concerning how it knows that members of the public have been confused. Nor has Complainant included a copy of any emailed complaints, a transcript or contemporaneous report of any complaints relayed by telephone, or the customer service log with respect to these complaints. Cf. Karen Millen Fashions Limited v. Chen Zhenling, WIPO Case No. D2011-0081 (indicated that complainant Karen Millen Fashions Limited “included its customer service log related to such complaints as an exhibit to the Complaint”); Karen Millen Fashions Limited v. Yizhi Maoyi/Maoyi Yizhi, WIPO Case No. D2011-0082 (same). Nor has Complainant indicated whether the alleged “poor quality garments” were sent to and reviewed by Complainant.
As this Complainant and its counsel should know from the decision in the Cullen case (in which Complainant was represented by the same counsel), these bald allegations, standing alone, do not provide enough evidence for the Panel to conclude that the merchandise is counterfeit. That is why the panel in Cullen invited Complainant to supplement its submission with supporting evidence. When Complainant was unable to provide supporting evidence, the panel in Cullen denied the Complaint.
In light of this history, Complainant’s failure to provide any information beyond the exact same bald allegations that it made in the Cullen case is surprising (especially since Complainant did provide additional information and/or documentary evidence in the Chen Zhenling and Yizhi Maoyi/Maoyi Yizhi cases). It may be that Complainant did not agree with the suggestion in the Cullen decision that, to prove counterfeiting, a Complainant must make a “trap” purchase, obtain actual samples of the products at issue, and validate that they are in fact counterfeit. This Panel does not read Cullen to require that specific evidence; rather, as the panel noted in Cullen, “the burden on a complainant is not heavy in the absence of contradiction from a respondent,” but nevertheless, “some evidence” must be submitted. “[A] failure to provide any [evidence] cannot be taken to establish anything.”
These issues raise anew the question of what quantum of evidence is required in a UDRP challenge. To prevail, a complainant must alleged facts sufficient to establish each of the three elements of the Policy. Conclusory allegations are never sufficient; rather, the allegations should be specific and, if not burdensome, supported with appropriate evidence. For example, to establish trademark rights, it is insufficient to baldly state “complainant owns the trademark XYZ”; rather, a complainant should provide specific facts to support that assertion. One approach would be to state something along the lines of “complainant owns trademark XYZ as shown on the trademark registration certificate attached as exhibit A”; another approach would be to state specific facts that support the claim, such as “complainant owns common law rights in trademark XYZ because complainant has sold more than x million widgets under the trademark XYZ in the United States since [year], as indicated in Complainant’s reported sales figures attached as exhibit .B.” These formulations are not required; they are offered only as examples of the many ways in which a complainant could make a more specific allegation of fact (as contrasted with a conclusory allegation).
The same principals apply with respect to allegations that a respondent is using a domain name to offer or sell counterfeit products. Extensive proof is not required, but “some” evidence is. Further, alleging the bare minimum to just clear the pleading threshold may not a prudent approach; a complainant who makes the minimal allegations required to support a prima facie showing of counterfeiting may not be given an opportunity to supplement the record should the respondent respond with a vigorous denial. That is because, as noted above, the UDRP is intended to be an efficient process, and in the normal course, complainants are not given an opportunity to reply to the respondent’s response. See, e.g., Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011; Tiara Hotels & Resorts LLC v. John Pepin, WIPO Case No. D2009-0041. Thus, the more prudent approach often will be to support all allegations, including allegations of counterfeiting, with evidence that will likely be persuasive to the panel.
Here, the assertion that counterfeiting has been “verified” and that consumers have complained about the poor quality of merchandise sold on these websites, without any additional information about what specifically was involved in the verification process, or the substance or frequency of the complaints, is not enough. Instead, Complainant must explain to the Panel how the counterfeit nature of the products was verified, what complaints were received, and how those complaints show that Respondents are selling counterfeit products (as contrasted, for example, to gray market products). As noted above, in at least two prior UDRP disputes (Karen Millen Fashions Limited v. Chen Zhenling, WIPO Case No. D2011-0081 and Karen Millen Fashions Limited v. Yizhi Maoyi/Maoyi Yizhi, WIPO Case No. D2011-0082), the Complainant was apparently able to supply and rely on a log of received complaints, which for reasons unknown to the Panel in this present case, the Complainant appears to have chosen not to provide in its Complaint. As each case falls to be decided on its own record, and to the extent such log would be relevant to the presently disputed domain names, the Complainant in this present case may wish to use this occasion to also provide a copy of said log to the Panel here. Alternatively, complainants accusing respondents of counterfeiting may rely on other evidence – they may allege counterfeiting based on a review of the product images (with an explanation as to why the color, cut, fabric or other elements make the products appear not to be authentic), or on a review of other aspects of the website (e.g., a concession that the products are “replica,” or inconsistent statements about the products’ provenance), or on evidence that the pricing is so low as compared to the regular prices that counterfeiting can be inferred, or other circumstantial evidence. A conclusory statement, though, cannot substitute for such evidence.
Accordingly, the Complainant is requested to submit additional information concerning the allegations in the Complaint, including specific evidence or explanation supporting Complainant’s allegation that the goods offered on Respondents’ websites have been “verified” as counterfeit. To the extent relevant to the presently disputed domain names, the Complainant should also submit a copy of any evidence (such as a log) of alleged complaints received in this regard, along with an explanation of how this relates to the alleged verification of sale of counterfeit goods via the domain name at issue. Complainant’s supplemental submission shall be delivered to the Center, with a copy to the Respondents, by April 18, 2012:
If Complainant is unable to substantiate (for example, through submitted documentary evidence) the relevant statements made in the Complaints concerning the verification of the alleged counterfeits, the confusion of the public as to the source of the websites, and the complaints allegedly made by consumers, Complainant must, alternatively, explain the basis for the allegations made in the Complaints. If those allegations (which were certified to be “complete and accurate” to the best of Complainant’s knowledge) cannot be explained, the Panel will consider whether a finding of reverse domain name hijacking is appropriate as a sanction for any abuse of the UDRP process Cf. Rodale, Inc. v. Cambridge, WIPO Case No. DBIZ2002-00153 (finding RDNH because of complainant’s abuse of the process).
7. Response to Procedural Order
In response to the Order, Complainant submitted a customer service log listing five customer complaints made to Complainant’s customer services department in February 2012. Complainant asserted that the garments were sent to Complainant to verify whether the garments were counterfeit, and were verified in each case by Ms. Lisa Bridgwood, Group Head of Legal at Complainant. Complainant stated that the merchandise was being held by Complainant’s counsel and will be destroyed pending resolution of this matter.
Complainant did not address consolidation in its supplemental submission. In the absence of a request from one of the parties, the Panel declines to consider consolidating the cases.
Respondent did not submit a response.
8. Discussion and Findings
To succeed in a UDRP proceeding, a complainant must demonstrate that all of the elements in paragraph 4(a) of the Policy have been satisfied.:
(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.
Notwithstanding the failure of Respondent to respond to the Complaint in this matter, the Complainant bears the burden of proof on each of these elements.
A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the Trademark acquired through use and registration which predate the date of registration of the disputed domain name by over 20 years.
UDRP panels have consistently held that domain names are generally treated as identical or confusingly similar to a Trademark for the purposes of the Policy “when the domain name includes the Trademark, or a confusingly similar approximation, regardless of the other terms in the domain name,” and where the trademark is recognizable within the domain name. Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. See also Tata Sons Limited v. TATA Telecom Inc./Tata-telecom.com, Mr. Singh, WIPO Case No. D2009-0671.
Moreover,“[t]he addition of a geographic modifier [. . .] does not in any way remove or dilute the likely confusion that arises from the registration of these domain names.” Advance Magazine Publishers Inc. v. Vanilla Limited/ Domain Finance Ltd./ Minakumari Periasany, WIPO Case No. D2004-1068. See also Playboy Enterprises International, Inc. v. Domain Active Pty Limited, WIPO Case No. D2002-1156.
Here, the disputed domain name contains the Trademark in its entirety with the addition of the term “dresses” and “Australia.” The Panel finds that the addition of these terms does not serve to distinguish the disputed domain name from the Trademark in any way.
The Panel finds that the disputed domain name is confusingly similar to the Trademark. The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Complainant has the burden to prove that Respondent lacks rights or legitimate interests in the disputed domain name. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. Because it is difficult for a complainant to produce evidence in support of a negative assertion, the threshold for a complainant to prove a lack of legitimate interest is low. A complainant need only make a prima facie showing on this element, at which point the burden shifts to the respondent to present evidence that it has some rights or legitimate interests in the domain name at issue. The ultimate burden of proof, however, remains with the complainant. Id. See also National Construction Rentals, Inc. v. Toilets.com, Inc., WIPO Case No. D2009-0147.
Paragraph 4(c) of the Policy provides a list of circumstances which can demonstrate that Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services, or
(ii) you (as an individual, business, or other organization) have been commonly known by the disputed domain name even if you have acquired no Trademark or service mark rights, or
(iii) you are making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Trademark or service mark at issue.
There is no evidence that the Complainant has authorized, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trademark. The Complainant has prior rights in the Trademark which long precede the Respondent’s registration of the disputed domain name. There also is no evidence to suggest that the Respondent has been commonly known by the disputed domain name.
What the evidence does show is that Respondent is selling merchandise branded with the Karen Millen trademark. If those goods are genuine, that might support a finding of fair use under Oki Data America, inc. v. ASD, Inc., WIPO Case No. D2001-0903, and its progeny. On the other hand, if the goods are counterfeit, that would be powerful evidence that Respondent lacks rights or a legitimate interest in the use of the domain name because there can be no legitimate interest in the sale of counterfeit goods. Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750.
In its Complaint, Complainant averred that Respondent is selling counterfeit Karen Millen merchandise, but, as noted above, supported these allegations with only conclusory statements. Given that the Complainant was subject to the same criticisms in Karen Millen Fashions Limited v. Danny Cullen, WIPO Case No. D2011-1134, the Panel considered whether to deny the Complaint outright on the grounds that Complainant did not make a prima facie showing. However, based on the Panel’s review of the website at issue and the WHOIS data concerning the identity of the Respondent, it appeared to the Panel that the goods probably were counterfeit, and that justice would not be served by denying the Complaint without at least seeking confirmatory evidence of Complainant’s conclusory allegations. The Panel thus concluded that it would be appropriate to give Complainant an opportunity to supplement the record, which is what led the Panel instead to issue the Order.
In its supplemental submission, Complainant has now made a fully appropriate showing that supports a prima facie case that Respondent is engaged in selling counterfeit goods. As detailed above, Complainant submitted a log detailing the names and numbers of the specific customers that complained about the merchandise, identified the person who reviewed the merchandise and verified it as counterfeit, and confirmed that the merchandise is being held pending resolution of this matter. The Panel finds that this evidence is sufficient to support allegations of counterfeiting, and therefore to establish a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Chunhai Zhang, WIPO Case No. D2012-0136.
Because Complainant’s evidence was sufficient to establish a prima facie case that Respondent lacks rights or legitimate interests, the burden of production shifts to the Respondent to produce evidence to rebut this showing. See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Respondent, having been given a fair opportunity to respond (both to the initial Complaint and to the supplemental submission), has failed to rebut or deny this showing. The Panel therefore concludes that Complainant has satisfied its burden in establishing that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name is not being used in connection with a bona fide offering of goods or services. The Panel therefore finds that Complainant fulfills the second condition of paragraph 4(a) of the Policy.
However, the Panel is compelled to add the following: Complainant and its counsel are reminded that the conclusory allegations made in the initial Complaint were insufficient. Should Complainant continue in other UDRP proceedings to submit unsupported conclusory allegations, panels may no longer be inclined to give Complainant the opportunity to supplement its complaint and may instead elect to deny the Complaint.
C. Registered and Used in Bad Faith
The Complainant asserts that the disputed domain name has been used to offer for sale counterfeit products under the Trademark via the Respondent’s Website. Using domain names to facilitate the sale of counterfeit goods is strong evidence of bad faith. Prada S.A. v. Domains For Life, WIPO Case No. D2004-1019.
The Panel finds Respondent’s conduct in registering the disputed domain name and offering for sale counterfeit branded merchandise via Respondent’s Website, all without the authorization, approval, or license of Complainant, amounts to bad faith registration and use under paragraph 4(b)(iv) of the Policy. The Panel therefore finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
For all the forgoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled.
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, <karenmillendresses-australia.com>, be transferred to Complainant.
David H. Bernstein
Dated: May 7, 2012