World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Cheaton Virk

Case No. D2012-0104

1. The Parties

1.1 The Complainants are Dr. Martens International Trading GmbH of Gräfelfing, Germany and Dr. Maertens Marketing GmbH of Seeshaupt, Germany, (the “Complainants”) represented by Beetz & Partner, Germany.

1.2 The Respondent is Cheaton Virk of Surrey, British Columbia Canada (the “Respondent”) unrepresented.

2. The Domain Name and Registrar

2.1 The disputed Domain Name <docmartens1460.com> is registered with GoDaddy.com, LLC. (the “Registrar”)

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 20, 2012. On January 20, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed Domain Name. On January 20, 2012, the Registrar, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

3.2 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”).

3.3 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 January 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 15, 2012. The Respondent did not submit any official response. However, on February 2, 2012 an email was received by the Center from “Cheaton Virk” stating the following:

“To whom this may concern,

Today, February 1 2012, I Cheaton Virk received a letter in the mail from the WIPO organization about a complaint that has been filed against me.

The case number is D2012-0104

I am very confused to what is going on. I live in Surrey British Columbia Canada. I have never in my life ever registered a domain name nor create a website in itself. I am very confused to what is going on as supposedly reading through the mail that i am an owner of the domain "docmartens1460.com" which has recently had a complaint filed against it.

Furthermore, reading through the information provided about my self, it states my house address is "12221 63 a ave" which is incorrect because my address is "12868 63 a ave." Moreover it states that my email is “[…]@hotmail.com" which i do not own and also it states my phone number is "12332215544" which is incorrect because my phone number is "7789897705."

I am just really confused to what is going on. I, Cheaton Virk, have never ever registered for a website in my life and i do not own or have any connections to "docmarten1460.com."

Please contact me for any further question through email or directly at 778-989-7705. I do not know what is going on so it would be nice to know what i am getting falsely accused of owning.

Thank you so much for your time,

Cheaton Virk

778-989-7705”

3.4 A further email was received the same day more or less reiterating the above and his confusion. The Center replied by acknowledging the emails and stating that the communications would be forwarded to the Panel as part of the case file and the Panel for consideration of the claims.

3.5 The Center appointed Ike Ehiribe as the sole panelist in this matter on February 29, 2012. 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

4.1 The Complainants in these proceedings are Dr. Martens International Trading GmbH and Dr. Maertens Marketing GmbH both companies duly registered under the laws of Germany with limited responsibility. The Complainants own the well known DR. MARTENS and DOC MARTENS trademarks which have been used all over the world to market footwear, clothing and accessories, including distinctive shoes and boots first sold in the late 1950’s. The Dr. Martens footwear, clothing and accessories are available for sale at retailers throughout the world as well as online at the Dr. Martens website at “www.docmarten.com” .

4.2 The Respondent in these proceedings is said to be based in Surrey in British Columbia in Canada and is said to have registered the disputed Domain Name <docmartens1460.com> on September 28, 2011. Although, the Respondent did not send in any official response to the Complaint, the Respondent has sent various emails to the Center denying registering the disputed Domain Name and disowning the contact address details attributed to the Respondent as the registrant of the disputed Domain Name as indicated on the WhoIs publicly available data base.

5. Parties’ Contentions

A. Complainant

5.1 The Complainants own numerous DR. MARTEN and DOC MARTENS trademarks registrations all over the world including in the United States of America and in Canada where the Respondent is said to be located. According to the trademark registration certificates attached to these proceedings, the Complainants own the following trademark registrations:

(i) CTM 150144 DOC MARTENS of February 24, 1999 registered mainly for footwear and clothing in class 25, as well as retail services;

(ii) Canadian Trademark No. 420485, DR. MARTENS of December 17, 1990 mainly for footwear and clothing in class 25;

(iii) Canadian Trademark No. 625884,DR. MARTENS of June 25, 2002 mainly for retail services in the field of footwear and clothing in class 35;

(iv) US Trademark No. 1454323, DR. MARTENS of June 9, 1983 for footwear in class 25;

(v) US Trademark No. 1798791, DR. MARTENS of March 14, 1999 for footwear in class 25;

(vi) US Trademark No. 2838397, DR. MARTENS of June 26, 2002 for retail services in the field of footwear and clothing in class 35; and

(vii) US Trademark No. 2397734, DOC MARTENS of October 18, 1999 for footwear in class 25.

5.2 The Complainants assert that the disputed Domain Name, <docmartens1460.com> is phonetically similar to, and identical, with the Complainants’ trademarks DOC MARTENS and DR. MARTENS. The Complainants state that the further element of the disputed Domain Name “1460” is merely a descriptive element, and just a number of figures. The Complainants further submit that since the figure “1460” refers to the most prominent style version of the “Dr. Martens” and “Doc Martens” shoes, the disputed Domain Name is a clear combination of the Complainant’s trademark DOC MARTENS and a descriptive indication which cannot dispel the high risk of confusing similarity.

5.3 The Complainants further submit that while the Respondent is not currently using the disputed Domain Name <docmartens1460.com>, however, by choosing the identical well-known trademark DOC MARTENS and combining it with its most prominent style name “1460”, the Respondent is likely to mislead and deceive consumers into believing that he has a sponsorship, affiliation or approval of the Complainants or licensees when this is not the case. Furthermore, it is asserted that the Respondent is passing off the trademark owners’ goodwill and reputation in both the DR. MARTENS” / “DOC MARTENS trademarks and in the Dr. Martens / Doc. Martens name. The Complainants rely on the following cases in this regard, Dr. Martens v. Above.com, WIPO Case No. D2009-1253 regarding the domain name <drmartenshoes.com> and Dr. Martens v. PrivacyProtect.org, WIPO Case No. D2010-1342 regarding the domain name <doctormartinshoes.com>. It is therefore said that the Respondent is making an illegitimate commercial and unfair use of the disputed Domain Name with the clear intention for commercial gain and to tarnish the Complainants’ trademarks and service marks which clearly demonstrates that the Respondent has neither rights nor legitimate interests in the disputed Domain Name.

5.4 On the question of bad faith registration and use, it is stated that the Respondent intentionally attempted to attract for commercial gain Internet users to the Respondent’s website 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 website and or product or service on the Respondent’s website or location. It is also alleged that the Respondent is likely linking the disputed Domain Name with unauthorized websites which are selling competitors’ and the Complainants’ footwear without being authorized or approved by the Complainants or their licensees. The Complainants further submit that the Respondent must have been aware of the Complainants’ well established rights in the DOC MARTENS and DR. MARTENS trademarks when he registered the disputed Domain Name which suggests opportunistic bad faith registration. The Complainants rely on a number of cases in this regard including Nintendo v. Marco Beijen, Beijen Nintendo of America Inc. v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org.and Pokemon Fans Unite, WIPO Case No. D2001-1070 and Bell South Intellectual Property Corporation v. Serena Axel, WIPO Case No. 2006-0007.

B. Respondent

5.5 The Respondent did not reply to the Complainant’s contentions, but as noted above he sent emails to the Center, in summary, denying registering the disputed Domain Name or ever creating a website. The Respondent also disowns the email address of [….]@hotmail.com, and describes the telephone number of “12332215544” and house number of “12221 63 A” recorded as the Respondent’s contact address details on the WhoIs publicly available database as incorrect. In the absence of a proper official response to the Complainants’ contentions, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s informal emails.

6. Discussion and Findings

6.1 Under paragraph 4(a) of the Policy, to succeed in these administrative proceedings the Complainants must prove: (i) that the disputed Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainants have rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name; and (iii) that the disputed Domain Name has been registered and is been used in bad faith.

6.2 As expressly stated in the Policy, the Complainants must establish the existence of each of the three elements in these proceedings.

A. Identical or Confusingly Similar

6.3 The Complainants have provided evidence of ownership of trademark registrations of the trademark DOC MARTENS and DR. MARTENS in a number of countries including Canada where the Respondent is located. The Panel is satisfied that the disputed Domain Name <docmartens1460.com> is phonetically similar and identical to the Complainants’ trademarks namely DOC MARTENS and DR. MARTENS; The Panel finds that the disputed Domain Name wholly incorporates the Complainants’ trademarks and that the further element of “1460” is just a number of figures, a descriptive element which does absolutely nothing to prevent the high risk of confusing similarity. The Panel accepts that the confusing similarity risk is heightened by the fact that the figure “1460” refers to the Complainants’ most prominent style version of the “Dr Martens”/ “Doc Martens” shoes as shown on one of the Complainants’ adverts attached to these proceedings.

6.4 Accordingly, the Panel is satisfied that the Complainants have established that the disputed Domain Name to be confusingly similar or identical to the Complainants’ registered trademarks in accordance with paragraph 4(a) of the UDRP Policy.

B. Rights or Legitimate Interests

6.5 The Panel equally finds that the Respondent has failed to provide any evidence of circumstances required to establish that there exists any rights or legitimate interests in the disputed Domain Name within the ambit of paragraph 4(c) of the Policy. The Respondent has failed to produce any evidence of any legitimate relationship between the Complainants and the Respondent or consent or any license issued to the Respondent authorizing the Respondent to register and use the disputed Domain Name; therefore the Respondent has failed to establish a bona fide offering of goods and services contrary to paragraph 4(c)(i) of the Policy.

6.6 The Panel is satisfied that the Respondent knowingly registered the disputed Domain Name with the intention of deceiving and misleading Internet visitors and consumers by creating a likelihood of confusion with the Complainants’ trademarks as to source, affiliation, or endorsement of the Respondent’s websites or of a product or service on the Respondent’s website. This Panel finds that there can be no other explanation for the Respondent to have selected the identical well known trademark DOC MARTENS and to combine that trademark with the Complainants’ most prominent style name “1460” except to deceive consumers into believing that it has a sponsorship, affiliation or approval with the Complainants or their licensees which is clearly not the case. The Panel finds at the very least, the Respondent intended to or has attempted to pass off the Complainants’ goodwill and reputation in the DR. MARTENS / DOC MARTENS trademarks and the Dr. Martens and Doc Martens name. Such usage by the Respondent cannot be described as a bona fide offering of goods or services nor a legitimate noncommercial use or fair use of the disputed Domain Name. See generally, Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Above.com Domain Privacy/ Transure Enterprise Ltd, supra regarding the domain name <drmartenshoes.com> and Dr. Martens International Trading GmbH, “Dr. Maertens” Marketing GmbH v. PrivacyProtect.org/Tech Domain Services private Limited, supra in respect of the domain name <doctormartinshoes.com>.

6.7 Accordingly the Panel finds that the Complainants have established that the Respondent has no rights or legitimate interests in the disputed Domain Name in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

6.8 On the question of bad faith registration and use, the Panel finds without any doubts that the Respondent registered the disputed Domain Name in bad faith. First of all the Panel finds that the Respondent who is based in Canada must have known of the Complainants well established rights in the trademarks DR. MARTENS and DOC MARTENS having decided to register the disputed Domain Name on September 28, 2011. Secondly, this Panel considers the Respondent’s knowledge of the Complainant’s rights as at the date of registration is tantamount to opportunistic bad faith registration as held in Nintendo v. Marco Beijen, Beijen Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, supra where the word “pokemon” 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. Thirdly, the Panel finds that use of the disputed Domain Name was made clearly with the intention of disrupting the Complainants’ business and an intentional attempt to attract for commercial gain consumers and Internet visitors to the Respondent’s website and or unauthorized websites selling competitors’ and Dr Martens and Doc Martens footwear without authority or approval from the Complainants or their licensees. Finally, as indicated in paragraph 5.5 above, the Panel has drawn adverse inferences from the Respondent’s failure or refusal to provide a proper official response to the complaint and to rebut the allegations made against him. This Panel is not satisfied that the emails sent by the Respondent claiming confusion or containing bare denials of knowledge of the disputed Domain Name or disowning recorded contact address details in the WhoIs data base is sufficient to absolve the Respondent from responsibility for registering or causing to be registered the disputed Domain Name.

7. Decision

7.1 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 Name, <docmartens1460.com> be transferred to the Complainants.

Ike Ehiribe
Sole Panelist
Dated: March 18, 2012

 

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