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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Karen Millen Fashions Limited v. Dong Yi Mao

Case No. D2013-0102

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 of Great Britain and Northern Ireland (the “United Kingdom”).

The Respondent is Dong Yi Mao of Shantou, Guangdong, China.

2. The Domain Name and Registrar

The disputed domain name <karenmillen-outletstore.com> (the “Disputed Domain Name”) is registered with HooYoo Information Technology Co. Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2013. On January 16, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 18, 2013, 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. On January 21, 2013, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On January 21, 2013, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding 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 January 30, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 19, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 20, 2013.

The Center appointed Peter J. Dernbach as the sole panelist in this matter on March 1, 2013. 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 factual findings pertinent to the decision in this case are that:

1. The Complainant is the proprietor of numerous registrations for the KAREN MILLEN trademark, inter alia, National United Kingdom trademark registration No. 2156187A dated September 11, 1998 and Community Trade Mark Registration No. 000814038 dated October 13, 1999, both for the word mark KAREN MILLEN.

2. The trademark KAREN MILLEN, on which the Complaint is based, has been used by the Complainant on its clothing products. The Complainant’s products are available online at the website “www.karenmillen.com”.

3. The Disputed Domain Name was registered on September 13, 2012.

4. The Disputed Domain Name resolves to a website which offers for sale clothing by reference to the trademark KAREN MILLEN.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions can be summarized as follows:

(i) The Disputed Domain Name is identical or confusingly similar to the registered trademark of the Complainant.

The Disputed Domain Name has a distinctive element of KAREN MILLEN, which is identical with the Complainant’s Community Trade Mark.

(ii) The Respondent has no rights or legitimate interests in the Disputed Domain Name.

The Respondent has never been licensed by the Complainant to use the words of KAREN MILLEN and yet the Respondent has been offering products branded with words of KAREN MILLEN for sale via the website to which the Disputed Domain Name directs.

(iii) The Disputed Domain Name was registered and is being used in bad faith

The Disputed Domain Name was registered and is being used for the purpose of attracting Internet users for commercial gain by offering products for sale branded with the words of KAREN MILLEN at extremely low prices. The website to which the Disputed Domain Name directs creates confusion to the public with the Complainant’s trademark into thinking that the website is owned and operated by the Complainant.

B. Respondent

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

6. Preliminary Procedural Issues

Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceedings”.

The language of the Registration Agreement in relation to the Disputed Domain Name <karenmillen-outletstore.com> is Chinese. The Complainant requested, in its email dated January 21, 2013 to the Center, that the language of the proceedings be English. The Complainant raised the following arguments to support its request: (i) the Complainant is an England registered company and its first language is English; (ii) all content of the website operated at the Disputed Domain Name is written in English; and (iii) if the language of the proceedings is Chinese, the Complainant would be unfairly prejudiced due to the additional trouble and expense of having to conduct the proceedings in Chinese.

Paragraph 11(a) of the Rules allows the Panel to determine the language of proceedings 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 proceedings. 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). The language finally decided by the Panel for the proceedings 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 the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the 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”. (See paragraph 4.3 of WIPO Overview 2.0).

The Panel notes the following facts:

(i) The Respondent’s website at the Disputed Domain Name <karenmillen-outletstore.com> appears entirely in the English language, and appears to have been directed to Internet users worldwide rather than exclusively to Chinese speakers (as evidenced by the screen shot captured on November 29, 2012 and provided by the Complainant in Annex 4 to the Complaint). The Panel is satisfied that the Respondent is familiar with the Complainant’s requested language.

(ii) The Panel notes that all the Center’s communications to the Respondent were made in both Chinese and English and that the Respondent was given an opportunity to object to the Complainant’s request that English be the language of proceedings. The Respondent was also advised that, in the absence of any response from the Respondent, the Center would proceed on the basis that the Respondent has no objection to the Complainant’s request that English be the language of proceedings. The Panel finds that the Respondent has been given a fair chance to object, and has not done so.

(iii) The Panel finds that the Complainant, being an entity incorporated under the laws of England, is not in a position to conduct these proceedings in Chinese without additional expense and delay due to the need for translation of the Complaint and supporting Annexes.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of proceedings and the decision will be rendered in English.

7. Discussion and Findings

The Panel now proceeds to consider this matter on the merits in light of the Complaint, the absence of a Response, the Policy, the Rules, the Supplemental Rules, and other applicable legal authority, pursuant to paragraph 15(a) of the Rules.

Paragraph 4(a) of the Policy provides that the Complainant must prove, with respect to the Disputed Domain Name, each of the following:

(i) The Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights; and

(ii) The 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.

A. Identical or Confusingly Similar

The Complainant has established that it is the proprietor of KAREN MILLEN trademarks, which have been registered in the United Kingdom since September 11, 1998 and as a CTM since October 13, 1999.

It is established that incorporation of a complainant’s distinctive trademark in its entirety into a disputed domain name is sufficient to establish that the disputed domain name is identical or confusingly similar to the complainant’s trademark and the addition of a non-distinctive element to the disputed domain name does not sufficiently differentiate the disputed domain name from the trademark (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662; Time Warner Entertainment Company L.P. v. HarperStephens, WIPO Case No. D2000-1254; eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307, also see the generally adopted panel views under paragraph 1.9 of WIPO Overview 2.0). Further, a hyphen serving as a link between a distinctive trademark and a non-distinctive element added to the disputed domain name is not sufficient to differentiate the disputed domain name from the trademark either (Moncler S.R.L. v. Zheng Little, WIPO Case No. D2012-2120).

In the present case, the Disputed Domain Name incorporates the Complainant’s distinctive trademark KAREN MILLEN in its entirety and also adds a hyphen serving as a link between the Complainant’s distinctive trademark and a non-distinctive element of “outletstore”. Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and the condition of paragraph 4(a)(i) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following several circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the Respondent] of the dispute, use by [the Respondent] 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) where [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the Respondent has] acquired no trademark or service mark rights; or

(iii) where [the Respondent is] 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.

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.1 of WIPO Overview 2.0, whereby: “[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant”.

In the present case, the Complainant has established that it is the owner of the KAREN MILLEN trademark registered in United Kingdom and as a CTM, and that the Complainant has used the KAREN MILLEN trademark on the Internet through its website “www.karenmillen.com” from which it sells and delivers clothing. The Complainant states that the Respondent has not received any license to use the Complainant’s KAREN MILLEN trademark in the Disputed Domain Name.

Furthermore, the Panel notes that the Registrar revealed the owner of the Disputed Domain Name to be “Dong Yi Mao” and there is no evidence in the record to suggest that the Respondent might be commonly known by a name similar to the Disputed Domain Name. There is no evidence that the Respondent has any trademark rights in the Disputed Domain Name.

The Respondent failed to respond to the Complaint or give any explanation as to why the Disputed Domain Name was chosen and registered. Therefore, the Panel finds it is reasonable to conclude that the Respondent deliberately chose to include the Complainant’s KAREN MILLEN trademark in the Disputed Domain Name, for the purpose of achieving commercial advantage by misleadingly diverting consumers to the website at the Disputed Domain Name and that such use cannot be considered a legitimate noncommercial or fair use.

Having considered the above, the Panel finds that the Complainant has made the prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name, and in absence of any reply from the Respondent, has therefore satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides, in relevant part, that if the Panel finds the following circumstances, it shall be evidence of the registration and use of a domain name in bad faith:

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

In relation to the bad faith at the time of registration, the Panel notes that the Complainant has established that its KAREN MILLEN trademark was registered in United Kingdom and as a CTM, and had acquired an international reputation prior to the date the Disputed Domain Name was registered (September 13, 2012). The Respondent’s choice to incorporate the identical KAREN MILLEN element as the primary distinctive element of the Disputed Domain Name strongly suggests that the Disputed Domain Name was registered in bad faith. As the Respondent did not reply to the Complaint nor submit any evidence to the contrary, the Panel finds that the Dispute Domain Name was registered in bad faith.

Further, the evidence of the content available on the website at the Disputed Domain Name (as shown on the screen shot captured on November 29, 2012 and provided by the Complainant in Annex 4 to the Complaint), indicates that the Respondent uses the Disputed Domain Name to attract, for commercial gain, Internet users to the Respondent’s website where it purportedly sells KAREN MILLEN goods.

Based on the above findings, the Panel finds that the Respondent has registered and is using the Disputed Domain Name in bad faith as provided in paragraph 4(b)(iv) of the Policy, and thus the Complainant fulfills the condition provided in paragraph 4(a)(iii) of the Policy.

8. 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 <karenmillen-outletstore.com> be transferred to the Complainant.

Peter J. Dernbach
Sole Panelist
Date: March 15, 2013

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