In a surprise decision, KAREN MILLEN has failed to prevent the use of the domain name karenmillenoutletonline.com by Danny Cullen, an individual based in the USA. The complaint was unsuccessful because KAREN MILLEN failed to provide evidence to support the claim.
The website www.karenmillenoutletonline.com sells what is alleged to be KAREN MILLEN products at roughly half the price of similar goods on the official KAREN MILLEN website.
KAREN MILLEN claimed that the goods being sold on the website are counterfeits and members of the public were confused into thinking that the website was operated by KAREN MILLEN. Customers complained directly to KAREN MILLEN about poor products on the site.
This is a familiar problem that brandowners have and KAREN MILLEN believed that because it owned the trade mark, KAREN MILLEN, the domain name would be either cancelled or transferred under the rules that determine domain name disputes – the Uniform Domain Name Dispute Resolution Policy (UDRP).
On the face of it, KAREN MILLEN appeared to have a strong case. In addition, the owner of the website and the respondent, Danny Cullen, did not respond to the complaint. However, according to the UDRP panellist who decided the dispute, KAREN MILLEN failed to provide the evidence that counterfeits were being sold and the claim was unsuccessful.
Why did the complaint fail?
To be successful under the UDRP rules, KAREN MILLEN had to prove: (1) that the domain name was identical or confusingly similar to its trade mark; (2) that the respondent had no rights or legitimate interest in respect of the domain name; and (3) that the domain name had been registered and was being used in bad faith.
The panelist was satisfied that KAREN MILLEN was a trade mark and the use of karenmillenoutletonline was confusingly similar to it.
However, KAREN MILLEN failed at the second hurdle because Danny Cullen had a legitimate interest in the domain name on the basis that: (a) he offered the goods and services at issue (i.e. Karen Millen goods); (b) the website is used only to sell the trade marked goods; and (c) the website accurately discloses the relationship of the reseller or distributor with the trade mark holder.
Although, the website did not clearly disclose that it had no relationship with KAREN MILLEN, the fact that the domain name used the word ‘outlet’ was sufficient to inform customers that the website was not owned and operated by KAREN MILLEN. Most consumers are aware that outlets are often grey market sellers who have obtained old stock. Further, the English language used on the website was of a very poor standard. On this basis, it was held that most internet users of average intelligence would not confuse the website as being owned or endorsed by KAREN MILLEN.
As KAREN MILLEN could not show the second element of the UDRP rules, the third element was not considered.
How it could have been so different
If Karen Millen had provided evidence that the goods offered on the website were counterfeit, the chances are the complaint would have succeeded. The mere fact that the goods on the website were sold at a low price was not sufficient to establish that they were counterfeit.
Although this decision appears to be bad news for brandowners, the lessons are:
(a) it is not enough to rely on an assumption that goods on an internet website are counterfeit;
(b) a rights holder should, in future, obtain examples of the goods on sale and verify them as counterfeit before proceeding.