Dipl. Biotechnol. Vanessa Bockhorni
Due to the numerous domain extensions such as the .com toplevel domain, disputes frequently arise between younger domain names and older trademarks that often have an identical or similar domain assigned to them.
In order to solve such conflicts, the WIPO Arbitration and Mediation Center was founded in 1999 with which complaints based on similar domain names under toplevel domains such as .com, .net, .org and country-code toplevel domains such as .ch or .au can be filed.
The person who registers a domain which is identical or similar with a trademark name or an already existing domain is often called Cybersquatter (also: domain occupant or domain squatter), when the domains are occupied with the aim to sell it again at a later point in time and are therefore only registered in order to earn money without any intention to use.
An interesting case which was recently solved by the WIPO based on the UDRP (Uniform Domain Name Dispute Resolution Policy), concerns the well-known clothing brand KAREN MILLEN. Since 1981, clothing products are distributed and sold under the brand name KAREN MILLEN, with more than 288 KAREN MILLEN shops being based in 39 countries, among those also shops in the EU. The website of the trademark owner is named www.karenmillen.com through which website the clothing products are sold and shipped. Karen Millen also possesses an international portfolio of registered trademarks for the sign KAREN MILLEN.
KAREN MILLEN filed an appeal with the WIPO Arbitration and Mediation Center against the registration of the domain www.karenmillenireland-sales.com by a not authorized person and gained right in the subsequent appeal proceeding with the consequence that the attacked domain name “karenmillenireland-sales.com” was transferred to the appellant KAREN MILLEN.
According to the UDRP, requirements for transferring a domain are the following three conditions:
1) the attacked domain name is identical or confusingly similar to the trademark, the owner of which is the appellant
2) the defendant has no rights or legitimate interest with regard to the attacked domain name and
3) the attacked domain name was registered in bad faith or is used in bad faith.
According to the ArbitrationCenter, these requirements were fulfilled in the above case.
In accordance with 1), the addition “ireland-sales” in the attacked domain name does not prevent the attacked domain from being confusingly similar to the trademarks of the appellant. Internet users may come to the conclusion that there is a connection between the attacked domain and the appellant, in particular with the latter’s business activity in Ireland. Previous UDRP decisions have shown that geographic additions such as “Ireland” do not change the meaning of a domain name in order to exclude a likelihood of confusion (e.g. decisions by the UDRP concerning Inter-IKEA Systems, Wal-Mart Stores).
Furthermore, regarding requirement 2), the defendant could have presented proof during the UDRP procedure and justify his rights or legitimate interest in the domain name. The defendant had the possibility to either
a) submit proof regarding the prearrangements for using the domain name with a bona-fide-declaration that by this name, goods or services shall also be offered, namely before a notice is issued by the Dispute Resolution Center
b) submit proof that the defendant has already been commonly known by the domain name before registration, or to
c) submit proof that the domain is used fair or not commercially, without the intention to mislead the user or to tarnish the trademark at issue
The defendant could not present these pieces of proof and also did not have any license or authorization to use the trademark owned by KAREN MILLEN. Furthermore, the attacked domain “karenmillenireland-sales.com” was reproducing the logo of the appellant KAREN MILLEN and offered products by KAREN MILLEN.
Regarding requirement 3), the panel also assumed the fact of bad faith, due to the fact that the following conditions were fulfilled:
a) circumstances that imply that the defendant registered or acquired the domain name mainly for the purpose of selling, renting or selling the domain name to the appellant,
b) the defendant registered the domain name in order to prevent the owner of the trademark (here: KAREN MILLEN) from using the trademark in a respective domain name, or
c) the defendant registered the domain name mainly for the purpose of disturbing the business of a competitor; or
d) by using the domain name, the defendant deliberately tried to attract the internet user’s attention to his website to generate profit by inducing a danger of confusion with the appellant’s trademark.
The panel considered points c) and d) to be fulfilled which is why the facts of bad faith were fulfilled.
Eventually, KAREN MILLEN is now the authorized owner of the domain name “karenmillenireland-sales.com” which was registered in bad faith.
Decision by the panel of the WIPO Arbitration and Mediation Center
(Case no. D2013-0001; Karen Millen Fashions Limited v. Leonie Helena)
Author: Dipl. Biotechnol. Vanessa Bockhorni (Patent Attorney), Update Summer-Autumn/2013
Patent Attorneys and Lawyers Bockhorni & Kollegen
Munich/ Germany
www.patguard.de
