WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service
Case No. D2011-1753
1. The Parties
The Complainants are Dr. Martens International Trading GmbH and Dr. Maertens Marketing GmbH, Germany, represented by Beetz & Partner, Germany.
The Respondent is Private Whois Service, c/o drmartinshoes.net, Private Whois drmartinshoes.net, Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <drmartinshoes.net> is registered with Internet.bs Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2011. On October 14, 2011, the Center transmitted by email to Internet.bs Corp. a request for registrar verification in connection with the disputed domain name. On October 18, 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. Internet.bs Corp. did not lift the privacy shield and reveal the identity of the actual registrant.
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 accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 20, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 9, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 11, 2011.
The Center appointed David H. Bernstein as the sole panelist in this matter on November 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.
Pursuant to Rules 6(f) and 10(c), the Panel set December 2, 2011, as the date by which it would forward its decision to the Center.
4. Factual Background
Dr. Martens International Trading GmbH and Dr. Maertens Marketing GmbH are the owners of the trademark DR. MARTENS. Since at least the late 1950s, this mark has been used in connection with the Complainants’ distinctive shoes and boots. The mark has achieved international recognition, and the Complainant’s brand and products have become symbols of youth culture.
The Complainants distribute their products worldwide, both through local retailers and through the website “www.drmartens.com”. They own trademark registrations for DR. MARTENS used in connection with footwear, clothing, and associated retail services in multiple jurisdictions, including the United States, Canada, and the European Union. These marks were registered between 1987 and 2004.
The disputed domain name, <drmartinshoes.net>, was registered on August 20, 2010. The domain name is used to host a parking page that displays advertisements for the sale of Dr. Martens footwear on sites that are not authorized by the trademark owners, as well as advertisements for the sale of other footwear.
5. Parties’ Contentions
The Complainants allege that the disputed domain name is identical or confusingly similar to the marks in which it has rights. They have provided evidence of trademark registrations for DR. MARTENS in multiple jurisdictions. They contend that the disputed domain name is phonetically similar to their marks and that the differences between their marks and the disputed domain name are not sufficient to mitigate the confusion.
The Complainants further contend that the Respondent has no rights or legitimate interests in the disputed domain name. They allege that the Respondent’s web site is simply a parking page using pay-per-click (“PPC”) links that redirect consumers to other footwear vendors, which does not amount to a bona fide offering of goods or services.
Finally, the Complainants contend that the Respondent registered and used the domain name in bad faith because it must have known of their rights at the time of registration. They submit that this dispute is similar to "Dr. Martens" International Trading GmbH and "Dr. Maertens" Marketing GmbH v. Private Whois Service, WIPO Case No. D2011-1191, where the panel found that, under similar circumstances, the domain name <docmartensoutlet.com> was registered in bad faith. They further contend that the Respondent is likely profiting from consumers’ confusion by collecting click-through fees for each redirected visitor.
The Respondent did not reply to the Complainants’ contentions.1 In view of Respondent’s failure to submit a Response, the Panel shall decide this proceeding on the basis of Complainants’ undisputed factual allegations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules, and shall draw any inferences that it considers appropriate pursuant to paragraph 14(b) of the Rules.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainants must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interest in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), addresses the potential impact of the Respondent’s default:
A respondent's default does not automatically result in a decision in favor of the complainant. Subject to the principles described in paragraph 2.1 above with regard to the second UDRP element, the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP. Although a panel may draw appropriate inferences from a respondent's default (e.g., to regard factual allegations which are not inherently implausible as being true), paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding.
Thus, notwithstanding the Respondent’s failure to respond to the Complaint, the burden remains on the Complainants to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
A. Preliminary Comments on the Impact of Respondent’s Use of a Privacy Shield
The Respondent’s use of a privacy shield that does not reveal the identity of the beneficial owner of the domain name has complicated the expeditious, efficient and fair resolution of this case.2 Such privacy shields, which are popular among PPC parking websites, replace a domain name registrant’s contact information in the Whois database with the privacy shield’s contact information and forwarding addresses.3 Although many domain name registrars lift the privacy shield in response to a UDRP complaint, see, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842, some, as was the case here, do not, see, e.g., Compagnie Gervais Danone v. Whois privacy services provided by DomainProtect, WIPO Case No. D2009-0454.
Privacy shields can significantly frustrate administration and enforcement of the UDRP. See, e.g., St. Tropez Acquisition Co. Limited v. AnonymousSpeech LLC and Global House Inc., WIPO Case No. D2009-1779. Without knowing the identity of the beneficial owner of a disputed domain name, the Center is forced to go to extra lengths to try to notify the respondent of a complaint (including, in this case, follow up communications with the courier to try to arrange for delivery of the notice of commencement). Its efforts, as appear to have been in the present case, are not always successful, which presents a further difficulty for the fair adjudication of UDRP disputes. Furthermore, without knowing the identity of the beneficial owner, complainants and panels cannot fully evaluate whether the beneficial owner has rights or legitimate interests in the domain name, see UDRP, paragraph 4(a)(ii), and cannot determine if the beneficial owner engaged in a pattern of conduct that could give rise to an inference of bad faith, see UDRP, paragraphs 4(a)(iii), 4(b)(ii).
Despite these difficulties, panels have recognized that there are legitimate reasons why a registrant may wish to use a privacy shield in appropriate cases. These include may include avoiding spam e-mail and preventing reprisals for anonymous criticism. See, e.g., Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647. Yet, prior panels have also noted that privacy shields may be – and often are – used for more nefarious ends, such as obstructing proceedings under the UDRP, hiding evidence of bad faith cybersquatting patterns, and allowing registrants to transfer domain names among themselves without a public record to avoid enforcement of third-party rights. See Ustream.TV, Inc. v. Vertical Axis, Inc., WIPO Case No. D2008-0598.
Weighing these competing interests in the context of PPC parking websites, “it is difficult to see why a PPC advertiser needs to protect its identity except to frustrate the purposes of the Policy or make it difficult for a brand owner to protect its trademarks against infringement, dilution and cybersquatting.” Ustream.TV, Inc. v. Vertical Axis, Inc., WIPO Case No. D2008-0598. PPC parking website registrants, as operators of an Internet-based business, are presumably savvy enough to manage spam e-mail through other means, and they do not produce content for which they could reasonably fear reprisal.
Because of the administrative difficulties associated with privacy shields and the lack of plausible justifications for a PPC parking website to use them, the Panel concludes that a PPC parking website’s decision to use a privacy shield, and especially one that does not disclose the beneficial owner’s true identity in response to a verification request in a UDRP proceeding, likely will support inferences that the registrant registered and used the domain name in bad faith. See, e.g., Ustream.TV, Inc. v. Vertical Axis, Inc., WIPO Case No. D2008-0598; Medco Health Solutions, Inc. v. Whois Privacy Protection Service, Inc., WIPO Case No. D2004-0453. Those inferences may be rebuttable depending on the facts of the case. Ultimately, of course, in the event that a timely disclosure of any underlying registrant of the disputed domain name should not be forthcoming, then it is the privacy service itself which must accept responsibility (and indeed potential liability)4 as Respondent for the disputed domain name. And as no such disclosure was made to the Center in this case, the Panel has no practical choice but to find Privacy Whois Service to be the de facto Respondent in this WIPO case.
B. Identical or Confusingly Similar
The Complainants have submitted evidence of their ownership of registrations for DR. MARTENS in the EU, Canada, and the United States. The Respondent has not contested these registrations. As such, the Complainant has clearly established that there is a trademark in which it has rights. See WIPO Overview 2.0, paragraph 1.1 (“If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights. The location of the trademark, its date of registration (or first use) . . . , and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP.”).
The Complainant must therefore prove that the disputed domain name — disregarding the gTLD “.net” — is identical or confusingly similar to its marks. B & H Foto & Electronics Corp. v. Domains by Proxy, Inc./Joseph Gross, WIPO Case No. D2010-0842. The disputed domain name <drmartinshoes.net> differs from the trademarks in three ways: the elimination of a period and space between “DR” and “MARTENS”; the change of the letter “e” to “i” and the elimination of the letter “s” in “MARTENS”; and the addition of “shoes” at the end of the domain name.
As numerous prior panels have held, “a mere addition of a minor misspelling or typographical error of a mark does not create a new or different mark in which Respondent has legitimate rights.” E.g., Hobsons, Inc. v. Peter Carrington a/k/a/ Party Night Inc., WIPO Case No. D2003-0317. Domain names that consist of small modifications of trademarks — a practice commonly known as typosquatting — “are confusingly similar by definition.” Dell Computer Corp. v. Clinical Evaluations, WIPO Case No. D2002-0423.
Applying this principle, the disputed domain name plainly is confusingly similar to the Complainants’ trademarks. The eliminations of the period and space do not affect the similarity analysis, as neither character is allowed in domain names. See, e.g., “Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. PrivacyProtect.org/Tech Domain Services private Limited, WIPO Case No. D2010-1342; Colgate — Palmolive Co. v. Charles Kasinga, NAS Claim No. 94203 (“[T]he absence of the space between the words is not significant in determining similarity”). The change from “e” to “i” and the elimination of the “s” in “Martens” do not mitigate the clear similarity in the letter strings of the disputed domain name and the trademark. The vowel change is similarly insignificant, and the omission of the final “s” also has little perceptible effect. See Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, WIPO Case No. D2008-1302 (concluding that <expresscripts.com> was confusingly similar to “Express Scripts”). Put simply, these minor changes are classic typosquatting strategies.
The addition of the word “shoes” at the end of the domain name is also not sufficient to mitigate the confusing similarity. As a general matter, “[t]he addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP.” WIPO Overview 2.0, paragraph 1.9; see also Nintendo of Am. Inc. v. Marco Beijen, WIPO Case No. 2001-1070. “Shoes” describes the products to which the Respondent’s site links, and other panels have concluded that “shoes” is a descriptive term in similar circumstances. See Dr. Martens International Trading GmbH v. Above.com, WIPO Case No. D2009-1253. Indeed, in this case, the addition of “shoes” may increase the likelihood of confusion with the Complainants’ marks, as shoes are the Complainants’ most famous products. See id.
The Panel therefore concludes that the disputed domain name is confusingly similar to the Complainants’ DR. MARTENS marks. Accordingly, the Complainants have satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing their ownership interest in the marks and in showing that the Respondent has registered domain names confusingly similar to those marks.
C. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainants have the burden of making a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Once this burden is met, the burden of production shifts to the Respondent (though the burden of proof always remains with the Complainants). Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. If the Respondent does not respond, the Complainants will have met their burden. Moroccan Financial Board v. Abdullah Riahi, WIPO Case No. D2011-0751.
Based on the factual allegations in the unanswered Complaint, the Respondent has not been commonly known by, nor acquired trademark rights in, the disputed domain name. The Complainant did not authorize the Respondent’s use of its mark and no connection exists between the parties.
As the Complaint alleges, the Respondent has merely used the disputed domain name to host a PPC parking website. In recent years, the Internet has seen a proliferation of PPC parking websites. These sites, which generate revenue for the owner when a visitor clicks an advertisement, are both easy to set up and cheap to maintain. Individual domain names can now be registered at very low cost, and PPC pages can be set up through inexpensive automated processes, which means that PPC parking websites set up to monetize a domain name can turn a profit even with relatively low levels of traffic and clicks.
To this Panel, it seems that, despite their proliferation, PPC parking websites confer no public benefits. Rather, they are replete with public costs. PPC parking websites lock up domain names, preventing names from being used for creative, socially constructive purposes; they clutter search results and can divert Internet users from finding the websites and content for which they seek;5 and they can lead to costly domain name disputes, such as this case, when they tread too close to established trademarks. The UDRP is not, though, a mechanism for resolving all bad and unproductive behavior on the Internet; rather, it is a targeted mechanism for preventing abusive cybersquatting. Thus, if PPC parking websites constitute cybersquatting, they may be challenged through the UDRP, e.g., Boris Johnson v. Belize Domain Whois Service Lt, WIPO Case No. D2010-1954; otherwise, unless otherwise prohibited by national intellectual property laws, they may be an unavoidable cost of the Internet age, e.g., mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141.
If a PPC parking website shows only advertising links that are merely based on the dictionary meaning of the domain name, a registrant may be found to have a legitimate interest in the domain name because it may be making a fair use of the domain name. See UDRP paragraph 4(c)(iii). For example, one panel concluded that the registrant of <havanna.com>, which was a PPC parking website, had a legitimate interest in the domain because the advertisements on the website all related to the capital of Cuba, not the complainant’s HAVANNA trademark, which was used in connection with confections. Havanna S.A. v. Brendhan Hight, Mdnh Inc, WIPO Case No. D2010-1652. In cases like that, the registrant may have a legitimate interest in the domain name because it is merely capitalizing on the generic meaning of the word, not the goodwill associated with another entity’s trademark. See WIPO Overview 2.0, paragraph 2.6.
On the other hand, if any of the links on a PPC parking website take advantage of the Complainant’s trademark, that is not a fair use. For example, a panel concluded that the registrant of <ustream.com>, which was a PPC parking website, did not have a legitimate interest in the domain name because the advertisements on the website displayed links that related to the services the complainant offered under its USTREAM.TV mark. Ustream.TV, Inc. v. Vertical Axis, Inc., WIPO Case No. D2008-0598. Even a single, trademark-related ad on a PPC parking website can be sufficient to establish a lack of a legitimate interest. Boris Johnson v. Belize Domain Whois Service Lt, WIPO Case No. D2010-1954. Put simply, for a PPC parking website registrant to ensure that it does not run afoul of the UDRP, it would be well advised to “suppress PPC advertising related to the trademark value of the word or phrase” in the domain name. WIPO Overview 2.0, paragraph 2.6.
Printouts of the Respondent’s website in Annex 6 of the Complaint show that the <drmartinshoes.net> domain name was used to host advertisements for several of the Complainants’ competitors, including Chiruca boots and safety boots, as well as retailers that sold the Complainants’ products. Regardless of whether the Respondent consciously included those links or whether an algorithm over which the Respondent had limited or no control generated them, the advertisements undoubtedly take advantage of the Complainants’ trademarks. Boris Johnson v. Belize Domain Whois Service Lt, WIPO Case No. D2010-1954. The Panel therefore concludes that the Respondent’s use is not a noncommercial fair use.
Accordingly, the Complainants have satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Complainants have the burden of establishing that the domain name was registered and is being used in bad faith. The majority of panels have concluded that these are two distinct requirements. See, e.g., Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011.
For the reasons noted above, the registrant’s use of a privacy shield, and its refusal to lift the privacy shield to reveal the identity of the beneficial owner, itself gives rise to an inference of bad faith use and registration.
Bad faith use and registration also have been established under paragraph 4(b)(iv) of the Policy, which provides that it shall be evidence of bad faith use and registration if the Respondent “intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [its] web site or location or of a product or service on [its] web site or location.”
The Complainants’ trademark in this dispute — DR. MARTENS — is strong. It represents a globally recognized brand and a company that has been in business for over fifty years. The automatically generated PPC links on the Respondent’s website overwhelmingly refer to the Complainants’ marks and products, and the Respondent appended “shoes” — a term describing the Complainants’ most famous product — to its domain name. Given these facts, the Respondent must have had knowledge of the Complainants’ rights in the mark at the time that it registered the domain name. See "Dr. Martens" International Trading GmbH. and "Dr. Maertens" Marketing GmbH v. Private Whois Service, WIPO Case No. D2011-1191; Nintendo of Am. Inc. v. Marco Beijen, WIPO Case No. D2001-1070. Because the Respondent knew (or at least should have known) of the Complainants’ trademark at the time of registration, the Panel concludes that the Respondent registered the domain name in bad faith. See WIPO Overview 2.0, paragraph 3.4.
By creating a PPC parking website that featured PPC links to the Complainants’ competitors, the Respondent similarly used the domain name in bad faith. The purpose of this PPC parking website clearly was to attract Internet users to the site, for profit, based on their confusing the Respondent’s domain name and/or website with the Complainants and/or their website. Once on the Respondent’s page, some users likely click on advertisers’ links, which presumably would confer a commercial benefit on the Respondent. The fact that the Respondent was willing to pay money to register or acquire this domain name, to continue to maintain it, and to host the website, all are evidence that the Respondent expected to profit from the domain name in this way. The Panel therefore infers that the Respondent profited from the goodwill associated with the DR. MARTENS mark by collecting click-through fees and that the Respondent used the domain name in bad faith.
Accordingly, the Panel finds that the Complainants have satisfied the requirements of paragraph 4(a)(iii) 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 domain name <drmartinshoes.net> be transferred to the Complainants.
David H. Bernstein
Dated: December 2, 2011
1 Because the Respondent did not submit a Response, the Panel has carefully reviewed the record to ensure that the Center discharged its obligation to notify Respondent of the Complaint pursuant to paragraphs 2(a) and 4(a) of the Rules. See Nicole Kidman v. John Zuccarini, WIPO Case No. D2000-1415.
On October 20, 2011, the Center sent written notice of the Complaint via UPS to the only postal address provided in the Respondent’s Whois records. On October 25, 2011, the Center received e-mail notification from UPS that the address was not valid. The Center provided UPS with telephone and e-mail contact information for the addressee on November 1, 2011, but UPS was apparently unable to receive a response and it noted a final delivery failure on November 3, 2011. On October 20, 2011, the Center also attempted to provide the Respondent with notice by e-mail. The Center forwarded a copy of the Complaint, including all annexes, to the e-mail addresses provided in the Respondent’s Whois information, and to the e-mail address email@example.com. Most of the relevant e-mail addresses returned errors, and the Center received no responses from the remaining addresses. No fax number was provided in the Respondent’s Whois records.
The Panel concludes that the Center has employed “reasonably available means calculated to achieve actual notice to Respondent” and that any failure of receipt of actual notice is the fault of the Respondent for failing to provide valid contact information in its Whois records. Accordingly, the Panel concludes that the Center has discharged its obligation to notify the Respondent of the Complaint pursuant to paragraphs 2(a) and 4(a) of the Rules.
2 In this case, the privacy shield appears to have been provided by the registrar, Internet.bs Corp., as a free option that required the registrant merely to check a box in the course of registration.
3 Internet.bs’s privacy shield policy is explained in section 3(b) of its registration agreement:
b. Domain Privacy. If you elect to use our Private Whois service in order to mitigate spam and protect your privacy and when the corresponding Registry allows domain privacy, you agree you are still the sole owner of the domain and we do not play the role of a proxy registrant. Furthermore you retain full control over your domain, including the option to update whois details at your own sole discretion. You also understand and agree we will not respond to any legal action against your domain as we are merely the domain Registrar and you will have to promptly and directly handle domain disputes. Our Private Whois service is immediately and without any filtering or human intervention forwarding all emails sent to the listed public whois contact to your chosen email addresses, as such you understand and accept we cannot be held responsible if you decide not to answer to email(s) you receive or if you omit to monitor your email inbox and/or spam box. Our domain privacy (Private Whois) public whois clearly states “PLEASE DO NOT SEND LETTERS - Contact the owner by email only” as such we will simply discard or reject all letters we may receive addressed to you, if you do not agree and/or if you wish to receive letters, DO NOT use our Private Whois service. For some TLD such as .eu, .fr and .uk the corresponding Registry forbids Domain Privacy (Private Whois) provided by a third party, however the corresponding Registry offers in general equivalent and/or similar privacy services you can configure either from our interface and/or from the Registry’s interface. It is your responsibility to refer to each Registry’s policy before you subscribe to our service(s) to make sure they match your needs and expectations.
4 See also in this respect paragraph 18.104.22.168 of the ICANN Registrar Accreditation Agreement.
5 Google has recently acknowledged this problem and modified its search algorithm to exclude parked domains: “New ‘parked domain’ classifier: This is a new algorithm for automatically detecting parked domains. Parked domains are placeholder sites that are seldom useful and often filled with ads. They typically don’t have valuable content for our users, so in most cases we prefer not to show them.” Scott Huffman, Search Quality Highlights: New Monthly Series on Algorithm Changes, Inside Search: The Official Google Search Blog (December 1, 2011 9: 46: 00 AM), http://insidesearch.blogspot.com/.