Complainant is Karen Millen Fashions Limited of Witney, Oxfordshire, United Kingdom of Great Britain and Northern Ireland, represented by Heatons LLP, United Kingdom of Great Britain and Northern Ireland.
Respondent is Akili Heidi of Xiamen, China. 2. The Domain Name and Registrar
The disputed domain name is registered with FastDomain, 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 FastDomain, Inc a request for registrar verification in connection with the disputed domain name. On July 9, 2012, FastDomain, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on July 13, 2012.
The Center verified that the Complaint together with the amendment to 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 July 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 9, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 10, 2012.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on August 17, 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
Complainant is active in the fashion industry as a retailer of clothing. In relation to this business, Complainant is using its KAREN MILLEN mark. Complainant shows to be the holder of inter alia the following registered trademarks:
- KAREN MILLEN (word), registered as a Community Trademark under number 000814038 on October 10, 1999 in classes 3, 18 and 25 and duly renewed;
- KAREN MILLEN (word), registered as a trademark with UKIPO under number 2156187A on January 22, 1998 in classes 3, 9, 18 and 25 and duly renewed.
The disputed domain name was created on February 22, 201, and is registered by Respondent. The disputed domain name is linked to a website on which figurative trademarks of Complainant are shown and on which clothing, presented as Karen Millen clothing appears to be offered for sale. 5. Parties’ Contentions A. Complainant
Complainant considers the disputed domain name to be confusingly similar to the trademarks and service marks in which it claims to have rights. Complainant further claims that Respondent has no rights or legitimate interests in respect of the disputed domain name. According to Complainant, Respondent has not used the domain name in connection with a bona fide offering of services or a legitimate noncommercial use, as Respondent would offer for sale counterfeit or unauthorized imitations of goods that bear Complainant’s trademark. Also, Respondent has not been commonly known by the disputed domain name, according to Complainant.
Finally, Complainant considers that the domain name was registered and being used in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are administrative, the standard of proof is the balance of probabilities.
Thus for Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
1. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2. The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
3. The disputed domain name has been registered and is being used in bad faith.
The Panel will deal with each of these requirements in turn. A. Identical or Confusingly Similar
To prove this element Complainant must first establish that there is a trademark or service mark in which it has rights. Complainant has clearly established that there is a trademark in which Complainant has rights. The mark has been registered and used. It is also being used in countries that Respondent seems to target with the website that is linked to the disputed domain name.
The Panel considers the disputed domain name to be composed of a name identical to the KAREN MILLEN trademark and the non-distinctive generic terms ‘outlet’ and ‘australia’. The Panel is of the opinion that the mere addition of non-distinctive text to a complainant’s trademark constitutes confusing similarity, as set out in paragraph 4(a)(i) of the Policy (See Belstaff S.R.L. v. Jason Lau, Sharing,WIPO Case No. D2012-0783, where the domain name was held to be confusingly similar to the BELSTAFF trademark; Lime Wire LLC v. David Da Silva/C,WIPO Case No. D2007-1168, where the domain name was held to be confusingly similar to the LIME WIRE trademark, especially with addition of the word “download” because users typically download complainant’s software; International Business Machines Corporation v. Scott banner,WIPO Case No. D2008-0965, where the domain name was held to be confusingly similar to the IBM trademark because many Internet users would assume that the domain name identifies a website from which they can download software supplied by the Complainant; Nintendo v. Beijin,WIPO Case No. D2001-1070, where the addition of the words ‘mail’, ‘post’, ‘fan’ and ‘top50’ to the name POKÉMON in the disputed domain names was held to be of minimal impact on what the visitor of the website focuses on, namely the word POKÉMON; Nintendo v. Gray West International,WIPO Case No. D2000-1219, where it was held that the addition of the word ‘games’ in the domain name does nothing to reduce its confusing similarity with Nintendo’s POKÉMON marks); Dr. Ing. h.c. F. Porsche AG v. Kentech, Inc. a.k.a. Helios Lab a.k.a. Orion Web a.k.a. Titan Net a.k.a. Panda Ventures a.k.a. Spiral Matrix and Domain Purchase, NOLDC, Inc.,WIPO Case No. D2005-0890, where the domain name was held to be confusingly similar to the trademark PORSCHE).
Accordingly, Complainant has made out the first of the three elements that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the disputed domain name.
It is established case law that it is sufficient for Complainant to make a prima facie showing that Respondent has no right or legitimate interest in the domain name in order to place the burden of rebuttal on Respondent. (See: Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
The Panel notes that Respondent has not apparently been commonly known by the disputed domain name and that Respondent does not seem to have acquired trademark or service mark rights. Respondent’s use and registration of the disputed domain name was not authorized by Complainant. There are no indications that a connection between Complainant and Respondent existed. Respondent did not reply to this, as it did not file a response.
Moreover, the Panel is of the opinion that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. In fact, Respondent is using the disputed domain name to advertise and sell products which Respondent indicates to be Karen Millen products. As Respondent has no authorization from Complainant to sell Karen Millen products, there is a high likelihood that these goods are counterfeit goods. Furthermore, Respondent creates an impression that the website is an official website of Complainant or is authorized or licensed by it. According to the Panel, such use of the disputed domain name is detrimental to Complainant and cannot be considered to constitute a bona fide commercial or fair use (see Belstaff S.R.L. v. Jason Lau, Sharing,WIPO Case No. D2012-0783). C. Registered and Used in Bad Faith
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith (See e.g. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052).
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use is the use of a domain name to intentionally attempted to attract, for commercial gain, Internet users to a web site or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the web site or location.
In the present case, it is inconceivable that Respondent was unaware of Complainants and its trademark rights when it registered the disputed domain name. This is shown by the fact that the disputed domain name is composed of the KAREN MILLEN trademark in its entirety together with non-distinctive elements that are related to the clothing business in which Complainant is active. Furthermore, the website that is linked to the disputed domain name contains figurative trademarks of the Complainant. Hence, it is apparent that Respondent had Complainant in mind when registering the disputed domain name.
Furthermore, without authorization Respondent is using Complainant’s trademark for the sale of (presumably counterfeited) goods. Hence, Respondent tries to intentionally attract Internet users to visit its website for commercial gain, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the web site or location and of the products offered for sale on the web site.
Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the disputed domain name was registered and is being used in bad faith. 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 name be transferred to Complainant.
Flip Jan Claude Petillion
Sole Panelist
Dated: August 31, 2012
Full & Egal Universal Law Academy