WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
“Dr. Martens” International Trading GmbH, and “Dr. Maertens” Marketing GmbH v. MCPS
Case No. D2011-0393
1. The Parties
The Complainants are “Dr. Martens” International Trading GmbH, and “Dr. Maertens” Marketing GmbH of Grafelfing / Seeshaupt, Germany, represented by Beetz & Partner, Germany.
The Respondent is MCPS of San Francisco, California, United States of America.
2. The Domain Names and Registrar
The disputed domain names <drmartensucks.info>, <drmartensucks.net>, and <drmartensucks.org> are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2011. On March 1, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On March 2, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 14, 2011.
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 March 15, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 4, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 5, 2011.
The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on April 18, 2011. 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
The Complainants are the owner of the trademark DR. MARTENS, which has developed international reputation particularly in the field of shoes and boots and has been in use since at least the late 1950s.
The Complainants’ products are available for sale at retailers around the globe, including the United States, where the Respondent is located. Goods bearing the trademark DR. MARTENS are also available for sale online through the website “www.drmartens.com”, including to the US market.
While the Complainants contend that “Dr. Martens” is an invented word, information featured on their own website (Annex 5 of the Complaint) indicates Dr. Klaus Maertens as one of the founders of their group. This fact is further confirmed by information featured on the U.S. certificate of registration No. 1,454,323, for the trademark DR. MARTENS, granted on August 25, 1987, relating to Dr. Martens’ consent to register his/her name as a trademark.
The Complainants also own other trademark registrations valid in the United States, Canada and Australia, in addition to Community Trademark Registrations valid in the European Union. All registrations cited in the Complaint were granted in the 1980s, 1990s or early 2000s.
The disputed domain names are respectively registered on October 9, 2007 and October 8, 2007. The disputed domain names host a parking page which reads “[t]his page is parked free, courtesy of GoDaddy.com.” and features a link to the Registrar’s own advertisement website, where new domain names can be registered and existing ones can be purchased.
5. Parties’ Contentions
The Complainants argue that the disputed domain names are composed by a combination of the element “sucks”, which is descriptive and derogative, with the name “Dr. Marten”, which is the dominant part of the dispute domain names, being virtually identical to the Complainants’ registered trademarks DR. MARTENS and DOC MARTENS. Therefore, the disputed domain names should be considered confusingly similar to Complainants’ senior marks, generating undue association.
They also sustain that the Respondent has no rights or legitimate interests in respect to the disputed domain names, for the disputed domain names are simply hosting a parking page “which enables third parties to acquire them”.
Finally, they content that the Respondent was most likely aware of the Complainants’ “famous” marks, which led them to register a series of domain names using different gTLDs. The Complainants’ also argue that the addition of a derogative word with a well-known trademark suggests “opportunistic bad faith registration”.
The Complainants indicate that this case is similar to Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Above.com Domain Privacy/Transure Enterprise Ltd, WIPO Case No. D2009-1253, where the panel found that, under similar circumstances, the domain name was being used in bad faith.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
According to the Rules, and particularly its paragraph 15(a), the Panel is required to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In this regard, the paragraph 4(a) of the Policy, the Complainants are required to evidence that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
It is worth noting that the Rules also stipulate that, if a respondent fails to submit a response, the panel shall decide the dispute based upon the complaint, in the absence of exceptional circumstances.
A. Identical or Confusingly Similar
The disputed domain names <drmartensucks.info>, <drmartensucks.net> and <drmartensucks.org> are, indeed, confusingly similar to the DR. MARTENS trademark, belonging to the Complainants.
Given the technical nature of domain names, “dots”, “spaces” and even the gTLDs should not play, as a rule, a significant role in assessing whether domain names are identical or similar to senior trademarks. Also, as found by the panel in Red Bull GmbH v. Carl Gamel, WIPO Case No. D2008-0253,
“a domain name is ‘identical or confusingly similar’ to a trademark for purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name. In other words, the issue under the first factor is not whether the domain name causes confusion as to source (a factor more appropriately considered in connection with the legitimacy of interest and bad faith factors), but instead whether the mark and domain name, when directly compared, have confusing similarity”.
In the present matter, the Panel finds that the disputed domain names are composed by the agglutination of the element “drmartens” – which is virtually identical to the registered mark DR. MARTENS – and the descriptive and derogative word “sucks”. In this respect, this Panel subscribes to the consensus view as stated in paragraph 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), and relevant supporting panel decisions cited therein.
Therefore, the Panel finds that the disputed domain names are identical or confusingly similar to the registered marks of the Complainants, for purposes of satisfying the threshold requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainants submitted prima facie evidence that the Respondent could not validly deny its knowledge of the Complainants’ trademarks and would in the circumstances appear to have no rights or legitimate interests in respect to the disputed domain names.
Under such circumstances, the Panel agrees with several previous decisions of other UDRP panels, which have found that the burden of production shifts to the Respondent in evidencing its own rights or legitimate interests in the domain names (see among others Ets Leobert, SARL v. Jeonggon Seo, WIPO Case No. D2009-0004; Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; Red Bull GmbH v. Carl Gamel, WIPO Case No. D2008-0253).
The Respondent did not submit any response and, therefore, made no attempt to rebut the Complainants’ assertions, which leads the Panel to find for the Complainant under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel has already concluded, under the previous section, that the Respondent could not validly deny its knowledge of the Complainants’ trademark and that it has not shown any valid rights or legitimate interests in the domain name.
In this regard, previous UDRP panels have found that the “mere passive holding of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale” (Cruzeiro Licenciamentos Ltda. v. David Sallen, Sallen Enterprises and J.D.Sallen Enterprises, WIPO Case No. D2000-0715; and Vivendi Universal v. Mr. Jay David Sallen and GO247.COM, INC., WIPO Case No. D2001-1121).
In this case, the disputed domain names host a parking website, which this Panel find inter alia creates the impression of availability for sale, as contended by the Complainants and not rebutted by the Respondent.
These claims are further asserted by the fact that the Respondent registered a series of identical domain names with different gTLDs and that such registrations were secured almost four years ago with no indication of any use different from the one currently disclosed.
These circumstances therefore suggest opportunistic bad faith in registering the disputed domain names encompassing well-known trademarks and the records of the matter have no element that could lead the Panel to a different understanding.
In view of the above, this Panel can only conclude that the Respondent was relevantly aware of the Complainants’ trademarks and that the Respondent registered and is using the disputed domain names in bad faith. The Panel finds that the Complainant has also proved the third element under paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <drmartensucks.info>, <drmartensucks.net>, and <drmartensucks.org> be transferred to the Complainants.
Alvaro Loureiro Oliveira
Dated: May 2, 2011