WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Karen Millen Fashions Limited v. Jenny Mailloux

Case No. D2012-1394

1. The Parties

The Complainant is Karen Millen Fashions Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Heatons LLP, United Kingdom.

The Respondent is Jenny Mailloux of Glasgow, Lanarkshire, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <1984karenmillen.com> is registered with Todaynic.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2012. On July 9, 2012, the Center transmitted by email to Todaynic.com, Inc. a request for registrar verification in connection with the disputed domain name. On July 10, 2012, Todaynic.com, Inc. 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 19, 2012, the Center transmitted an email to the parties in both Chinese and English languages regarding the language of proceedings. On July 20, 2012, the Complainant requested that English be the language of proceedings. The Respondent did not comment on the language of 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 July 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 15, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 16, 2012.

The Center appointed Jonathan Agmon as the sole panelist in this matter on August 24, 2012. 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 an England based company that engages in the field of fashion since 1981.

The Complainant currently markets its products in over than 288 “Karen Millen” stores in 39 countries located, among others, in Europe, Russian Federation, the United States of America, the Middle East, and Australia.

The Complainant operates an international website under the domain name <karenmillen.com>.

The Complainant and its affiliate companies (hereinafter jointly: “the Complainant”) are the owner of numerous worldwide trademark registrations for the mark KAREN MILLEN. For example: Community trademark registration No. 814038 - KAREN MILLEN, with the registration date of October 13, 1999; Community trademark registration No. 9955001 - KAREN MILLEN, with the registration date of April 3, 2000; United States trademark registration No. 3469389 - KAREN MILLEN, with the registration date of July 15, 2008; International trademark registration No. 950616 - KAREN MILLEN, with the registration date of November 12, 2007, designated, among others, to the United States of America, Armenia and Morocco, and many others.

The disputed domain name <1984karenmillen.com> was created on May 26, 2011.

The disputed domain name <1984karenmillen.com> resolves to an on-line marketplace, which apparently offers for sale clothing, by using the Complainant’s marks.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is virtually identical or confusingly similar to the Complainant’s KAREN MILLEN trademark.

The Complainant further argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name, among others, since the Complainant did not license or authorize the Respondent to use the disputed domain name.

The Complainant further argues that the website under the disputed domain name offers counterfeit products of the Complainant’s.

The Complainant further argues that the Respondent registered and is using the disputed domain name in bad faith. The Complainant contends that the Respondent registered the disputed domain name to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark.

B. Respondent

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

6. Discussion and Findings

A. Language of the Proceeding

Paragraph 11(a) of the Rules provides that:

“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.”

The language of the Registration Agreement for the disputed domain name is Chinese.

The Complainant requested that the language of proceedings should be English.

The Panel cites the following with approval:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this 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 abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of proceedings:

a) The website under the disputed domain name is operated while using the English language exclusively;

b) The disputed domain name consists of English letters, rather than Chinese characters or words;

c) The Respondent did not object to the Complainant’s request that English be the language of proceedings.

Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for these proceedings to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding should be English.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.

The Complainant is the owner of numerous worldwide trademark registrations for the mark KAREN MILLEN. For example: Community trademark registration No. 814038 - KAREN MILLEN, with the registration date of October 13, 1999; Community trademark registration No. 9955001 - KAREN MILLEN, with the registration date of April 3, 2000; United States trademark registration No. 3469389 - KAREN MILLEN, with the registration date of July 15, 2008; International trademark registration No. 950616 - KAREN MILLEN, with the registration date of November 12, 2007, designated, among others, to the United States of America, Armenia and Morocco, and many others.

The disputed domain name <1984karenmillen.com> integrates the Complainant’s KAREN MILLEN trademark in its entirety and differs from it by the additional number “1984” and by the additional gTLD “.com”.

The addition of the number “1984” does not serve in this Panel’s opinion to sufficiently distinguish or differentiate the disputed domain name from the Complainant’s KAREN MILLEN trademark as it is a non-distinctive element, which has no clear meaning.

The most prominent element in the disputed domain name is clearly the mark KAREN MILLEN, which is a distinctive name and lacks dictionary meaning in Chinese.

Numerous UDRP panels have found that the mere addition of a non-significant element does not sufficiently differentiate the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505). Also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name <redbull-jp.net> is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd., WIPO Case No. D2006-0909).

“The mere addition of a descriptive term to an identical trademark has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark” (Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709).

Also, the addition of the gTLD “.com” to the disputed domain name does not avoid confusing similarity. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The gTLD “.com” is without legal significance since the use of a gTLD is technically required to operate the disputed domain name.

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

C. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

In the present case, the Complainant alleges that the Respondent lacks rights or legitimate interests in respect with the disputed domain name and the Respondent failed to assert any such rights or legitimate interests.

The Panel finds that the Complainant has established a prima facie case in this regard, inter alia due to the fact that Complainant has not licensed or otherwise permitted the Respondent to use the KAREN MILLEN trademark, or a variation thereof.

The Respondent has not submitted a Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

D. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).

The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns a registration for the KAREN MILLEN trademark at least since the year 1999. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the domain name it had intentionally attempted to attract, for commercial gain, Internet users to the websites or other on-line locations to which the disputed domain name is resolved to, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the domain name resolved to.

The disputed domain name leads Internet users to a website that engages in marketing fashion products, while using the Complainant’s trademark, without the Complainant’s authorization.

The Respondent’s use of the disputed domain name, which resolves to a website that is designed to look like a website associated with the Complainant and promotes goods similar or identical to the goods being offered by the Complainant is clear evidence, in the Panel’s view, that the Respondent registered and is using the disputed domain name with knowledge of the Complainant and of the use the Complainant is making of its trademark and intended to trade off the value of these. The Respondent’s actions therefore constitute bad faith under the Policy. (See Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”).

Moreover, the Complainant claims that the goods offered for sale at the website under the disputed domain name are seemingly counterfeit products of the Complainant’s, to which the Respondent has not rebutted. Offering for sale counterfeit products of the Complainant under the disputed domain names constitutes further evidence of bad faith (see Prada S.A. v. Domains For Life, WIPO Case No. D2004-1019).

Finally, based on the evidence presented to the Panel, including the late registration of the disputed domain name and the Respondent’s use of the disputed domain name, the Panel draws the inference that the disputed domain name was registered and being used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

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 domain name <1984karenmillen.com> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Dated: September 6, 2012