World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Karen Millen Fashions Limited v. shui xi

Case No. D2012-1393

1. The Parties

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.

Respondent is shui xi of Tianjin, China.

2. The Domain Name and Registrar

The disputed domain name <officialkarenmillenes.com> is registered with Bizcn.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2012. On July 9, 2012, the Center transmitted by email to Bizcn.com, Inc. a request for registrar verification in connection with the disputed domain name. On July 9, 2012, Bizcn.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On July 18, 2012, the Center transmitted an email to the parties in both the Chinese and English languages regarding the language of proceedings. On July 18, 2012, Complainant confirmed their request that English be the language of proceeding. On July 18, 2012, the Center also received an informal email communication in English from Respondent requesting to remove its email address from case-related communications. 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 Respondent of the Complaint, and the proceedings commenced on July 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 14, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 15, 2012.

The Center appointed Yijun Tian as the sole panelist in this matter on August 22, 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

Complainant, Karen Millen Fashions Limited, is a company incorpated in Witney, Oxfordshire, United Kingdom. Complainant was founded by Ms Karen Millen in England in 1981, and has become a global business at the forefront of ladies fashion. Complainant currently trades from over 288 Karen Millen stores in 39 countries from Europe to United States of America, Russian Federation, Australasia and the Middle East.

Complainant is the owner of an international portfolio of registered trade marks for the mark KAREN MILLEN, including United Kingdom and Community Trade Mark (“CTM”) since 1999 (Annex 3 to the Complaint). Complainant also has a website located at “www.karenmillen.com” from which it sells and delivers clothing.

Respondent is shui xi of Tianjin, China. The disputed domain name <officialkarenmillenes.com> was registered by Respondent on March 16, 2012, long after the KAREN MILLEN mark became internationally famous.

5. Parties’ Contentions

A. Complainant

(a) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

Complainant is the registered proprietor of an international portfolio of registered trade marks for the mark KAREN MILLEN, including UK registered trade mark and CTM since 1999 (Annex 3 to the Complaint).

Complainant has been using the mark KAREN MILLEN in connection with the retail sale of clothing since 1981. Complainant currently trades from over 288 Karen Millen stores in 39 countries from Europe to the United States, Russia, Australasia and the Middle East.

The international retail value of products sold under the Karen Millen brand directly and through authorised resellers/partners is GBP 272,384, 000 for the year ended January 31, 2012.

The disputed domain name is virtually identical to the CTM owned by Complainant.

The distinctive element of the disputed domain name is “Karen Millen” and Complainant is the lawful owner of the mark KAREN MILLEN.

(b) Respondent has no rights or legitimate interests in respect of the disputed domain name;

Respondent is in no way connected with Complainant and is not licensed by Complainant to use the disputed domain name.

Yet Respondent has been offering Karen Millen branded product for sale via the website to which the disputed domain name points.

This clothing has been verified as being counterfeit and these sales have been causing considerable damage to Complainant’s business. (Annex 4 to the Complaint).

(c) The disputed domain name was registered and is being used in bad faith.

The disputed 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 disputed domain name points.

Internet users have been confused into thinking that the website to which the disputed domain name points is owned and operated by Complainant.

Upon receipt of poor quality garments purchased from this website, complaints have been made to Complainant’s customer service representatives and the clothing has been verified as counterfeit. (Annex 5 to the Complaint).

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

6.1 Language of the Proceeding

The language of the registration agreement for the disputed domain name is Chinese. Pursuant to the 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. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:

(a) The Complaint has been submitted in English as Complainant is not aware if the Registration Agreement specifies a language in which the Complaint should be filed.

(b) Complainant should not be put to the expense of obtaining a translation of the registration agreement, as this may be an unnecessary and unrecoverable expense (Annex 2 to the Complaint).

Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.

Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language of the proceeding finally decided by the Panel should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states:

“in certain situations, where Respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and Complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).

The Panel has taken into consideration the facts that Complainant is a company from UK, and Complainant will be spared the burden of dealing with Chinese as the language of the proceeding. The Panel has also taken into consideration the facts that the websites at the disputed domain name includes Latin characters “karen millenes” and English word “official” (Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).

On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence in the present proceeding to suggest that Respondent has sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name <officialkarenmillenes.com> is registered in Latin characters and particularly in English language, rather than Chinese script; (b) the website at the disputed domain name is an English-based website and Respondent is apparently doing business in English through this website (Annex 4 to the Complaint); (c) the Website appears to have been directed to Internet users worldwide (particularly English speakers) rather than Chinese speakers; (d) the Center has notified Respondent of the proceedings in both Chinese and English, and Respondent has indicated no objection to Complainant’s request that English be the language of the proceeding; (e) the Center informed Respondent that it would accept a Response in either English or Chinese.

Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.

6.2. Discussion and Findings

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain names should be cancelled or transferred:

(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) 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.

On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the KAREN MILLEN marks (the “KAREN MILLEN Mark”) acquired through registration. The KAREN MILLEN Mark has been registered worldwide including in China, and Complainant has global business at the forefront of ladies fashion.

The disputed domain name <officialkarenmillenes.com> comprises the KAREN MILLEN Mark in its entirety. The disputed domain name only differs from Complainant’s trademark by the addition of the word “official” to the mark KAREN MILLEN. This does not seem to eliminate the identity or at least the similarity between Complainant’s registered trademark and the disputed domain name.

Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

Generally a respondent “may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; PCCW-HKT DataCom Services Limited v. Yingke, ADNDRC Case No. HK0500065).

Mere additions of the descriptive term “official” as a prefix and “es” as a suffix to Complainant’s mark fails to distinguish the disputed domain name from the Complainant’s trademark. By contrast, it may increase the likelihood of confusion. Internet users who visit the website at the disputed domain name <officialkarenmillenes.com> are likely to be confused and may falsely believe that it is an official website operated by Complainant for selling KAREN MILLEN-branded products.

Thus, the Panel finds that the additions are not sufficient to negate the confusing similarity between the disputed domain name and the KAREN MILLEN Mark.

The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:

(i) use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services;

(ii) the fact that Respondent has commonly been known by the disputed domain name; or

(iii) legitimate noncommercial or fair use of the disputed domain name.

The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to Respondent to rebut Complainant’s contentions. If Respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).

Complainant has rights in the KAREN MILLEN Mark, including CTM registration since 1999 (see Annex 3 to the Complaint) which long precedes Respondent’s registration of the disputed domain name (March 16, 2012).

According to Complainant, Complainant is a global business at the forefront of ladies fashion, and currently trades from over 288 Karen Millen stores in 39 countries from Europe to the United States, Russia, Australasia and the Middle East. The international retail value of products sold under the Karen Millen brand is GBP 272,384, 000 for the year ended January 31, 2012.

Moreover, Respondent is not an authorized dealer of Karen Millen branded products. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; 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).

Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:

(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the word “karenmillen” in its business operation. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the KAREN MILLEN Mark or to apply for or use any domain name incorporating the KAREN MILLEN Mark;

(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name <officialkarenmillenes.com> on March 16, 2012. The disputed domain name is confusingly similar to Complainant’s KAREN MILLEN Mark.

(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainant, Respondent was in actuality advertising, offering and selling purported KAREN MILLEN products at <officialkarenmillenes.com> (Annex 4 to the Complaint).

The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or location or of a product.

The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.

a). Registered in Bad Faith

Complainant claimed “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”, and “Members of the public have been confused into thinking that the website to which the Domain Name points is owned and operated by Complainant”. The Panel finds that Complainant has not provided sufficient evidence to prove Respondent is selling “counterfeit” KAREN MILLEN branded products (Annexes 4 and 5 to the Complaint). Nevertheless, this does not affect the Panel to determine the bad faith issue.

The Panel finds that Complainant has a widespread reputation in the KAREN MILLEN Mark with regard to its products. Complainant has registered its KAREN MILLEN Marks internationally, including CTM registration since 1999. As such, it is not conceivable that Respondent would not have had actual notice of Complainant’s trademark right at the time of the registration of the disputed domain name (in 2012). The Panel therefore finds that the KAREN MILLEN Mark not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).

Moreover, Respondent has chosen not to formally respond to Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v Argento Beijing Trading Company, supra, “the failure of Respondent to respond to the Complaint further supports an inference of bad faith”. (see also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787). Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with Complainant’s KAREN MILLEN Mark.

b). Used in Bad Faith

Complainant has adduced evidence to prove that by using a confusingly similar disputed domain name, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites” offering Complainant’s KAREN MILLEN branded products and services without authorization.

To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. and Wal-Mart China Co. Ltd v. Liangchenyong, ADNDRC Case No. HKcc-0800008).

Given the widespread reputation of the KAREN MILLEN Mark, the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the disputed domain name is resolved (see Annex 4 to the Complaint). In other words, Respondent has through the use of a confusingly similar domain name and webpage contents created a likelihood of confusion with the KAREN MILLEN Mark. Noting also that apparently no clarification as to Respondent’s relationship to Complainant is made on the homepage of the disputed domain name, potential partners and end users are led to believe that the website <officialkarenmillenes.com> is either Complainant’s sites or the sites of official authorized partners of Complainant, which it is not. Moreover, Respondent has not responded formally to the Complaint. The Panel therefore concludes that the disputed domain name was used by Respondent in bad faith.

In summary, Respondent, by choosing to register and use a domain name which is confusingly similar to Complainant’s trademark, intended to ride on the goodwill of Complainant’s trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the Website on to which the domain name resolves is indicative of registration and use of the disputed domain name in bad faith.

The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.

7. Decision

For all 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 <officialkarenmillenes.com> be transferred to Complainant.

Yijun Tian
Sole Panelist
Dated: September 5, 2012

 

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