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 Australia Karen Millen, Linde Meredith of Mountain View, California, United States of America and of Sydney, New South Wales, Australia.
The disputed domain name <aukarenmillenoutlet.com> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2012. On December 3, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 4, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which partially differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 5, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 13, 2012. On December 5, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. The Complainant and the Respondent did not comment on the language of the proceeding by the specified due date.
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 December 17, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 6, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 7, 2013.
The Center appointed C. K. Kwong as the sole panelist in this matter on January 21, 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.
The Complainant is the owner of numerous trademarks consisting of or comprising the word KAREN MILLEN. These registrations include Community Trademark Registration No. 000814038 for the word mark KAREN MILLEN which was registered on October 13, 1999 and renewed upto date in respect of certain goods under Classes 3, 18 and 25, including a range of goods covering amongst others, articles of clothing [see Annex 3 to the Complaint].
The uncontradicted evidence produced by the Complainant shows that the registration of its aforesaid KAREN MILLEN mark occurred well over 12 years before the registration of the disputed domain name <aukarenmillenoutlet.com> on September 19, 2012.
Other than the particulars shown on the printout of the data base searches conducted by the Complainant of the WhoIs database (as provided in Annex 1 to the amended Complaint), the website to which the disputed domain name resolves as provided in Annex 4 to the amended Complaint, the WhoIs database search results and the website visit record updated to December 17, 2012 provided by the Center, there is no evidence in the case file concerning the background of the Respondent and its business.
The Complainant has made the following contentions:
The Complainant has rights in the trademark KAREN MILLEN. The Complainant has also registered the domain name <karenmillen.com> and has been operating the website at “www.karenmillen.com” from which it sells and delivers clothing. It claims to trade over 288 stores in 39 countries from Europe to the US, Russia, Australia and the Middle East. Its worldwide revenue of goods sold under the KAREN MILLEN trademark directly or through authorized resellers/partners is GBP 272,384,000 for the year ended January 31, 2012.
The disputed domain name is virtually identical to the Complainant’s KAREN MILLEN mark.
The Respondent has no legitimate interests or rights in the disputed domain name. The Complainant has not licensed the Respondent to use the KAREN MILLEN mark in a domain name. The Respondent is not connected to the Complainant. The disputed domain name resolves to a website where products with the KAREN MILLEN mark were sold but which were verified to be counterfeits.
The purpose of the Respondent’s registration of the disputed domain name is to use the website to which it resolves, to offer for sale and to sell counterfeit products bearing the KAREN MILLEN mark at aggressively low prices. Members of the public have been confused and as a result, complaints were made to the Complainant [see Annex 5].
The contact particulars of the Respondent and the disputed domain name were fully set out in the WhoIs search results provided in Annex 1 to the amended Complaint and the WhoIs search results updated to December 17, 2012 as provided by the Center.
Such contact details also concur with those provided by the Registrar to the Center on December 4 and 5, 2012.
On December 17, 2012, the Center forwarded the Notification of Complaint and Commencement of Administrative Proceeding to the Respondent in accordance with the contact details above by courier, facsimile and email with copies to the Registrar.
The Panel finds that as long as the Complainant or the Center as the case may be has communicated with the Respondent using the contact information which the Respondent has chosen to provide to the Registrar as reflected in the above contact details, their respective obligations of such communications will be discharged and the Respondent is bound accordingly.
The Panel is satisfied that the Center has discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint and that the failure of the Respondent to furnish a reply is not due to any omission or inadequate communication by the Center.
Neither the Complainant nor the Respondent made any comment in response to the Center’s notification in English and Chinese of December 5, 2012 to both parties on the language of proceeding. The Complainant simply requested English to be the language of this administrative proceeding in paragraph 10 of the Complaint.
Paragraph 11(a) 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”.
The language of the Registration Agreement for the disputed domain name is Chinese.
In support of its request, the Complainant has argued, inter alia, that:
(a) The Registration Agreement does not specify a language in which the Complaint should be filed;
(b) The Complainant should not be put to the expense of obtaining a translation of the registration agreement.
While the Panel does not agree with the Complainant’s arguments above (a) in light of the express provisions under paragraph 11(a) of the Rules as quoted above and (b) the expense of translation of the registration agreement is irrelevant per se, the Panel has taken into consideration that:
(i) the Respondent is apparently familiar with and conversant in English, as reflected in the contents of the website to which the disputed domain name resolves being entirely in English and designed for English speaking customers;
(ii) the disputed domain name consists of English alphabets; and
(iii) the Respondent has provided contact details to the Registrar in English.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties taking into account all relevant circumstances of the case including matters such as the parties abilities to understand and use of the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004 also Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
Taking all circumstances into account and in the absence of objections from the Respondent even after the Notification of Respondent Default as aforesaid, the Panel is satisfied 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.
In rendering its decision, the Panel must adjudicate the dispute in accordance with paragraph 15(a) of the Rules which provides that, “[t]he Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 14(b) of the Rules further provides that, “[i]f a Party, in the absence of exceptional circumstances, does not comply with any provisions of, or requirement under these Rules or any requests from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”. Paragraph 5(e) of the Rules further provides that, “[i]f a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”.
The failure of the Respondent to respond does not automatically result in a favourable decision to the Complainant, which is specifically required under paragraph 4(a) of the Policy to establish each of the three elements as provided therein. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 and Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.
The said three elements are considered below.
On the evidence available before the Panel, it has no hesitation in finding that the Complainant has rights in the trademark KAREN MILLEN by reason of its trademark registration as recited in Section 4 above.
Furthermore, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark KAREN MILLEN despite the addition of the abbreviation “au” which commonly stands for the geographical term “Australia” and addition of the indistinctive word “outlet” immediately after the words “karenmillen”.
The distinctive feature of the disputed domain is KAREN MILLEN, being the Complainant’s trademark in entirety. The mere addition of the geographical indication “au” does not assist in distinguishing the disputed domain name from the Complainant’s mark. See Dell Computer Corporation .v. MTO C.A. and Diabetes Education Long Life, WIPO Case No. D2002-0363 and Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768.
It is well established practice to disregard the top-level part of the domain name “.com”, when assessing whether a domain name is identical or confusingly similar to the mark in issue. Société Anonyme des Eaux Minerales d’Evian and Société des Eaux de Volvic v. Beroca Holdings B.V.I. Limited, WIPO Case No. D2008-0416.
After removing the said geographical indication and indistinctive terms aforesaid and the generic top-level domain, only the words KAREN MILLEN are left in entirety.
Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy is established.
The Complainant needs to establish a prima facie case showing that the Respondent has no rights or legitimate interests in respect of the domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Once such prima facie case is made, the burden will shift to the Respondent to prove that it has rights or legitimate interests in the disputed domain name.
In the present case, the Complainant has asserted registration and use of the registered trademark KAREN MILLEN well before the Respondent’s registration of the disputed domain name <aukarenmillenoutlet.com> on September 19, 2012. The Complainant has confirmed that the Respondent is not a licensee or authorized seller of the Complaniant. The Respondent was not authorized to register or use the disputed domain name.
There is no explanation on the record as to why it was necessary for the Respondent to adopt the words KAREN MILLEN in its domain name.
There is also no evidence available to demonstrate any legitimate noncommercial or fair use of the disputed domain name by the Respondent.
Even assuming for the purpose of argument, that the goods sold on the website to which the disputed domain name resolves are genuine KAREN MILLEN goods, it does not provide in this Panel’s view the owner of such website the right to use the Complainant’s trademark and materials in that website. Sanofi-Aventis v. DomainsByProxy.com and Ravikant Singh, WIPO Case No. D2007-0540.
The Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name.
The printout of the website to which the disputed domain name resolves as shown in Annex 4 to the Complaint shows prominent references to the Complainant’s mark KAREN MILLEN and products described with the words KAREN MILLEN.
The choice of the words KAREN MILLEN in entirety as part of the disputed domain name without any explanation as well as the offering of garments described as KAREN MILLEN garments in the website to which the disputed domain name resolves, demonstrate the Respondent’s knowledge of the Complainant and its trademark at the time of registration and use of the disputed domain name. Furthermore, subsequent events showed that the address of Sydney Berlincon St. 98 Road, Australia provided by the Respondent to the Registrar as its contact address is the address of the Complainant’s solus store in Sydney and not the address of the Respondent. This is considered as a sign of bad faith.
The Complainant has made the serious allegation that the goods sold at aggressively low prices via the website to which the disputed domain name resolves are verified to be counterfeit KAREN MILLEN goods and that complaints from others were received by them in relation to such goods. The Respondent has not come forward to offer any reply. The Panel finds that the Respondent has registered the disputed domain name and allowed the operator of the website to which the disputed domain name resolves, to use it primarily for offering goods to Internet users in a way which disrupts the business of the Complainant. On the basis of the evidence produced, the Panel finds that the presumption under paragraph 4(b)(iii) of the Policy has been invoked.
By using whether directly or indirectly, authorizing or permitting the use of the disputed domain name by the operator the said website in the manner described above, the Respondent intentionally attempted to attract, for commercial gain, Internet users to go to the said website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or products on the website. The Panel accordingly finds that paragraph 4(b)(iv) of the Policy has also been invoked.
The Panel finds that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <aukarenmillenoutlet.com> be transferred to the Complainant.
C. K. Kwong
Sole Panelist
Date: February 4, 2013