WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
“Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. Above.com Domain Privacy / Transure Enterprise Ltd
Case No. D2010-1158
1. The Parties
The Complainants are “Dr. Martens” International Trading GmbH of Gräfelfing, Germany and “Dr. Maertens” Marketing GmbH of Seeshaupt, Germany, represented by Beetz & Partner, Germany.
The Respondent is Above.com Domain Privacy of Beaumaris, Victoria, Autralia / Transure Enterprise Ltd. of Tortola, Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <drmartinusa.com> is registered with Above.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 14, 2010. On July 14, 2010, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On July 16, 2010, Above.com, Inc. transmitted by email to the Center its verification response, disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 20, 2010, providing the new registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on July 26, 2010, adding the Respondent – Transure Enterprise Ltd (together with the original Respondent (“Respondent”)).
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 the Respondent of the Complaint, and the proceedings commenced on July 27, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 16, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 17, 2010.
The Center appointed Mr. David H. Tatham as the sole panelist in this matter on August 26, 2010. 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
Between them the Complainants are the owners of a number of trade marks which consist of or contain the words “Dr. Martens” and which are registered for, inter alia, footwear, clothing or retail services.
The Complainants claim that DR. MARTENS is a famous international brand name for footwear, clothing and accessories. It is particularly renowned for its use for rather distinctive looking shoes and boots which were first sold in the late 1950’s and which are now available throughout the world.
Absent any Response, the Panel has no information about the Respondent, other than the fact that it preferred to conceal its true identity by registering the disputed domain name through the ‘privacy’ arm of the company with which it is registered.
5. Parties’ Contentions
The Complainants contend that the disputed domain name <drmartinusa.com> is merely a combination of the descriptive element ‘USA’ together with the term ‘drmartin’ and, since ‘USA’ is descriptive, consumers will pay greater attention to the rest of the name i.e., drmartin. The Complainants further contend that this element is almost identical to their trade marks consisting of DR. MARTENS. The vowel “e” may have been amended to “i”, but these two letters are both phonetically highly similar and are not sufficiently different to create any distinctiveness between the trade marks and the disputed domain name. The two names are extremely close with respect to their phonetic and written form as well as in meaning and are therefore confusingly similar.
The Complainants also contend that the Respondent has no rights or legitimate interests in the disputed domain name. This is because the name is used to host a parked website which features links to advertisements for the sale of footwear, and even for the Complainants’ DR. MARTENS footwear, on websites which have not been authorized or approved by themselves. The Complainants further contend that this use is likely to mislead or deceive consumers into believing that the Respondent is sponsored by, affiliated to, or has the approval of the owners, licensees or customers of the original DR. MARTENS products. This, it is contended, is a false representation and is not the case. The Complainants further contend that the Respondent is not only passing off their goodwill and reputation in the DR. MARTENS trade marks, but it is also making an unfair and illegitimate commercial and unfair use of the disputed domain name with the clear intention of commercial gain and to mislead customers as well as to tarnish the Complainants’ trade and service marks.
The Complainants have produced, as annexes to the Complainant, copies of correspondence between their German lawyers and the former owners of the disputed domain name, Domain Park Limited., in which the latter, in response to a request to transfer the disputed domain name, replied by denying any similarity but offering to sell it to the Complainants for USD 500. This, the Complainants contend, is far above the usual out-of-pocket expenses for acquiring a domain name and is clear evidence of bad faith. As is the fact that the Respondent must have had knowledge of the Complainants’ rights in the mark DR. MARTENS for, not only is this name widely and well-known, but also the Respondent and the privacy shield in the instant case were previously involved in a domain name dispute in 2009 over the domain name <drmartenshoes.com> (Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Above.com Domain privacy/Transure Enterprise Ltd, WIPO Case No. D2009-1253). In that case the panel’s decision was to transfer the domain name to the Complainants. It is further contended that the Respondent is creating a likelihood of confusion with the Complainant’s name and trade marks as to the source, sponsorship, affiliation, or endorsement of its website; and that the Respondent is profiting from the goodwill in the Complainants’ trade marks by accruing click-through fees for each redirected and confused Internet user.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that a complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainants have produced ample evidence of their ownership of registrations for the mark DR. MARTENS in various countries. There were filed with the Complaint copies of 12 trade mark registrations for the name DR. MARTENS in Australia, Canada, United States of America and the European Union. All of these registrations are currently in force, and they were registered at various dates between 1983 and 2002. They included two EU marks, both of which were registered in 1996, and both claiming the seniority of numerous earlier marks in other European counties. However in at least one of these 12 marks the word ‘martens’ is disclaimed, and some of them consist of the design of either a shoe or the sole of a shoe on which the words ‘Dr Martens’ appear. The existence of these trade marks has not been contested by the Respondent. Given the fame and notoriety of the Complainants – also uncontested – it is more than likely that these 12 registrations are but a small part of the Complainants’ portfolio of trade mark registrations for DR. MARTENS. Indeed, in one of the annexes to the Complaint, the Complainants claim ownership of over 800 registrations of the mark in over 60 different countries.
The disputed domain name contains the term ‘drmartin’, which differs from the Complainant’s mark by substituting an ‘i' for the ‘e’ and leaving out the ‘s’ in the trade mark. The term ‘drmartin’ does not have a space between the first two letters ‘dr’ and ‘martin’. Spaces are not permitted in domain names. Also, it was said in Colgate – Palmolive Company v. Charles Kasinga, NAF Claim No. 94203 that “the absence of the space between the words is not significant in determining similarity”. The Panel finds this to be similar cases of “typosquatting” and does not find that such difference dispels confusing similarity.
The addition of the geographical term ‘USA’ to the disputed domain name does nothing to alleviate the possibility of confusion. It serves only to indicate that the products available on the website could be either manufactured or sold in that country. In this connection, see Cable News Network LP, LLP v. Elie Khouri d/b/a Channel News Network et al., NAF Claim No. 117876, where the respondent had registered 325 domain names all incorporating the letters CNN followed by some other term. 286 of these terms consisted of a country name or a country abbreviation. In that decision the panel stated that “mere inclusion of a country name or a corresponding well-known abbreviation therefore (such as “au” for Australia, “de” for Germany, or “uk” for the United Kingdom) is clearly insufficient, in general and particularly here, to dispel user confusion from occurring.” See also AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553, where the panel found confusing similarity to the mark AT&T by domain names formed by a geographic descriptor following the term ATT. See also America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713, in which the panel there held: “The addition of the name of a place to a service mark, such as the addition of ‘France’ to ‘AOL’ is a common method for specifying the location of business services provided under the service mark. The addition of a place name generally does not alter the underlying mark to which it is added.” The panel then concluded: “A consumer or user of the Internet viewing the address ‘www.aolfrance.com’ is likely to assume that [c]omplainant is the sponsor of or associated with the website identified by the disputed domain name, particularly in light of the fact that [c]omplainant routinely uses its ‘AOL’ service mark in combination with country names in its advertisements on the Internet.”
Consequently, the Panel has no hesitation in finding that the disputed domain name <drmartinusa.com> is confusingly similar to the Complainants’ trade mark DR. MARTENS, and that paragraph 4(a)(i) of the Policy is therefore proved.
B. Rights or Legitimate Interests
It is well established that the onus is on a complainant to first prove that a respondent has no rights or legitimate interests in a disputed domain name, but that once the said complainant has made out a prima facie case, the burden of production on this shifts to the respondent to rebut it. The burden of proof however remains with the complainant. See, for example, Document Technologies, Inc. v. International Electronic Communications Inc. WIPO Case No. D2000-0270. In this instance, the Panel is satisfied that a prima facie case has been made out.
In paragraph 4(c) of the Policy there are set out three circumstances which, if present, could demonstrate that a respondent does have rights or legitimate interests in a disputed domain name, and it is well established that this list is not exhaustive. However in this case the Respondent has filed no response so it has not attempted to rebut the Complainants’ prima facie case.
The Complainants annexed a copy of the Respondent’s website to the Complaint, and this contains no less than 14 references to ‘Doc Marten’, ‘Doc Martens’, ‘Dr Martens’, or ‘Dr Martins’. This is a click-through website designed to lure an unsuspecting or unobservant user into believing it is the portal through which he or she could obtain those branded shoes or boots. In the nature of such sites by clicking on any of the links, the owner of the site receives a fee therefrom. This is hardly a legitimate use of the disputed domain name, and it was said in Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH, supra, which is the earlier case involving the same parties that was referred to by the Complainants, that diverting Internet traffic to third party websites of direct competitors of the Complainants can even be considered to be misleading and damaging to the Complainants’ trade marks. The Complainants have confirmed that the Respondent is in no way affiliated with, sponsored by or associated with themselves and that his use of the disputed domain name is without their approval.
In the absence of any communication from the Respondent, the Panel has accepted the Complainants’ case and has concluded that the Respondent has no right to the disputed domain name, and that its use of it is not legitimate. Consequently, paragraph 4(a)(ii) of the Policy is proved.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which are evidence that the Respondent has acted in bad faith. In this case, the Respondent may be guilty of at least three of them.
For example, according to the evidence produced by the Complainants, someone called ‘David’, replying to a letter addressed to Domain Park Ltd. in Berlin, the former registrant of the disputed domain name, offered to sell the disputed domain name for USD 500. Whilst this is clearly “valuable consideration in excess of [the Respondent’s] out-of-pocket costs” in registering the disputed domain name, there is no evidence to connect either Domain Park Ltd. or ‘David’ with either of the named Respondents, and so this does not prove conclusively that the Respondent itself has fallen afoul of paragraph 4(b)(i) of the Policy.
However, the registration of the disputed domain name does appear to have been made “primarily for the purpose of disrupting” the Complainants’ business, and to be an intentional attempt “to attract, for commercial gain, Internet users to” the Respondent’s website. This falls squarely within paragraph 4(b)(ii) of the Policy.
The Respondent is also in breach of paragraph 4(b)(iii). For example, the Respondent’s awareness of the Complainants’ trade mark rights at the time of registration of the disputed domain name suggests opportunistic bad faith registration. See Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070, where the word “pokémon” was held to be a well-known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith. See also BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the domain name at issue, because of the widespread and long-standing advertising and marketing of goods and services under the trade marks in question, the inclusion of the entire trade mark in the domain name, and the similarity of products implied by addition of telecommunications services suffix, and suggested knowledge of the complainant’s rights in the trade marks.
In view of the above, the Panel has concluded that, since the Respondent likely knew of the Complainants’ rights in the DR. MARTENS trade mark, and since the Respondent had no legitimate interests in the disputed domain name, the disputed domain name was registered in bad faith.
Once again it is worth pointing out that the Respondent has filed no response so it has not attempted to rebut the Complainants’ arguments on this point.
The Panel concludes that paragraph 4(b)(iii) has been proved.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <drmartinusa.com> be transferred to one or other of the two Complainants.
David H. Tatham
Dated: September 2, 2010