WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Karen Millen Fashions Limited v. Lin Lin

Case No. D2011-1141

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 Lin Lin of Fuzhuo, Fuian, China.

2. The Domain Names and Registrar

The disputed domain names <karenmillenaustralia.net> and <karenmillenusa.net> are registered with Jiangsu Bangning Science & technology Co. Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 6, 2011. On July 6, 2011, the Center transmitted by email to Jiangsu Bangning Science & technology Co. Ltd. a request for registrar verification in connection with the disputed domain names. On July 8, 2011, Jiangsu Bangning Science & technology Co. Ltd. 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 11, 2011, the Center transmitted an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding 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 July 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 7, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 8, 2011.

The Center appointed Susanna H.S. Leong as the sole panelist in this matter on August 11, 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.

4. Factual Background

The Complainant is the registered proprietor of an international portfolio of registered trade marks for the mark KAREN MILLEN. In particular the Complainant relies upon United Kingdom registered trade mark number 2156187A in classes 3, 9, 18 and 25 covering a range of goods, including clothing and Community Trade Mark number 000814038 (“CTM”) in classes 3, 18 and 25, also for a range of goods including articles of clothing. The Complainant has been using the name KAREN MILLEN in connection with the retail sale of clothing since 1981. Since being founded by Ms Karen Millen in England 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 United States of America, Russian Federation, Australasia and the Middle East and has an international website located at “www.karenmillen.com” from which it sells and delivers clothing. Sales of clothing by the Complainant under the KAREN MILLEN mark were £215.2m in 2010 and are projected to be £254.8m for the year ending January 31, 2011.

According to the WhoIs Record operated by Domain Tools LLC, the disputed domain names is owned by a Chinese person whose English name is Lin Lin and he/she is the Respondent in this administrative proceeding.

5. Parties’ Contentions

A. Complainant

First, the Complainant contends that the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights on the following grounds:

(1) The Complainant is the registered proprietor an international portfolio of registered trade marks for the mark KAREN MILLEN.

(2) The disputed domain names are virtually identical to the Community Trade Mark owned by the Complainant. The distinctive element of the disputed domain names is “karen millen” and the Complainant is the lawful owner of the mark KAREN MILLEN.

Second, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names that are the subject of the Complaint. The Respondent is in no way connected with the Complainant and is not licensed by the Complainant to use the disputed domain names and yet the Respondent has been offering Karen Millen branded product for sale via the websites to which the disputed domain names point. This clothing has been verified as being counterfeit and these sales have been causing considerable damage to the Complainant’s business.

Third, the Complainant contends that the Respondent has registered and is using the disputed domain names in bad faith. The disputed domain names have been registered solely for the purposes of offering for sale and selling counterfeit Karen Millen branded products at aggressively low prices via the websites to which the disputed domain names point. Furthermore, members of the public have been confused into thinking that the websites to which the disputed domain names point 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 service representatives.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Language of the Proceeding

The language of the Registration Agreement for the disputed domain names is Chinese. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the Case File, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceedings should be in English. The Complainant has submitted a request that English should be the language of the present proceeding for the following reasons:

(1) The Complainant is a company registered in England and Wales and English is the first language of the Complainant, its officers and legal advisors;

(2) The Respondent is completely familiar with and conversant in the English language, as is apparent from visiting the websites to which the disputed domain names <karenmillenaustralia.net> and <karenmillenusa.net>point. In particular, all content on these websites is written in English and the websites have been designed so as to confuse English speaking customers into thinking that these websites are actually those of the Complainant;

(3) There is no prejudice to the Respondent for the language to be in English, whereas the Complainant would be unfairly prejudiced if it is put to the trouble and expense of having to conduct these proceedings in Chinese; and

(4) The Registration Agreement does not specify a language in which the Complaint should be filed.

After considering the circumstances of the present case and the submission of the Complainant’s request, the Panel is of the opinion that the language for the present proceeding shall be in English and the decision will be rendered in English. The Panel based its decision on the following reasons:

(i) The Panel’s discretion under the Policy

Paragraph 11 of the Rules provides:

“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.”

Thus, parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.

(ii) The Circumstances of this Case

One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.

In particular, the Panel notes that the material facts of this proceeding are generated in the English language. On record, the Respondent appears to be Chinese and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence has been adduced by the Complainant to suggest in the interests of fairness, the language of the proceeding ought to be the English language. In particular, the Panel notes that (a) the disputed domain names are made up of letters in Ascii-Script and could be pronounced phonetically in English; and (b) the Complainant has exhausted all ways to communicate with the Respondent but to no avail; (c) the Center has notified the Respondent of the proceedings in both Chinese and English. The Respondent had a choice to respond to the Complaint in either Chinese or English as the Panel who has been appointed by the Center is conversant in both languages. However, the Respondent has chosen not to respond to the Complainant’s allegations. Considering these circumstances, the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.

After considering the circumstances of the present case, the Panel decides that the proceeding shall be English and the decision will be rendered in English.

6.2 Substantive Elements of the Policy

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain names, the Complainant must establish that each of the three following elements is satisfied:

1. The disputed domain names are identical or confusingly similar to a trade mark or service mark in which Complainant has rights;

2. The Respondent has no rights or legitimate interests in respect of the disputed domain names; and

3. The disputed domain names have been registered and are being used in bad faith.

Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.

Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.

On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Complainant has adduced evidence to demonstrate that it has registered trade mark rights and continues to have such rights in the KAREN MILLEN marks in classes 3, 9, 18 and 25 covering a range of goods, including clothing both as a United Kingdom registered trade mark and a Community Trade Mark in the European Union. The Panel finds that the Complainant has rights and continues to have such rights in the relevant KAREN MILLEN marks.

In assessing the degree of similarity between the Complainant’s trade mark and the disputed domain names, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s mark and the disputed domain names is to be considered from the perspective of the average consumer of the goods or services concerned and in this case, the average consumer is the Internet user seeking to purchase or download information about the Complainant’s products.

The disputed domain names comprise (a) an exact reproduction of Complainant’s trade mark KAREN MILLEN that is attached to the words “australia” in one and the acronym of the word United States of America “usa” in another; and (b) the top level domain suffix “.net”. The Panel finds that the addition of the word “australia” and the acronym “usa” is non-distinctive and it does not provide additional specification or sufficient distinction from the Complainant or its trade mark KAREN MILLEN. In fact, the Panel finds that the addition of the word “australia” and the acronym “usa” serves to emphasize the geographical location of the Complainant’s business which increases the authenticity of the websites to which the disputed domain names point and heightens consumer confusion that the websites are the Complainant’s official websites selling Karen Millen clothes and accessories online. It is also a well accepted principle that the addition of top level domain suffix such as “.net” or “.com” being the generic top-level domain is not a distinguishing factor.

Accordingly, the Panel finds that the disputed domain names <karenmillenaustralia.net> and <karenmillenusa.net> are confusingly similar to a trade mark or service mark in which the Complainant has rights.

The Panel finds for the Complainant on the first part of the test.

B. Rights or Legitimate Interests

The burden of proof on this element lies with the Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests to a disputed domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions.

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [the Respondent] 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 [the Respondent] (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 [the Respondent] are 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 or service mark at issue.

The Panel finds that the Complainant has made out a prima facie showing and notes that the Respondent has not provided any evidence of the circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain names.

Based on the following reasons the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names:

1. The Respondent has not provided evidence of a legitimate use of the disputed domain names or reasons to justify the choice of “karenmillenaustralia.net” and “karenmillenusa.net” in his/her business operations;

2. There was no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trade mark or to apply for or use any domain name incorporating the trade mark;

3. There is no indication that the Respondent is commonly known by the disputed domain names and/or is using the disputed domain names in connection with a bona fide offering of goods or services;

4. The Complainant and its KAREN MILLEN marks enjoy a global reputation including China, with regard to a wide range of goods, including clothing.

Consequently, in the absence of contrary evidence and satisfactory explanations from the Respondent, the KAREN MILLEN mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.

The Panel finds for the Complainant on the second part of the test.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) Respondent has 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 Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product.

The above circumstances are indicative of registration and use of the domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the panel can also constitute registration and use of the domain name in bad faith by the respondent in the appropriate cases.

One important consideration in the Panel’s assessment of whether the Respondent has registered and used the disputed domain names in bad faith is prior knowledge on the part of the Respondent of the Complainant’s rights in the trade mark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcend national borders. Taking into account the global reputation of the Complainant and its KAREN MILLEN marks, the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain names.

Consequently, in the absence of contrary evidence and satisfactory explanations from the Respondent, the Panel finds that the term “Karen Millen” in the Complainant’s KAREN MILLEN marks which have acquired a global reputation in fashion articles including clothing and is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, it would have been pertinent for the Respondent to provide an explanation of his/her choice in the disputed domain names. However, the Respondent has chosen not to respond to the Complainant’s allegations in the Complaint and this leads the Panel to conclude that the disputed domain names were registered by the Respondent in bad faith with the intent to create an impression of an association with the Complainant and its products and services, and profit there from.

Given the reputation of the Complainant’s KAREN MILLEN marks in fashion articles, the compelling conclusion is that the Respondent, by choosing to register and use a domain name which is identical or confusingly similar to the Complainant’s widely known and distinctive trademark, intended to ride on the goodwill of the Complainant’s trademark in an attempt to exploit, for commercial gain, Internet traffic destined for the Complainant. In fact, the Complainant has adduced evidence to show that the Respondent has offered for sale unauthorized goods bearing the Complainant’s KAREN MILLEN marks on the websites to which the disputed domain names point to. In the absence of evidence to the contrary and rebuttal from the Respondent, the choice of the disputed domain names and the conduct of the Respondent are indicative of registration and use of the disputed domain names in bad faith.

The Panel finds for the Complainant on the third part of the test.

7. Decision

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 names, <karenmillenaustralia.net> and <karenmillenusa.net>, be transferred to the Complainant.

Susanna H.S. Leong
Sole Panelist
Dated: August 24, 2011