WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Karen Millen Fashions Limited v. Kathinka Djontono
Case No. D2011-1903
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 Kathinka Djontono of Hoogvliet, Netherlands.
2. The Domain Name and Registrar
The disputed domain name <karenmillendressesoutlets.com> (the “Domain Name”) is registered with Jiangsu Bangning Science & technology Co. Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2011. On November 2, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 3, 2011, 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 November 3, 2011, the Center transmitted an email communication to the parties in both Chinese and English regarding the language of the proceedings. On November 7, 2011, the Complainant confirmed its request that English be the language of the proceedings. The Respondent did not comment on the language of the 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 the Respondent of the Complaint, and the proceedings commenced on November 10, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 30, 2011. On November 16, 2011, the Center received email communication from a third party Mr. Djontono purporting to be the husband of the Respondent, claiming that the Domain Name is not owned by the Respondent, that the two email addresses […]@hotmail.com and […]@hotmail.com belong to the Respondent, that the Respondent did not receive any copy of the Complaint through these email addresses, and that the telephone numbers and fax numbers indicated do not belong to them.
The Center acknowledged receipt of the email correspondence from Mr. Djontono and as it would be a matter for the administrative Panel to decide, the Center included the communication from Mr. Djontono in the record of the proceedings transmitted to the Panel.
The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 1, 2011.
The Center appointed Jacob (Changjie) Chen as the sole panelist in this matter on December 8, 2011. 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.
Having reviewed the communications records in the case file, the Panel notes that the third party Mr. Djontono, allegedly the husband of the Respondent, has failed to substantiate his relationship to the Respondent and the allegations, and more importantly, the authorization to represent the Respondent in the proceedings. In any event, the Panel has insufficient information to draw any firm conclusions, other than the obvious one that Mr. Djontono’s communication does little to clarify the Panel’s assessment of the merits of the case.
The Panel further finds in the case file that the registrant and its contact details provided by the Registrar are the same as those listed in the WhoIs. Though attempts to transmit notifications to one of the Respondent’s email addresses […]@hotmail.com failed, there was no delivery failure report for transmitting notifications to the Respondent’s another email address […]@hotmail.com, as well as to the postal address of the Respondent stated in the WhoIs. The Center therefore has discharged its responsibility under paragraph 2(a) of the Rules to employ reasonable available means calculated to achieve actual notice to the Respondent.
Accordingly, the Panel will not take account of correspondence from that third party in rendering the decision.
4. Factual Background
The Complainant is a fashion company incorporated under the laws of England and Wales. The Complainant holds registrations for the mark KAREN MILLEN, inter alia, the UK registered trademark No. 2156187A in classes 3, 9, 18 and 25 covering a range of goods including clothing, and the Community Trade Mark No. 000814038 in classes 3, 18 and 25 covering goods including articles of clothing. The Complainant has been using the name KAREN MILLEN in connection with the retail sale of clothing since its foundation in 1981 by Ms. Karen Millen. 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 of “www.karenmillen.com” from which it sells and delivers clothing.
The Respondent registered the Domain Name <karenmillendressesoutlets.com> on May 3, 2011 and has used the Domain Name to direct Internet users to a website selling KAREN MILLEN branded products.
5. Language of the Proceedings
Under paragraph 11 of the Rules, the language of the proceedings shall be the language of the registration agreement, unless both parties agree otherwise, or the registration agreement specifies otherwise, or the panel determines otherwise.
The Complainant initially filed its Complaint in English and later requested for English to be the language of the proceedings for the following reasons:
(a) the Complainant is a company registered in England and Wales and English is the first language of the Complainant, its officers and legal advisors;
(b) the Respondent is familiar with and conversant in English, as is apparent from the website to which the Domain Name points. In particular, all content on the said website is written in English and the website has been designed to confuse English-speaking customers into thinking that the website is actually the Complainant’s;
(c) there is no prejudice to the Respondent if the language of the proceedings is in English, while the Complainant would be unfairly prejudiced if it had to conduct the proceedings in Chinese.
As confirmed by the Registrar, the language of the Registration Agreement is Chinese. Based on the evidence presented on the record, no agreement appears to have been reached between the Complainant and the Respondent that the language of the proceedings should be English.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceedings by taking into consideration all relevant circumstances, and it is established practice to take paragraphs 10(b) and 10(c) of the Rules into consideration for the purpose of determining the language of the proceedings to ensure that the parties are treated with equality and that each of them is given a fair opportunity to present its case.
The Panel notes that the website to which the Domain Name resolves is in English and the Respondent has been given a fair opportunity to object to the use of English as the language of the proceedings but did not do so.
The Panel has also taken into consideration that the representative of the Complainant has submitted all documents in English, and additional expense and delay would likely be incurred if the Complaint as well as the evidence is requested to be translated into Chinese.
Using English as the language of the proceedings will not be prejudicial to the Respondent in its ability to articulate the arguments for the case, while if the proceedings are to be conducted in Chinese, the Complainant would be unfairly disadvantaged by being forced to translate the Complaint as well as the evidence into Chinese.
Considering all of these circumstances, the Panel decides that the language of the proceedings shall be English and the decision will be rendered in English.
6. Parties’ Contentions
The Complainant contends that the distinctive element of the Domain Name is “Karen Millen” and the Domain Name is virtually identical to its trademark KAREN MILLEN.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent is in no way connected with the Complainant or licensed by the Complainant to use the Domain Name. The KAREN MILLEN branded products being offered on the website to which the Domain Name resolves have been verified as being counterfeits by the Complainant, and sales of the counterfeit goods have been causing considerable damage to the Complainant’s business.
The Complainant finally contends that the Respondent has registered and is using the Domain Name in bad faith. 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. Furthermore, members of the public have been confused into thinking that the website to which the Domain Name points is owned and operated by the Complainant. The Complainant has received complaints regarding the poor quality of the garments purchased from the said website.
The Respondent did not reply to the Complainant’s contentions.
7. Discussion and Findings
To succeed in a complaint, the Complainant must, in accordance with paragraph 4(a) of the Policy, satisfy the Panel of the following three elements:
(i) the Domain Name 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 Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Based on the evidence presented by the Complainant and the relevant provisions of the Policy, the Panel concludes as follows:
A. Identical or Confusingly Similar
The Complainant has introduced evidence showing it has established rights in the KAREN MILLEN mark. The Complainant’s mark KAREN MILLEN is protected as a trademark and the Complainant holds registration for Community Trade Mark No. 000814038 registered in 1999.
The Domain Name incorporates the Complainant’s trademark KAREN MILLEN in its entirety, which in itself is sufficient to support the claim that the Domain Name is confusingly similar to the Complainant’s mark. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047 (“When a domain name incorporates, in its entirety, a distinctive mark, that creates sufficient similarity between the mark and the domain name to render it confusingly similar”), and also Oakley, Inc. v. Zhang Bao, WIPO Case No. D2010-2289.
The term “dressesoutlets” added to the Domain Name is composed of words “dresses” and “outlets”, both of which are generic, in particular, the word “dresses” relates to the Complainant’s products. The Panel finds that the addition of generic or descriptive words is insufficient to dispel the confusing similarity arising from the incorporation of the Complainant’s KAREN MILLEN mark. See Wal-Mart Stores, Inc. vs. Kuchora, Kal, WIPO Case No. D2006-0033 (“It is well-established that the addition of a generic term to a trademark does not necessarily eliminate a likelihood of confusion”) and also PRL USA Holdings, Inc. v. Unasi Management Inc., WIPO Case No. D2005-1027.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy and the Domain Name is confusingly similar to the Complainant’s trademark KAREN MILLEN.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services;
(ii) the fact that respondent has been commonly known by the domain name; or
(ii) legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant has rights in the KAREN MILLEN trademark and trades from over 288 Karen Millen stores in 39 countries from Europe to the US, Russia, Australasia and the Middle East. Moreover, according to the Complainant, the Respondent has never been licensed to use “Karen Millen” in the Domain Name.
The Panel is satisfied that the Complainant has established prima facie evidence that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(c) of the Policy. It is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent. See among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683.
The Panel also notes that the Respondent has failed to file a response to prove its rights or legitimate interests in the Domain Name under paragraph 4(c) of the Policy.
For all of the above reasons, the Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website or other on-line 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 its website or location.
As evidenced by the documents submitted by the Complainant, the Respondent is using the Domain Name to divert Internet users to a website offering for sale KAREN MILLEN branded products. The Panel finds that bad faith is established by the Respondent’s use of the Domain Name to attract Internet users to a for-profit online store selling KAREN MILLEN branded products. The Panel finds that by incorporating “Karen Millen” in the Domain Name, the Respondent is intentionally creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, and that the Internet users are likely to be confused into thinking that the Domain Name has a connection with the Complainant, which is contrary to the fact.
Moreover, the Respondent has chosen not to respond to the contentions of the Complainant and such failure may be further indicative of bad faith. See The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610, “The failure of the Respondent to respond to the Complaint further supports an inference of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787)”.
In light of the above facts and reasons, the Panel therefore determines that the Domain Name was registered and is being used in bad faith pursuant to the Policy.
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, <karenmillendressesoutlets.com>, be transferred to the Complainant.
Jacob (Changjie) Chen
Dated: December 23, 2011