WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
"Dr. Martens" International Trading GmbH. and "Dr. Maertens" Marketing GmbH v. Private Whois Service
Case No. D2011-1191
1. The Parties
The Complainants are "Dr. Martens" International Trading GmbH. and "Dr. Maertens" Marketing GmbH, of Gräfelfing and Seeshaupt, Germany, represented by Beetz & Partner, Germany.
The Respondent is Private Whois Service, of Nassau, the Bahamas.
2. The Domain Names and Registrars
The disputed domain names <docmartensoutlet.com>, <docmartenssale.com> and <docmartensshop.net> are registered with Internet.bs Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2011. On July 13, 2011 and July 15, 2011, the Center transmitted by email to Internet.bs Corp. a request for registrar verification in connection with the disputed domain names. On July 15, 2011, Internet.bs Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 doing so, the Center noted that one of the disputed domain names listed in the Complaint was not correct and communicated that to the Complainants, who filed an amended Complaint on July 15, 2011.
The Center further noted that the Complaint did not state that the Respondent had not been sent a copy of the amended Complaint. The Center informed the Complainants of their obligation, in accordance with paragraph 2(b) of the Rules and paragraph 3 of the Supplemental Rules, and the Complainants transmitted the amended Complaint to the Respondent on July 22, 2011.
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 26, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 15, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 17, 2011.
Meanwhile, on July 19, 2011 the Complainants forwarded to the Center an email received from an unidentifiable third party stating that he was not the owner of the disputed domain names. The Center replied to the Complainants, confirming the registrant’s contact details as disclosed in the public information made available in the WhoIs database, as well as the confirmation provided by the Registrar.
On August 17, 2011 the same third party emailed the Center directly alleging, again, that he was not the owner of the disputed domain names. The Center replied providing the information disclosed in the publicly available WhoIs database(as mentioned above), asking said third party to identify himself, to explain the relationship (if any) to the Respondent and to provide information sufficient to establish the legitimacy of his intervention in this proceeding. No answer was received by the Center.
The Center appointed Angela Fox as the sole panelist in this matter on August 24, 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 proprietors of the trademarks DR. MARTENS and DOC MARTENS, used since the late 1950s in respect of a popular range of footwear, clothing and accessories available for sale throughout the world.
The DR. MARTENS and DOC MARTENS trademarks are well-known among young consumers. Materials annexed to the Complaint indicate that DR. MARTENS boots and shoes (commonly referred to as “doc martens”) have become closely associated with youth culture following their adoption by stars and fans of rock ‘n’ roll, punk, industrial, grunge and other musical genres in the six decades since the brand launched.
Accompanying the Complaint were copies of registration certificates showing that the Complainants own the following trademark registrations:
- DR. MARTENS: Community Trademark Registration (CTM) Registration No. 59147, Canadian Trademark Registration Nos. 420485 and 625884 and United States Trademark Registration Nos. 1454323, 1798791 and 2838397.
- DOC MARTENS: CTM Registration No. 150144 and United States Trademark Registration No. 2397734
The disputed domain names were registered on March 7, 2011. Annexed to the Complaint were printouts from the websites linked to the disputed domain names made on June 30, 2011, showing that they were in use to host web pages featuring links to third-party websites for the sale of footwear, including both DR. MARTENS footwear and competing footwear brands as well as hosting some rather desultory written commentary on footwear generally, including DR. MARTENS footwear and competing brands.
The Complaint was filed on July 13, 2011. Since then, the disputed domain names appear to have been re-directed to the Complainant’s website at “www.drmartens.com”. However, the WhoIs details do not reflect any transfer of ownership to the Complainants, nor has the Panel been notified of any settlement between the parties nor of any request that the proceedings be suspended pending a transfer. The Panel will therefore rule on the Complaint.
5. Parties’ Contentions
The Complainants submit that the disputed domain names are identical or confusingly similar to their registered trademarks DR. MARTENS and DOC MARTENS, because the sole distinctive element is identical to DOC MARTENS and is similar to DR. MARTENS (insofar as “doc” is a common abbreviation for “doctor” in many countries worldwide), and the remaining elements, “sale”, “shop” and “outlet”, are non-distinctive.
The Complainants contend that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainants have not authorized the Respondent to use the DOC MARTENS trademark, and assert that the Respondent has been making false representations of sponsorship, approval or association with the Complainants, and that the Respondent has been making an illegitimate commercial and unfair use of the disputed domain names, with the clear intention for commercial gain to misleadingly divert consumers and to tarnish the Complainants’ trademarks.
Finally, the Complainants contend that the disputed domain names were registered, and have been used, in bad faith. The Complainants claim that DR. MARTENS and DOC MARTENS have become internationally famous brands and that the Respondent must have known of the Complainants’ trademarks when the disputed domain names were registered. The Complainants assert that by using the disputed domain names, the Respondent has intentionally attempted to attract for commercial gain Internet users to the linked websites by creating a likelihood of confusion with the Complainants’ trademarks as to source, sponsorship, affiliation or endorsement. The Complainants submit that the Respondent is most likely profiting from click-through revenue derived from the links to third-party websites displayed on the websites linked to the disputed domain names, and that the appearance of these links, and particularly of the links to the Complainants’ competitors, are likely to result in the confusion of Internet users.
The Complainants seek the transfer of the disputed domain names.
The Respondent did not reply to the Complainants’ contentions and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent's default.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the complainants have rights;
(ii) the respondent has no rights or legitimate interests in the disputed domain names; and
(iii) the domain names have been registered and are being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.
A. Identical or Confusingly Similar
The Complainants own registered trademark rights in DR. MARTENS in the European Union, Canada and the United States, and in DOC MARTENS in the European Union and the United States.
The sole distinctive element of the disputed domain names is “docmartens”, which is identical to the Complainants’ DOC MARTENS trademark, and similar to its DR. MARTENS trademark. The remaining elements in each of the disputed domain names are generic words relating to the sale of goods, namely “sale”, “outlet” and “shop”.
The mere addition of a generic or descriptive term to a trademark does not avoid confusing similarity between the trademark and a disputed domain name, particularly where the descriptor is relevant to a complainant's business (see inter alia Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Above.com Domain, Privacy/Transure Enterprise Ltd, WIPO Case No. D2009-1253, where the addition of the descriptive word “shoes” was not sufficient to avoid confusing similarity with the Complainants’ trademarks; see also American Automobile Association, Inc. v. Nevis Domains LLC, WIPO Case No. D2006-0489; The American Automobile Association, Inc. v. AAA-Vacationsunlimeted, WIPO Case No. D2009-0373; Playboy Enterprises International, Inc. v. Sookwan Park, WIPO Case No. D2001-0778; Amazon.com, Inc. v. PDC, WIPO Case No. D2003-0076; and National Association for Stock Car Auto Racing, Inc. v. David Crawford, Jr., WIPO Case No. D2001-1338).
The presence of the generic descriptive words “sale”, “outlet” and “shop” in the disputed domain names does nothing to detract from the confusing similarity created by the inclusion of the Complainants’ trademark DOC MARTENS. The descriptive words merely serve to suggest that the disputed domain names link to websites maintained or in some way connected to or endorsed by the Complainants, at which the Complainants’ branded footwear is sold. Prima facie, the disputed domain names are confusingly similar to the Complainants’ DOC MARTENS and DR. MARTENS trademarks.
The Complainant has therefore succeeded under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Respondent has used the disputed domain names for websites hosting prominent links to third-party commercial websites for the sale of footwear, including the Complainants’ footwear as well as footwear sold by the Complainants’ competitors. The linked websites appear also to have included a desultory scattering of articles relating to boots and footwear generally, including the Complainants’ branded boots.
The overall appearance of the Respondent’s websites as shown in the print-outs attached to the Complaint suggests that their primary purpose was to provide a revenue stream for the Respondent through links to third-party commercial websites. The Respondent has not denied the Complainants’ allegation that it was profiting from click-through revenue arising from these links, which would have been encountered by Internet users lured to the Respondent’s websites by the confusing similarity of the disputed domain names with the Complainants’ trademarks.
In the Panel’s view, the Respondent’s use of domain names confusingly similar to the Complainants’ trademarks to draw in Internet users and divert them to third-party websites, many selling competing goods, in exchange for click-through revenue is not a bona fide commercial use of the disputed domain names such as to give rise to a right or legitimate interest in them (see inter alia Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Above.com Domain, Privacy/Transure Enterprise Ltd, WIPO Case No. D2009-1253 and “Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. PrivacyProtect.org/Tech Domain Services private Limited, WIPO Case No. D2010-1342).
The Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, and the burden of proof has therefore passed to the Respondent to show that it does indeed have such a right or interest (see, inter alia, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110). In this case, the Respondent has not attempted to refute the Complainants’ assertions and there is nothing on the record to indicate that the Respondent might enjoy any right or legitimate interest in the disputed domain names.
The Panel finds that the Complainant has succeeded under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The numerous references to DR. MARTENS and DOC MARTENS footwear on the websites linked to the disputed domain names indicate that the Respondent was aware of the Complainants and their branded footwear at least as of June 30, 2011, when the website print-outs annexed to the Complaint were made. Given the considerable international repute of the Complainants’ trademarks as shown in the materials annexed to the Complaint, the position is unlikely to have been different when the disputed domain names were registered three months earlier. Indeed, it is clear from the content displayed on the linked websites that the Respondent’s knowledge of the Complainant’s trademarks was what in fact most likely prompted the registration of the disputed domain names.
The Respondent appears to have set out to derive click-through revenue from Internet users by creating a likelihood of confusion with the Complainants’ DOC MARTENS and DR. MARTENS trademarks, adopting confusingly similar domain names and using them to host links to third-party websites offering footwear in competition with the Complainants’. Such conduct is inherently misleading, and the use of confusingly similar domain names to lure Internet users to sites hosting links to providers of competing products or services is prima facie evidence of registration and use in bad faith (see inter alia Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Above.com Domain, Privacy/Transure Enterprise Ltd, WIPO Case No. D2009-1253 and “Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. PrivacyProtect.org/Tech Domain Services private Limited, WIPO Case No. D2010-1342; as well as American Automobile Association, Inc. v. Texas International Property Associates, WIPO Case No. D2007-0592 and mVisible Technologies Inc v. Navigation Catalyst Systems, Inc, WIPO Case No. D2007-1141).
The Panel finds that the Respondent’s conduct constitutes evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy.
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 <docmartenssale.com>, <docmartensoutlet.com> and <docmartensshop.net>, be transferred to the Complainants.
Dated: September 10, 2011