WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
"Dr. Martens" International Trading GmbH, "Dr. Maertens" Marketing GmbH v. Posers/Philip Cox
Case No. D2011-1142
1. The Parties
The Complainants are "Dr. Martens" International Trading GmbH and "Dr. Maertens" Marketing GmbH, of Gräfelfing and Seeshaupt, respectively, Germany, represented by Beetz & Partner, Germany.
The Respondent is Posers/Philip Cox, of West Hollywood, California, United States of America.
2. The Domain Names and Registrar
The disputed domain names <drmartens-losangeles.com>, <drmartens-losangeles.info>, <drmartens-posers.com>, <drmartens-posers.info>, <drmartens-store-losangeles.com> and <drmartens-store- losangeles.info> are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 5, 2011. On July 6, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On July 8, 2011, 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. The Center sent an email communication to the Complainants on July 11, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on July 11, 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 July 12, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 1, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 2, 2011.
The Center appointed Andrew F. Christie as the sole panelist in this matter on August 8, 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.
On August 12, 2011, the Respondent transmitted an email to the Center stating that it had spoken with the Complainants and had agreed to transfer the ownership of the disputed domain names to them. On August 12, 2011, the Center informed the Respondent by email that it would forward the communication to the Panel for its consideration. No further communications on this matter were received from either the Respondent or the Complainants.
4. Factual Background
The Complainants are German companies which hold, either singularly or jointly, Community, Canadian and United States of America registrations for the trademark DR. MARTENS, and a US registration for the trademark DOC MARTENS. The earliest of the US trademark registrations of DR. MARTENS was filed in 1983. The Complainants’ trademarks are used in respect of an international brand of footwear, clothing and accessories, particularly renowned for its distinctive shoes and boots, first sold in the late 1950s. Products are sold under the Complainants’ trademarks at retailers throughout the world, as well as online at the website which resolves from the domain name <docmarten.com>.
The Respondent registered the disputed domain names on February 17, 2011. The disputed domain names resolve to parking websites that feature links to advertisements for the sale of various products, including footwear described as “Dr. Martens”, and products of the Complainants’ competitors.
5. Parties’ Contentions
The Complainants contend that the DR. MARTENS trademark is almost identical with the characters “drmartens” that appear in each of the disputed domain names, except that the point between “dr” and “martens” has been omitted. This omission is not sufficient to create enough distinctiveness between DR. MARTENS and “drmartens”. The two character strings are identical with respect to their phonetics, writings and meaning. The Complainants’ trademark DR. MARTENS is pronounced as “Doctor Martens”, which is how the character string “drmartens” is pronounced. The suffixes of “los angeles”, “store” and “posers” are merely descriptive elements with distinctive meaning. The disputed domain names are a combination of the only characterizing element, “Dr. Martens”, and geographical or descriptive indications, thereby causing a high risk of confusion.
The Complainants contend that the Respondent has no rights or legitimate interests in the disputed domain names because (i) it is using them to host parking websites that feature links to advertisements for the sale of footwear under the trademark DR. MARTENS on websites that are not authorized or approved by the Complainants, as well as on websites which refer to competitors of the Complainants, (ii) the Respondent is likely to mislead and deceive consumers into believing that it has a sponsorship, affiliation or approval with the owners, licensees or customers of the DR. MARTENS trademark, which is not the case, and (iii) the Respondent is making an illegitimate commercial and unfair use of the disputed domain names with the clear intention of commercial gain, by misleading consumers and tarnishing the trademark DR. MARTENS.
The Complainants contend that the Respondent registered and is using the disputed domain names in bad faith because (i) it intentionally attempted to attract for commercial gain Internet users to its websites or other online location, by creating a likelihood of confusion with the Complainants’ trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites and/or location, and/or of a product or service on the Respondent’s websites or location, (ii) it is linking the disputed domain names with unauthorized websites which are selling competitors’ footwear and footwear under the trademark DR. MARTENS without being authorized or approved by the trademarks’ owners or their licensees, (iii) it must have had knowledge of the Complainants’ rights in the DR. MARTENS trademarks when it registered the disputed domain names because they are well-known, and (iv) it is more than likely that the Respondent is profiting from the goodwill associated with the Complainants’ trademark by accruing click-through fees for each redirected and confused Internet user.
The Respondent did not reply to the Complainant’s contentions.
6. Procedural Issue: Requests to transfer in cases of joint or multiple complainants
The Complainants seek transfer of the disputed domain names, although do not specify to which Complainant.
The practice of gTLD domain name registration is generally that only one entity is listed as the registrant of a domain name. Where a complaint is brought under the Policy by multiple complainants, the remedy sought by the complainants is transfer of the disputed domain name(s), and the complaint succeeds, the issue arises as to which of the complainants the panel should order the transfer of the disputed domain name(s). It would seem that, as a matter of principle, a panel should only order transfer of a disputed domain name to a complainant which, in its individual capacity, has an entitlement to the trademark(s) on which the complaint in relation to that domain name was based. Thus, in a case brought by multiple complainants where only one of the complainants has entitlement to the trademark(s) on which the complaint is based, the panel should order transfer of the domain name only to the complainant that has the trademark entitlement. This is the approach that has been adopted in cases under the Policy from the very beginning of the Policy – see, e.g., The Avenue, Inc. and United Retail Incorporated v.Chris Guirguis doing business as Lighthouse Web Design and/or Cannibal, and Sam Guirguis, WIPO Case No. D2000-0013 (where first complainant was the trademark owner and second complainant a licensee of the first complainant, the panel ordered transfer of the disputed domain name to first complainant); and NFL Properties, Inc. et al. v. Rusty Rahe, WIPO Case No. D2000-0128 (where multiple complainants owned various trademarks individually, the panel ordered transfer of disputed domain names to the complainant which owned the trademark to which the domain names were confusingly similar).
But what about a case brought by multiple complainants where more than one of the complainants has entitlement to the trademark(s) on which the complaint is based (such as, e.g., where each of the complainants holds a registration for the relevant trademark)? In this situation, it would seem appropriate, as a matter of principle, for a panel to order transfer of the disputed domain name to any of the complainants having an entitlement to the relevant trademark. But, as a matter of practice, only one of the complainants can be listed as the registrant of the disputed domain name. To which one of the complainants should transfer be ordered?
It seems to this Panel that the answer to this question is to be decided by the complainants, not the panel. Given that the complainants have chosen to bring a joint action under the Policy, it seems appropriate that the complainants should be left to determine which of them is to be listed as the registrant in the event that the joint action is successful. Where the complainants have specified in the complaint to which of them transfer of the disputed domain name is requested, the panel should make the order accordingly (an approach that was adopted in, inter alia, Westfield Corporation, Inc and Westfield Limited v. Graeme Michael Hobbs (Dynamic Marketing Consultants), WIPO Case No. D2000-0227). Where the complainants have not specified this in the complaint, it should generally be left to them to inform the registrar of their wishes (this being the approach adopted in, inter alia, Zee Telefilms Ltd. and Wimpole Holdings Ltd. (presently known as Zee Multimedia Worldwide Ltd.) v. Rahul Dholakia and Oznic.com, WIPO Case No. Case No. D2001-0624; and Asprey & Garrard Limited and Garrard Holdings Limited v. www.24carat.co.uk/domainnames.html, WIPO Case No. D2001-1501).
The record in this Complaint shows that both Complainants hold, either singularly or jointly, various registrations for the trademark DR. MARTENS. The Complaint does not specify to which of the Complainants transfer of the disputed domain is requested. It follows that, in the event that this Complaint is successful, an order should be made for transfer of the disputed domain names to at least one of the Complainants – with the choice of which one to be determined by them.
7. Discussion and Findings
A. Identical or Confusingly Similar
Each of the disputed domain names wholly incorporates the Complainants’ registered trademark DR. MARTENS (minus the point), and adds a hyphen together with one or more of the following descriptive words: “los angeles”, “posers” and “store”. The addition of these descriptive words does not lessen the inevitable confusion of each of the disputed domain names with the Complainants’ registered trademark DR. MARTENS. Accordingly, this Panel finds that each of the disputed domain names is confusingly similar to a trademark in which the Complainants have rights.
B. Rights or Legitimate Interests
The Respondent is not a licensee of, or otherwise affiliated with, the Complainants, and has not provided any evidence that it has been commonly known by the disputed domain names. The Respondent registered the disputed domain names many decades after the Complainants first registered the DR. MARTENS trademark in relation to the Complainants' footwear, clothing and accessories business. The website to which each of the disputed domain names resolves is a parking page website with links to various other websites, none of which appears to be business of the Respondent. According to the present record, the Respondent has neither used the disputed domain names in connection with a bona fide offering of goods or services, nor used the disputed domain names for a legitimate non-commercial or fair use. Accordingly, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
The Complainants have conducted a substantial business of international renown for many decades under its trademark DR. MARTENS. This Panel is persuaded that the Respondent was likely aware of the Complainants’ trademark when it registered the disputed domain names. Moreover, this Panel is persuaded that the Respondent has used the disputed domain names with the intention of attracting Internet users to its websites by creating a likelihood of confusion with the Complainants’ trademark as to the source, sponsorship, affiliation, or endorsement of the website. Pursuant to paragraph 4(b)(iv) of the Policy, this Panel finds that each of the disputed domain names has been registered and is being used in bad faith.
For 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, <drmartens-losangeles.com>, <drmartens-losangeles.info>, <drmartens-posers.com>, <drmartens-posers.info>, <drmartens-store-losangeles.com> and <drmartens-store-losangeles.info>, be transferred to at least one of the Complainants1.
Andrew F. Christie
Dated: August 22, 2011
1 To the extent necessary for any implementation purposes, the choice of which Complainant should be submitted directly by the Complainants to the concerned registrar.