WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Karen Millen Fashions Limited v. Fei Teng

Case No. D2011-2173

1. The Parties

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

Respondent is Fei Teng of Guangdong, China.

2. The Domain Name and Registrar

The disputed domain name <karenmillemsydney.com> is registered with Xin Net Technology Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2011. On December 9, 2011, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain name. On December 15, 2011, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On December 15, 2011, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On December 15, 2011, Complainant confirmed its request that English be the language of proceeding. 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 Respondent of the Complaint, and the proceedings commenced on December 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 11, 2012. Respondent did not submit any response. Accordingly, the Center confirmed Respondent’s default on January 12, 2012.

The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on January 27, 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.

After reviewing the case file, the Panel issued the Administrative Panel Procedural Order No.1 (the “Procedural Order”) on February 9, 2012 requesting further information and providing the Parties with an opportunity to respond. Complainant responded to the Procedural Order on February 23, 2012. No response to the Procedural Order was received from Respondent. On February 27, 2012, the Center confirmed to the parties that the revised due date for the decision in this case would be February 29, 2012.

4. Factual Background

Complainant is a company based in the United Kingdom which sells clothing under the KAREN MILLEN trademark. Complainant has provided evidence of trademark protection for KAREN MILLEN, specifically its registrations for the KAREN MILLEN trademark in the United Kingdom (Registration No. 2156187A) and the European Community (Registration No. 000814038). These registrations cover, amongst other goods, cosmetics and clothing in Classes 3 and 25.

Respondent is identified as Fei Teng of Guangdong, China.

The disputed domain name was created on October 14, 2011.

5. Parties’ Contentions

A. Complainant

Complainant claims to have been using the KAREN MILLEN trademark in connection with the retail sale of clothing for over thirty (30) years and notes that its company was founded by an individual named Karen Millen in England in 1981. Complainant cites over 288 of its stores which trade under the KAREN MILLEN trademark in 39 countries. Complainant notes that its products are also sold via its website located at the domain name <karenmillen.com>.

Complainant claims that the disputed domain name <karenmillemsydney.com> is “virtually identical” to its KAREN MILLEN trademark, stating that “the distinctive element of the disputed domain name is KAREN MILLEN”. Complainant maintains that Respondent has no rights or legitimate interests in the disputed domain name and that it has not provided Respondent with any license to use the disputed domain name. Complainant alleges that Respondent has been using the disputed domain name to offer Karen Millen branded products for sale and further alleges that the products offered via the website at the disputed domain name are counterfeit.

Complainant alleges that the sole purpose of Respondent’s registration of the disputed domain name was to offer counterfeit Karen Millen products for sale. Complainant states that members of the public have been confused by the disputed domain name because they have purchased products through the website at the disputed domain name under the belief that the disputed domain name was owned and operated by Complainant. Both of these points are cited by Complainant as indicators of Respondent’s bad faith. Complainant also states that consumers have contacted its customer service representatives regarding this confusion upon receipt of poor quality goods which were purchased via the website featured at the disputed domain name.

In response to the Panel’s request for further information regarding the alleged counterfeit goods and consumer confusion issued in the Procedural Order dated February 9, 2012, Complainant provided a list of nine individuals which it states submitted complaints regarding goods purchased through the disputed domain name. The response to the Procedural Order submitted by Complainant also stated that Complainant’s customer service team had logged each complaint received from consumers regarding garments purchased through the disputed domain name and reiterated that Respondent is not licensed to sell goods which are identical to those sold by Complainant under its KAREN MILLEN trademark.

B. Respondent

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

6. Discussion and Findings

A. Language of the Proceeding

The Complaint was submitted in the English language. The language of the registration agreement is Chinese. Complainant has requested that English be recognized as the language of the proceeding. The Center has communicated notice of the Complaint in both the English and Chinese languages and has invited Respondent to answer the Complaint in either language. Respondent has not acknowledged any communications transmitted by the Center.

The content featured on the website at the disputed domain name is displayed in the English language. The Center has communicated with Respondent in the English and Chinese languages and has provided Respondent with the opportunity to file its response in either language. Taking both of the foregoing points into account along with Respondent’s default and lack of any communication in this proceeding, the Panel concludes that English should be the language of the proceedings. Translation of the Complaint and other materials would cause unnecessary delay.

B. Identical or Confusingly Similar

Complainant alleges that the disputed domain name <karenmillemsydney.com> is virtually identical to its KAREN MILLEN trademark because “the distinctive element of the disputed domain name is KAREN MILLEN”. This statement is not accurate. The disputed domain name is <karenmillemsydney.com>; it does not incorporate Complainant’s KAREN MILLEN trademark, rather the words “karen” and “millem”. Nevertheless, the Panel believes that the spelling discrepancy does not create a domain name which is distinctive from Complainant’s KAREN MILLEN trademark. The disputed domain name is composed of the literal elements “karen”, “millem”, and “sydney”. The “karen millem” portion of the disputed domain name is confusingly similar to Complainant’s KAREN MILLEN trademark and the “sydney” portion of the disputed domain name does not add distinction because it is a geographic term, specifically the name of a city in Australia. It has been well established that the use of a geographic term in a domain name does not add distinctiveness. See, e.g., J. Crew International, Inc. v. Li, WIPO Case No. D2011-0665 (finding that the incorporation of “Canada” in the domain name <jcrewcanada.com> did “nothing to minimize the risk of confusion”) and Lycos Europe N.V. v. RegionCo, WIPO Case No. D2000-1102 (finding that the “characteristic and distinctive component” of the domain name <lycoseurope.com> was Complainant’s trademark LYCOS because “Europe” would be viewed by the public as a reference to the “geographical source or origin of the goods and service provided”). It is clear that the use of “sydney” in the disputed domain name does not add distinction.

Because the disputed domain name combines terms which are confusingly similar to Complainant’s KAREN MILLEN trademark with a non-distinctive term geographic term, the Panel finds that the disputed domain name is confusingly similar to the trademark in which Complainant has rights. The requirements of paragraph 4(1)(i) of the Policy have been satisfied.

C. Rights or Legitimate Interests

Complainant’s trademark rights in KAREN MILLEN precede the creation of the disputed domain name. There is no evidence in the record to indicate that Respondent is licensed to use Complainant’s KAREN MILLEN trademark, that Respondent is associated or affiliated with Complainant, or that Respondent has any other rights or legitimate interests in “karen millen”. As such, Complainant has made out its prima facie case, which Respondent has not rebutted.

Accordingly, the Panel finds that the Complaint has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Complainant maintains that Respondent registered the disputed domain name “solely for the purposes of offering for sale and selling counterfeit Karen Millen branded products at aggressively low prices via the website to which the domain name points”. Regarding the use of the disputed domain name, Complainants claims that “members of the public have been confused into thinking that the website to which the domain name points is owned and operated by the Complainant and upon receipt of poor quality garments purchased from this website, complaints have been made to the Complainants customer service representatives”.

The Panel acknowledges that the disputed domain name incorporates Complainant’s KAREN MILLEN trademark in its entirety. It is clear from the incorporation of Complainant’s KAREN MILLEN trademark in the disputed domain name and the content of the website at the disputed domain name that Respondent is aware of Complainant and its KAREN MILLEN trademark. Specifically, the website at the disputed domain name features Complainant’s trademark and the same goods sold by Complainant under KAREN MILLEN trademark including dresses, coats, skirts, and other clothing items.

On February 9, 2012, the Panel issued the Procedural Order noting that Complainant had raised certain claims which were not substantiated in by materials in the case file, specifically the following:

- That goods sold via the disputed domain name have been verified as counterfeit;

- That members of the public have been confused into thinking that the website associated with the disputed domain name is owned and operated by Complainant; and

- That complaints have been submitted by members of the public to Complainant’s customer service representatives due to the receipt of poor quality goods purchased via the disputed domain name.

On February 23, 2012, Complainant responded to the Procedural Order by reiterating its ownership of the KAREN MILLEN trademark and citing the Trade Marks Act 1994 of the United Kingdom which states that “a person infringes a registered trade mark if he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered”. Complainant’s response to the Procedural Order also alleged the following:

- That Respondent had “infringed the Complainant’s trade marks by selling identical goods of which the Registrant has not either been licensed to or been given permission by the Complainant to do so”;

- That Respondent has infringed Complainant’s word mark, citing its dominance in the disputed domain name;

- That the only websites licensed to sell Karen Millen branded goods are “www.karenmillen.com”, “www.karenmillen.co.uk”, “www.asos.com and http://stores.ebay.co.uk/karenmillenofficial”;

- That Complainant has received 12 complaints from members of the public who have purchased goods from the disputed domain name and that these individuals contacted Complainant regarding quality or composition of the goods received;

- That the head of Complainant’s legal department verified that the garments received from the disputed domain name are counterfeit;

- That 12 consumers who contacted Complainant regarding the goods received believed that the disputed domain name was associated with or operated by Complainant and that the goods advertised were genuine Karen Millen products.

Respondent was provided with an opportunity to respond to the above allegations but did not reply.

Complainant’s bad faith claim relies upon the above allegations that (1) the goods sold via the disputed domain name are counterfeit, (2) consumers were deceived by the disputed domain name and believed that it was associated with or operated by Complainant, and (3) consumers submitted complaints to customer services representatives for Complainant regarding the goods purchased via the disputed domain name.

The Panel acknowledges that complaints submitted by consumers to Complainant appear to indicate that consumers may have been confused by the disputed domain name and may have believed that its content is authorized or somehow connected to Complainant. However, there is nothing in the record which (1) confirms the nature of the complaints submitted by members of the public to Complainant or (2) establishes that the goods sold via the disputed domain name were counterfeit. The only additional material provided by Complainant to supplement the allegations of bad faith is a list of names of individuals who allegedly submitted complaints regarding goods purchased. In this Panel’s view, this list does not prove the nature of complaints submitted by consumers that the goods sold are counterfeit, that Respondent used the domain name to create confusion with Complainant’s trademark, or that the domain name has been registered or used in bad faith.

Nevertheless, the Panel has reviewed the website at the disputed domain name and notes that evidence exists that the disputed domain name is being used to sell illegitimate merchandise. Specifically, the products advertised via the website at the disputed domain name are priced below the usual market value for Complainant’s goods. Although this observation by the Panel does not prove that the goods being sold are counterfeit, it does lead to a finding of bad faith when considered in connection with certain content displayed on the websites featured at the disputed domain name, specifically the following text featured on the website’s Frequently Asked Questions (“FAQ”) section:

“Are your products 100% authentic ones?

A: Our products are AAA quality mirror images to authentic products. With quite reasonable prices, you can just get what you want home.”

(emphasis added)

The Panel believes that the above circumstances lead to a finding of bad faith. Although claims concerning the alleged counterfeit nature of the goods sold at the website associated with the disputed domain name have not been substantiated by Complainant in this case, it is appropriate for the Panel to conduct its own research in order to access whether the third element of the Policy is satisfied. Prior UDRP decisions involving a respondent’s default have established that it is appropriate for a panel to conduct its own research in order to decide a proceeding. See, e.g., Société des Produits Nestlé SA v. Telmex Management Services, WIPO Case No. D2002-0070 (“Pursuant to Paragraph 10(a) of the Rules, the Panel considers itself competent to independently visit the Internet in order to obtain additional light in a default proceeding”) and InfoSpace.com, Inc. v. Hari Prakash, WIPO Case No. D2000-0076 (“The Panel considers that the powers (under Paragraph 10) allow the Panel to independently visit the Internet in order to obtain additional light in this default proceeding”). Moreover, a respondent’s failure to address a complainant’s allegations of bad faith has been cited in prior decisions as further indication of bad faith (See, e.g., Encyclopedia Britannica v. Zucarini, WIPO Case No. D2000-0330 which inferred bad faith due to the respondent’s failure to rebut the complainant’s allegations of infringing its trademarks).

Based on its independent research and consideration of the circumstances, the Panel finds the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.

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 <karenmillemsydney.com> be transferred to the Complainant.

Kimberley Chen Nobles
Sole Panelist
Dated: May 2, 2012