World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Karen Millen Fashions Limited v. Nikem cheng chang

Case No. D2012-2057

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 Nikem cheng chang of China.

2. The Domain Name and Registrar

The disputed domain name <karenmillensclub.com> is registered with Name.com LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2012. On October 17, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 17, 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 November 1, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 21, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2012.

The Center appointed Michael J. Spence as the sole panelist in this matter on December 6, 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 retails clothing under the trade mark KAREN MILLEN and has done so since 1981. It operates over 288 “Karen Millen” stores worldwide and has a successful online retail business. The Respondent operates a website under the disputed domain name on which it offers counterfeit clothing for sale under the KAREN MILLEN brand.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to its trade mark; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name has been registered or is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name contains the Complainant's trade mark in its entirety. The additional term “sclub” does nothing to distinguish the disputed domain name from the trade mark. Indeed, it strengthens the association between the two by suggesting that the “club” to which it refers is operated or owned by the Complainant.

The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy in relation to the disputed domain name.

B. Rights or Legitimate Interests

It is for the Complainant to establish, at least prima facie, that the Respondent has no rights or legitimate interests in the disputed domain names (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupod.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).

In this case, the fact that the web site operating under the disputed domain name offers for sale counterfeit goods bearing the Complainant’s trade mark, and that there has never been any licensing or other relationship between the Complainant and the Respondent, establishes a prima facie absence of rights or legitimate interests in the disputed domain name. The Respondent has tended no evidence to rebut this prima facie position.

The Panel therefore finds that the Complainant has established the second element of paragraph 4(a) of the UDRP Policy.

C. Registered and Used in Bad Faith

The exploitation of consumer confusion for the purpose of selling counterfeit goods, with evident knowledge of the Complainant’s rights in its trade marks, is the strongest possible case of registration and use in bad faith.

The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the UDRP Policy.

7. Decision

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 <karenmillensclub.com> be transferred to the Complainant.

Michael J. Spence
Sole Panelist
Dated: December 8, 2012

 

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