WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Karen Millen Fashions Limited v. Ming Li
Case No. D2013-0362
1. The Parties
The Complainant is Karen Millen Fashions Limited of Witney, Oxfordshire, United Kingdom of Great Britain and Northern Ireland, represented by Heatons LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Ming Li of Nanchang, Jiangxi, China.
2. The Domain Name and Registrar
The disputed domain name <karenmillen-outlet-onlines.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2013. On February 25, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 25, 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.
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 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 24, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 25, 2013.
On April 8, 2013, the Center sent an email to both parties indicating that due to an administrative error, the Notification of the Complaint email may not have been received by the Respondent because the email was larger than the size limit for recipients. The purpose of such email communication from the Center to the Respondent was to assure compliance with the provision set forth in the Rules No. 2 and 4, to inform the Respondent that an administrative proceeding had been commenced against it. Furthermore, the communication provided a further window for the Respondent to file a response; however no response was filed by April 13, 2013.
The Center then appointed Rodrigo Velasco Santelices as the sole panelist in this matter on April 16, 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 Domain Namewas registered on December 4, 2012.
The Complainant has been using the name KAREN MILLEN in connection with the retail sale of clothing since 1981.
The Complainant is the registered proprietor of an international portfolio of registered trade marks for the mark KAREN MILLEN covering a range of goods in classes 3, 9, 18 and 25.
5. Parties’ Contentions
In particular, UK registered trade mark number 2156187A and Community Trade Mark (CTM) number 000814038.
The Complainant currently trades from over 288 KAREN MILLEN stores in 39 countries from Europe to the US, Russia, Australasia and the Middle East and has an international website located at “www.karenmillen.com’’ from which it sells and delivers clothing.
The international retail value of products sold under the KAREN MILLEN brand directly and through authorized resellers/partners is GBP 272,384,000 for the year ended January 31, 2012.
The Domain Name is virtually identical to the CTM owned by the Complainant. The distinctive element of the Domain Name is KAREN MILLEN and the Complainant is the lawful owner of the mark KAREN MILLEN.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, the Complainant must prove that each of the three elements is present:
(i) the domain name registered by the Respondent 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 names in question; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
This first element requires that the Complainant demonstrate that (1) it has trademark rights and (2) the Domain Name is identical or similar to a trademark in which the Complainant has rights.
The Panel finds that the Complainant has established that it is the owner of the registered trademark KAREN MILLEN based on the evidence provided by the Complainant (Annex 3 to the Complaint).
The Domain Name consists of the following wording “karenmillen-outlet-onlines.com”, the first a registered trademark; the following terms are more or less generic terms. The addition of these generic terms to a registered trademark in this particular case is not sufficient to avoid confusion. Furthermore, the Panel considers that the added generic words are rather fitted to strengthen the impression that the Domain Name belongs to, or is affiliated with Complainant.
The Panel therefore finds that the Domain Name is confusingly similar to the Complainant’s trademark and the first element of the Policy is made out.
B. Rights or Legitimate Interests
The second element requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the Domain Name in question.
By the terms used in paragraph 4(a) of the Policy, it is clear that the overall burden of proof is on the Complainant, however the Policy provides the Respondent means to demonstrate its rights to and legitimate interests in the Domain Name in responding to a Complaint. If the Respondent does not make use of these means and the Complainant has established a prima facie case under sub paragraph 4(a)(ii), the burden is shifted to the Respondent to prove the contrary.
The Complainant has stated that the Respondent is in no way connected with the Complainant and is not licensed by the Complainant to use the KAREN MILLEN trademark, and yet the Respondent has been offering KAREN MILLEN branded products for sale via the website to which the Domain Name points.
The Respondent has not provided a Response to the allegations set forth by the Complainant, though given two opportunities to do so.
There is no evidence in the case file demonstrating that the Respondent might have rights or legitimate interest in the Domain Name.
In the absence of a Response, this Panel is satisfied that the Complainant has satisfied the second element, paragraph 4(a) of the Policy and has established a prima facie case that the Respondent has no rights or legitimate interest in the Domain Name.
C. Registered and Used in Bad Faith
This third element requires that the Complainant demonstrate that (1) the Domain Name has been registered in bad faith and (2) is being used in bad faith.
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith.
The Complainant has stated that the trademark KAREN MILLEN is the personal name of the trademark owner Karen Millen. The trademark registration is in the name of Karen Millen Fashions Limited. Furthermore, the Domain Name webpage offers the exact articles for which the Complainant has trademark rights, consequently, it is rather impossible to believe that the election of such a Domain Name is a mere coincidence, and therefore one can reasonably conclude that the Respondent had knowledge of the existence of the Complainant’s trademark, being the aforementioned sufficient evidence to conclude that the Respondent was in all likelihood well aware of the Complainant’s mark and wanted to refer to the Complainant.
The Complainant has further stated that 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, all of which has confused the general public into thinking that the website to which the Domain Name points to is owned and operated by the Complainant.
After reviewing the evidence filed in Annex 4 and 5 to the Complaint, which refer to complaints upon receipt of poor quality garments and crossover sales which have been causing considerable damage to the Complainant’s business, the Panel concurs that clearly the Respondent has intentionally tried to divert Internet user’s to its webpage, for commercial gain.
This behavior constitutes bad faith use and may tarnish the Complainant’s reputation by, among other things, attracting Internet users to a webpage that does not correspond to what they are looking for.
The above can only lead the Panel to conclude that the Respondent is attempting to attract, for commercial gain, Internet users to its website, 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 of the services provided on the website.
Therefore, in accordance with paragraph 4 (b)(iii) of the Policy, the above findings lead the Panel to the conclusion that the 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 Domain Name <karenmillen-outlet-onlines.com> be transferred to the Complainant.
Rodrigo Velasco Santelices
Date: April 30, 2013