WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Karen Millen Fashions Limited v. Leonie Helena
Case No. D2013-0001
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.
The Respondent is Leonie Helena of Fuzhou, Fujian, China.
2. The Domain Name and Registrar
The disputed domain name <karenmillenireland-sales.com> is registered with Instra Corporation Pty Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 3, 2013. On January 3, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 3, 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 for the disputed domain name.
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 14, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 3, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 4, 2013.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on February 13, 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 operates under the mark KAREN MILLEN in connection with retail sale of clothing since 1981.
Currently, the Complainant trades from over 288 Karen Millen stores in 39 countries, including European nations, the United States of America, Russian Federation, Australia, Asia and the Middle East countries.
The Complainant's international website is located at “’www.karenmillen.com’’, from which it sells and delivers clothing products.
The Complainant owns an international portfolio of registered trademarks for the mark KAREN MILLEN.
The Respondent registered the disputed domain name on November 7, 2012.
The Panel accessed the disputed domain name on February 25, 2013, which was linked to a website very similar to the Complainant’s international website, offering clothing products for sale and reproducing the Complainant’s trademark KAREN MILLEN.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) The disputed domain name is virtually identical to the Complainant’s trademark KAREN MILLEN. The distinctive element of the disputed domain name is Karen Millen and the Complainant is the lawful owner of the mark KAREN MILLEN;
(ii) The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is in no way connected with the Complainant and is not licensed by the Complainant to use the disputed domain name, nor to sell Karen Millen products. The clothing products sold through the disputed domain name are counterfeit and these sales have been causing considerable damages to the Complainant’s business.
(iii) The Respondent registered and is using the disputed domain name in bad faith. The disputed domain name was registered solely for the purposes of offering for sale and selling counterfeit Karen Millen branded products at aggressively low prices. Some of the Complainant’s costumers have already been confused into thinking that the website to which the disputed domain name points is owned and operated by the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, the Complainant shall prove the following three elements:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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 Panel has no doubt that “Karen Millen” is a term directly connected with the Complainant’s activities in the clothing retail business.
Annex 3 to the Complaint shows registrations of KAREN MILLEN trademarks in several countries since at least 1999.
The trademark KAREN MILLEN is wholly encompassed within the disputed domain name.
The addition of the expression “ireland-sales” does not prevent the disputed domain name from being confusingly similar to the Complainant’s trademark. Internet users could be confused into thinking that the disputed domain name was associated with the Complainant, and in particular with the business of the Complainant in Ireland.
Previous UDRP decisions have demonstrated that geographical additions do not alter the underlying meaning of a domain name, so as to avoid confusing similarity. This has been held in many UDRP cases (see e.g. Inter-IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; AltaVista Company v. S.M.A., Inc., WIPO Case No. D2000-0927).
Furthermore, the addition of a generic top-level domain extension such as “.com” is irrelevant when determining whether a domain name is confusingly similar to a registered trademark..
As a result, the Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark, and that the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name:
(i) Before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent has been commonly known by the domain name; or
(iii) The respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has not licensed nor authorized the use of its trademark to the Respondent, and there is no indication that the Respondent is commonly known by the disputed domain name.
The present record provides no evidence to demonstrate the Respondent’s intent to use or to make demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the webpage that is published at the disputed domain name reproduces the Complainant’s logo and offers for sale counterfeit Karen Millen branded products.
Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) Circumstances indicating that the respondent has registered or 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 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) 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) 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 online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location
The website published at the disputed domain is basically an imitation of the Complainant’s official website, including the reproduction of the Complainant’s general trade dress, logo and products.
Furthermore, the Complainant identified that the clothing products sold through the website at the disputed domain name are counterfeit.
Therefore, in doing so, the Respondent:
(i) intentionally attempts to attract, for commercial gain, the Complainant’s costumers to its website;
(ii) creates a likelihood of confusion with the Complainant’s mark as to the source of its website; and
(iii) deprives the Complainant from selling its products to prospective clients who are clearly looking for the Complainant.
Accordingly, the Panel finds that the Complainant has proved that the disputed domain name was registered and is being used in bad faith, satisfying the third element 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 disputed domain name <karenmillenireland-sales.com> be transferred to the Complainant.
Dated: February 27, 2013