05-12-2011

Uncontested application to transfer domain name fails for lack of evidence

Fashion giant Karen Millen has failed in its attempt to have a domain name transferred to it using the domain name Uniform Domain Name Dispute Resolution Policy (UDRP), a quick and inexpensive procedure trade mark owners can use to stop domain name owners from abusing their trade mark.

Karen Millen applied under the relevant UDRP to have the domain name ‘karenmillenoutletonline.com’ transferred to it on grounds the registered owner appeared to be using it to sell counterfeit Karen Millen goods from its website.

UDRPs are forums for adjudicating disputes about domain names, which give trade mark owners a quick, easy and inexpensive way of stopping anyone from using a domain name which:

  • is identical or confusingly similar to their trade mark;
  • the domain name owner has no rights or legitimate interests in; and
  • the domain name owner is using in bad faith.

The Karen Millen trade mark is long-established and has been registered as both a UK and a European Community trade mark.

In its application Karen Millen asserted that:

  • The domain name was confusingly similar to its trade mark.
  • The domain name owner had no legitimate right to use the name, as Karen Millen had not granted him the right to do so.
  • The goods on the karenmillenoutletonline.com website had been verified as counterfeit.
  • This had caused considerable damage to Karen Millen’s business.

It based the last assertion on the fact some people had contacted Karen Millen to complain about the inferior quality of goods they had bought from the site.

The domain name owner did not respond to the application but, despite that, the UDRP Panel said that Karen Millen still had to produce enough evidence to prove certain of its assertions. While it could accept some assertions without supporting evidence, there were others, such as assertions of dishonesty, which had to be backed up by evidence. This was so even if the assertion was not disputed by the domain name owner.

It said that Karen Millen had not provided sufficient evidence that the goods being sold from the site were counterfeit – for example, the fact they were being sold at a low price was not enough, as there might be other reasons for that. The Panel also took into account the fact that the website itself made no claims of a connection with Karen Millen – for example, that Karen Millen owned or endorsed it – but merely described itself as an outlet for Karen Millen products. It also described the products on sale accurately, making it clear that they were not of the same quality as the products on the official site.

As its assertions were central to Karen Millen’s claim, but not backed up by evidence, the Panel refused to order the transfer of the domain name.

Recommendation

Trade mark owners making an application under a UDRP should ensure that they collect and present substantive evidence that the relevant domain name owner has no legitimate interest in the name, and is acting in bad faith. Mere assertions, even if not contradicted by the domain name owner, are not enough.