WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Karen Millen Fashions Limited v. Fundacion Private Whois
Case No. D2012-1644
1. The Parties
The Complainant is Karen Millen Fashions Limited of Oxfordshire, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Heatons LLP, United Kingdom.
The Respondent is Fundacion Private Whois of Panama, Panama.
2. The Domain Name and Registrar
The disputed domain name <irelandkarenmillen.com> is registered with Internet.bs Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2012. On August 16, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 21, 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 August 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 13, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 18, 2012.
The Center appointed Andrew F. Christie as the sole panelist in this matter on September 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 was founded by Ms. Karen Millen in England, United Kingdom, in 1981, and has been using the name “Karen Millen” in connection with the retail sale of clothing since that time. Over the last 30 years the “Karen Millen” brand has experienced rapid growth to become a global business in ladies’ fashion. The Complainant currently trades from over 288 “Karen Millen” stores in 39 countries including Europe, the United States of America, Russian Federation, Australia, Asia and the Middle East. It has a website at “www.karenmillen.com” from which it sells clothing.
The Complainant is the proprietor of an international portfolio of trademark registrations for the trademark KAREN MILLEN, including a Community Trademark registration dating from 1999. These trademark registrations are in respect of a range of goods including articles of clothing.
The disputed domain name was registered on March 28, 2012. The Complainant has provided screenshots of the website to which the disputed domain name resolves on August 8, 2012, showing alleged “Karen Millen” dresses being offered for sale at discount prices.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is virtually identical to the Community Trademark KAREN MILLEN that is owned by the Complainant. The distinctive element of the disputed domain name is “karen millen”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because the Respondent: (i) is in no way connected with the Complainant; and (ii) is not licensed by the Complainant to use the disputed domain name and yet has been offering alleged “Karen Millen” products for sale via the website to which the disputed domain name resolves. The Complainant contends that the clothing offered for sale by the Respondent has been verified as being counterfeit and that these sales have been causing considerable damage to the Complainant’s business.
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith because: (i) it has been registered solely for the purposes of offering for sale and selling counterfeit “Karen Millen” products at aggressively low prices via the website to which it resolves; and (ii) members of the public have been confused into thinking that the website to which the disputed domain name resolves is owned and operated by the Complainant, and upon receipt of poor quality products purchased from that website complaints have been made to the Complainant’s customer service representatives and the clothing has been verified as counterfeit.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name incorporates the whole of the Complainant’s registered trademark KAREN MILLEN, preceded by the word “Ireland” and followed by the addition of the gTLD identifier “.com”. This Panel finds the addition of these words does not lessen the inevitable confusion of the disputed domain name with the Complainant’s trademark. This is especially so given that the Complainant sells its goods in the Republic of Ireland. Accordingly, this Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its KAREN MILLEN trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainant shows that the disputed domain name was used to resolve to a website selling discount clothes that purport to be, but may not in fact be, the Complainant’s products. According to the present record, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Accordingly, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The disputed domain name was registered three decades after the Complainant first began using the name “Karen Millen” in connection with the retail sale of clothing, and 13 years after the Complainant registered the trademark KAREN MILLEN as a Community Trademark. The evidence on the record provided by the Complainant with respect to the use of its KAREN MILLEN trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy this Panel that, at the time the disputed domain name was registered, the Respondent most likely knew of the Complainant’s trademark and knew that it had no rights or legitimate interests in the disputed domain name. Furthermore, the evidence on the record provided by the Complainant with respect to the Respondent’s use of the disputed domain name indicates that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion with the Complainant’s trademark as to the affiliation of that website. For all these reasons, this Panel is satisfied that the disputed domain name has been registered and is being used 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 disputed domain name, <irelandkarenmillen.com>, be transferred to the Complainant.
Andrew F. Christie
Dated: October 9, 2012