WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Karen Millen Fashions Limited v. xu hongkuo
Case No. D2013-1251
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 xu hongkuo of Gulouqu Dongerlu, Fuzhou, China.
2. The Domain Name and Registrar
The disputed domain name <karenmillenoutletonline-ireland.com> is registered with FastDomain, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2013. On July 11, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 11, 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 July 24, 2013, the Complainant filed an amended Complaint to correct a typographical error in the Respondent name.
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 July 30, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 19, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 20, 2013.
The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on August 27, 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.
Language of the proceeding
Paragraph 11 of the Rules provides that “(a) 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 proceeding.”
While the Complainant indicates in the Complaint (filed in English) that to the best of its knowledge, the language of the Registration Agreement is in Chinese, the Registrar has confirmed that the language of the Registration Agreement is English. Accordingly, the Panel determines that the language of the administrative proceeding is English.
4. Factual Background
The Complainant’s trademark KAREN MILLEN has been registered as Community Trademark No. 000814038 (“CTM”) dated October 13, 1999 in classes 3, 18 and 25 covering a range of goods including articles of clothing, as shown in the relevant certified copy of the Certificate of Registration added to the Complaint as Annex 3.
The disputed domain name <karenmillenoutletonline-ireland.com> was registered by the Respondent on March 13, 2013 and expires on March 13, 2014.
5. Parties’ Contentions
The Complainant claims the following:
it has been using the name Karen Millen in connection with retail sale of clothing since 1981; that since it was founded by Ms. Karen Millen in 1981, the Karen Millen brand has experienced rapid growth over the last thirty years to become a global business at the forefront of ladies fashion;
the Complainant currently trades from over 288 Karen Millen stores in 39 countries from Europe to the United States of America, Russian Federation, Australia and the Middle East and has an international website located at “www.karenmiller.com” from which it sells and delivers clothing;
the international retail value of products sold under the Karen Millen brand directly or through authorized resellers/partners is GBP 272,384,000 for the year ended on January 31, 2012;
the disputed domain name is virtually identical to the CTM owned by the Complainant, since its distinctive element is Karen Millen and the Complainant is the lawful owner of the KAREN MILLEN mark;
the Respondent has been offering Karen Millen counterfeit branded product for sale via the website to which the disputed domain name resolves;
the members of the public have been confused into thinking that the website to which the disputed domain name resolves is owned and operated by the Complainant and upon receipt of poor quality garments purchased from this website, complaints have been made to the Complainant’s customer services and the clothing has been verified as being counterfeit.
Finally, the Complainant requests the Panel to order that the disputed domain name be transferred to the Complainant forthwith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
For the Complainant to succeed in this proceeding, under paragraph 4(a) of the Policy, it must prove that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
In accordance with paragraph 15 (a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, Rules, Supplemental Rules and any principles of law that it deems applicable.
A. Identical or Confusingly Similar
The distinctive element in the disputed domain name <karenmillenoutletonline-ireland.com> is the trademark KAREN MILLEN in which the Complainant has rights. In the Panel’s view, the descriptive terms “outlet”, “online” and “Ireland” are insufficient to prevent the threshold on Internet user’s likelihood of confusion and confusing similarity as a result. Moreover, these words tend to strengthen the idea that the disputed domain name belongs to the Complainant and identifies the business of the Complainant coming from an online outlet in Ireland. As to the generic Top-Level Domain (gTLD) suffix “.com” the Panel, in line with many previous UDRP decisions, considers that it may be disregarded under the confusing similarity test. Therefore, the Panel finds that the disputed domain name is confusingly similar to the trademark KAREN MILLEN in which the Complainant has rights and that the Complainant has succeeded on this first element of the Policy.
B. Rights or Legitimate Interests
According to paragraph 4(a) (ii) of the Policy, the second element that the Complainant must prove is that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Policy in paragraph 4(c) sets out various ways in which respondent may demonstrate rights or legitimate interests in a domain name.
Although the Policy states that the complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for the complainant to prove a negative, i.e., that a respondent has no rights or legitimate interests in respect of a domain name. It has therefore become generally accepted under the Policy that, once a complainant has presented a prima facie showing of a respondent’s lack of rights or legitimate interests in a domain name, the burden of production therefore shifts to the respondent. The respondent must then come forward with appropriate allegations or evidence demonstrating its rights or legitimate interests in the domain name in order to refute the prima facie case.
The Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names and so the burden of production has effectively shifted to the Respondent, who did not reply to the Complainant’s contentions and, therefore, has not made such showing.
For these reasons, and in absence of a plausible explanation from the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
For the reasons mentioned in B above and the evidence filed by the Complainant, particularly the copy of a screen shot of the website to which the disputed domain name resolves taken on July 5, 2013, the Panel finds that in absence of any plausible response from the Respondent, the Respondent both registered and is using the disputed domain name in bad faith to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s website and possibly also, as sustained by the Complainant, to sell counterfeit clothing. Therefore, the Complainant has also succeeded in making out 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 <karenmillenoutletonline-ireland.com> be transferred to the Complainant.
Miguel B. O’Farrell
Date: September 2, 2013