Complainant is Karen Millen Fashions Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Heatons LLP, United Kingdom.
Respondent is Fundacion Private Whois, of Panama, Panama.
The disputed domain name <karenmillenoutletsdu.com> is registered with Internet.bs Corp. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 12, 2012. On September 13, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 14, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 September 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 9, 2012. Respondent did not submit any response. Accordingly the Center notified Respondent’s default on October 10, 2012.
The Center appointed Richard Lyon as the sole panelist in this matter on October 17, 2012. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Complainant has sold women’s clothing and accessories continuously since 1981, on the Internet at the website “www.karenmillen.com” and at retail stores bearing the name of its founder Karen Millen. Complainant holds numerous trademarks KAREN MILLEN, registered around the world in various classes related to clothing and accessories.
Respondent or perhaps its principal1 registered the disputed domain name in June 2012. An Internet user who accesses the disputed domain name is redirected to <karenmillenoutletdu.net> which is a website whose first page is entitled “KARENMILLENDRESS” followed by what appears to be a summary of Complainant’s corporate history. At this website, are sold a number of women’s dresses. The categories from which a buyer may choose are all entitled “Karen Millen” (such as “Karen Millen V-Neck Dresses”, “Karen Millen Tube Top Dresses”). “New Products” are pictured; each is captioned “Cheap [description] Karen Millen [description]”, e.g. “Cheap Pleated Prom Karen Millen Tube Top Dress.” The copyright notice at the bottom of the page reads “Copyright © 2012 karen millen outlet.”
Complainant contends as follows:
1. Complainant holds rights in KAREN MILLEN by reason of its many registered trademarks, and the disputed domain name “Karen Millen” as its dominant feature.
2. Complainant has never authorized Respondent to use its trademarks and Respondent has never been known by the name “Karen Millen”. Respondent has used the disputed domain name to take advantage of Complainant’s trademarks to sell counterfeit goods. As stated in the Complaint, “[C]omplaints have been made to Complainants [sic] customer service representatives and the goods have been verified as counterfeit. A copy of the complaints is provided as Annex 5 to this Complaint.”
3. Respondent registered and has used the disputed domain name in bad faith by selling counterfeit goods, branded with Complainant’s marks, at “aggressively low prices.” Internet users are confused into thinking that the website at the disputed domain name is somehow affiliated with Complainant.
Respondent did not reply to Complainant’s contentions.
Before turning to the three elements of paragraph 4(a) of the Policy, the Panel must address two contentions that this Panel believes Complainant does not support with sufficient evidence.
As noted in the last two sentences of paragraph 4-A-2 above, Complainant asserts that it has received complaints from customers who have been confused regarding possible association of Complainant with Respondent’s website. Annex 5 to the Complaint is a four-column table with the following headings: “Date of Contact, Name of Customer, Contact, and Details of Complaint”. The Contact column has the complaining customer’s email address. The details of “Complaint” column apparently has the website address complained of. There are three rows in the table below the headings.
Describing this chart as a “copy of the complaints” exceeds any permissible advocate’s hyperbole. More into the point, neither Complaint nor Annex furnishes a clue as to the document’s author or authenticity. Whoever prepared the chart did not make any attestation upon penalty of perjury or whether or not he had personal knowledge of whatever its contents may signify. The Panel is left to guess the Annex’s provenance and meaning.
This evidence of actual confusion is however more than what is provided for Complainant’s more serious allegation of selling counterfeit goods. For this allegation, Complainant offers no proof at all.
A Policy proceeding is not civil litigation. Every factual allegation in a UDRP pleading, complaint or response, must be supported by evidence. “[P]aragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.6, Consensus View; Policy, paragraph 4(a) (“[i]n the administrative proceeding, the complainant must prove that each of these three elements are present”). Even in a default case such as this one, “The Policy requires the Complainant to prove each of the three [Policy] elements,” see Western Research 3000, Inc. v. NEP Products, Inc., WIPO Case No. D2004-0755 (emphasis in original). A failure to respond to the complaint does not result automatically in a decision to transfer or admission of any factual allegation in the complaint. See Kellwood Company v. Onesies Corporation, WIPO Case No. D2008-1172.
Especially should a UDRP panel not accept without evidence charges of criminal or intentionally tortious conduct, such as selling counterfeit goods. On the contrary, in this Panel’s opinion allegations such as these require very clear proof. This and other UDRP panels have taken complainants and respondents alike to task for such conduct. See Emeshel, LLC v. DomRegistrar.com, WIPO Case No. D2011-1596 (fraud, theft); Andrew Prince v. Registrant [3197190]: Sven Echternach / Moniker Privacy Services (2579748), WIPO Case No. D2010-1661 (theft); Music Plus Television Network, Inc. v. Dennis Tzeng, WIPO Case No. D2007-1486 (forgery); Bittorrent Marketing GmbH v. AdIntensity Ltd, Adam Smith, WIPO Case No. D2007-1033 (cyberpiracy).2 Talk is cheap, and charges of intentional misconduct often prove harmful to the target even if groundless or ultimately disproven. The Panel has limited means beyond what the parties supply to evaluate the facts behind such allegations in any depth, and no brief (and no inclination) to do so. Such charges have no place in a Policy proceeding without verified and convincing evidence.
As that is lacking in this case, the Panel takes no account of Complainant’s factual allegations of customer confusion or sale of counterfeit goods.
Two additional facts make these allegations all the more regrettable. Complainant is represented by counsel, who should have been aware of the Policy procedure requiring proof of any factual allegations and clear proof of charges of intentional misconduct. And as the following discussion shows, the counterfeiting charges are unnecessary to Complainant’s desired result of transfer of the disputed domain name. The record indicates that Respondent may hold other domain names that include the KAREN MILLEN trademark. Should Complainant initiate UDRP proceedings to recover them as well, the Panel hopes that it will forego gratuitous mudslinging or provide documentary proof to back up its allegations.
Complainant’s evidence demonstrates registered rights in the KAREN MILLEN trademark. The dominant feature of the disputed domain name incorporates that name verbatim, and the additional common word and letters at the end do not obviate confusion. Complainant has proven this Policy element.
According to WIPO Overview 2.0, paragraph 2.1: “While the overall burden of proof [under paragraph 4(a)(ii) of the Policy] rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
Complainant alleges without contradiction that it has never authorized Respondent to use its trademarks. Respondent does apparently do business under the name “Karen Millen Outlet,” but that fact alone does not confer upon it a right or legitimate interest for Policy purposes unless it is used for a bona fide offering of goods. The issue is not the legitimacy vel non of Respondent’s business; rather the Panel looks to whether the evidence shows any right or legitimate interest of Respondent to use Complainant’s trademark to identify its business. See ED Enterprise AG v. Guava Softs Pvt Ltd, Anshul Goya, WIPO Case No. D2012-0147 and General Motors LLC v. Flashcraft, Inc DBA Cad Company, WIPO Case No. D2011-2117.
UDRP panels have held that even unauthorized resellers may in proper circumstances have a right to use in a domain name the brand and mark of the manufacturer of the products they sell. See, e.g., General Motors LLC v. Flashcraft, Inc DBA Cad Company, supra. But on the evidence in the record here, Respondent has no such right or legitimate interest as nothing on its website discloses the relationship, or lack of any relationship, between Respondent and the manufacturer. Rather an affiliation or endorsement that (so far as the record shows) does not exist is the plain, and in the Panel’s view intended, import of the website’s content. Under the rationale of the reseller cases, particularly Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, without such disclosure a reseller lacks rights or a legitimate interest in a domain name incorporating its manufacturer’s mark.
As Respondent has not provided any evidence of a right to use Complainant’s trademark, the Panel follows the WIPO Overview 2.0 and finds that Complainant has established this Policy element.
The reasons given in the preceding paragraph also demonstrate Respondent’s bad faith in use of the disputed domain name. The Panel may infer bad faith in registration from Respondent’s immediate and ongoing use of the disputed domain name to take advantage of the goodwill attaching to Complainant’s trademark, foursquare within the example of bad faith provided in paragraph 4(b)(iv) of the Policy. Complainant has established this Policy element.
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 <karenmillenoutletsdu.com> be transferred to Complainant.
Richard G. LyonSole Panelist
Dated: October 19, 2012
1 Respondent appears to be a privacy service.
2 Compare Edward G. Linsky Jr. v. Brian Valentine, WIPO Case No. D2006-0706, in which the complainant supported charges forgery and perjury with sworn statements and an expert opinion, also provided under oath.