WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Karen Millen Fashions Limited v. liu fei
Case No. D2012-2375
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 liu fei of Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <karen-millenaustralia.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 December 3, 2012. On December 3, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 4, 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. In response to a notification by the Center regarding the registrant name, the Complainant filed an amended Complaint on December 9, 2012.
The Center verified that the Complaint together with the amended 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 December 10, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 30, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2013.
The Center appointed Nicholas Smith as the sole panelist in this matter on January 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 Complainant is a retailer of ladies clothing. It was founded in 1981 in the United Kingdom by Ms. Karen Millen. It currently trades from over 288 stores in 39 countries including in Europe, the United States, the Russian Federation, Australasia and the Middle East. It operates a website at “www.karenmillen.com” from which it sells its branded clothing internationally. In 2012, the value of products sold under the Karen Millen brand directly and through authorised resellers was GBP 272,384,000.
The Complainant has held trade mark registration for the word mark KAREN MILLEN (the “KAREN MILLEN Mark”) since October 1999. The Complainant has registered the KAREN MILLEN Mark in the United Kingdom and in various countries in Europe through a Community trade mark.
The Domain Name <karen-millenaustralia.com> was registered on July 18, 2012. The Domain Name does not currently redirect to an active website, however it has in the past redirected to a website (the “Respondent’s Website”) that offered what was held out to be Karen Millen branded product. According to the Complaint, this product has been verified as counterfeit.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s KAREN MILLEN Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the KAREN MILLEN Mark. It owns a Community trade mark registration for the KAREN MILLEN Mark through the whole of the European Union as well as a United Kingdom trade mark registration.
The Domain Name is virtually identical to the KAREN MILLEN Mark as the distinctive element of the Domain Name is “karen millen”.
The Respondent has no rights or legitimate interests in the Domain Name. The Respondent is in no way connected to the Complainant and is not licensed by the Complainant to use the Domain Name. The Respondent has been using the website to sell counterfeit Karen Millen branded product which does not give it legitimate interests in the Domain Name.
The Domain Name was registered and is being used in bad faith. The Respondent has registered the Domain Name solely for the purposes of selling counterfeit Karen Millen branded product, which has damaged the business of the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the KAREN MILLEN Mark, having registrations for KAREN MILLEN as a trade mark in the European Union and the United Kingdom, as well as other locations around the world.
The Domain Name consists of the KAREN MILLEN Mark and the geographical term “australia”. The addition of a geographical term to a trade mark is not sufficient under the circumstances to provide any distinctiveness to a domain name – see Carlsberg A/S v. Persona / decohouse, decohouse, WIPO Case No. D2011-0972; BP p.l.c. v. Kang-Sungkun Portraits Production, WIPO Case No. D2001-1097; Rolls-Royce PLC v. Hallofpain, WIPO Case No. D2000-1709; and The Nasdaq Stock Market, Inc. v. Vidudala Prasad, WIPO Case No. D2001-1493.
The addition of the suffix “australia" to the KAREN MILLEN Mark merely suggests that the Domain Name refers to the Complainant’s activities in Australia. The suffix “australia” does not distinguish the Domain Name from the KAREN MILLEN Mark in any significant way. The Panel finds that the Domain Name is confusingly similar to the Complainant’s KAREN MILLEN Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making legitimate non-commercial 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.” (Policy, paragraph 4(c))
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the KAREN MILLEN Mark or a mark similar to the KAREN MILLEN Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. Rather it appears that the Respondent is using or has used the Domain Name to operate a website that sells counterfeit Karen Millen product. The sale of counterfeit product from a domain name is not a bona fide offering of goods or services (Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750; Farouk Systems, Inc. v. QYM, WIPO Case No. D2009-1572).
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trade mark 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) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted 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 the Respondent’s website or location. (Policy, paragraph 4(b))
The Panel finds that it is likely that the Respondent was aware of the Complainant and its reputation in the KAREN MILLEN Mark at the time the Domain Name was registered. The Respondent’s Website reproduces the KAREN MILLEN Mark and has engaged in the selling of counterfeit Karen Millen products. The registration of the Domain Name in awareness of the Complainant’s mark and in the absence of rights or legitimate interests amounts to registration in bad faith.
The Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website. The Respondent’s Website sells or has sold counterfeit Karen Millen products in direct competition with the Complainant’s legitimate products. The Respondent benefits from any confusion that exists in the public mind as to whether the Respondent is associated with the Complainant, and by actively selling counterfeit Karen Millen product promotes that confusion. The Panel finds that such use amounts to use in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of 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 <karen-millenaustralia.com> be transferred to the Complainant.
Date: January 22, 2013