WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
“Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Telos Chamir
Case No. D2012-0172
1. The Parties
The Complainants are “Dr. Martens” International Trading GmbH of Gräfelfing, Germany and “Dr. Maertens” Marketing GmbH of Seeshaupt, Germany, represented by Beetz & Partner, Germany.
The Respondent is Telos Chamir of Wanchai, Hong Kong, China.
2. The Domain Name and Registrar
The disputed domain name <drmartenssandals.info> is registered with Key-Systems GmbH dba domaindiscount24.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2012. On February 1, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 1, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On February 3, 2012 the Center notified the Parties that the Complaint was filed in English but that according to the information received from the Registrar the language of the Registration Agreement is German. Accordingly, the Complainant submitted a request for English to be the language of the proceedings on February 6, 2012. The Respondent did not submit any reply. The Center thus informed the Parties that it would send all case-related communications in both English and German, that it would accept a Response filed in either language, and that the language of the proceeding would be decided by the Panel once appointed.
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 February 10, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 1, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 2, 2012.
The Center appointed Theda König Horowicz as the sole panelist in this matter on March 8, 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
The Complainants are the owner of DR. MARTENS a famous international brand for footwear, clothing and accessories, particularly renowned for its distinctive shoes and boots. DR. MARTENS footwear, clothing and accessories are available for sale at retailers throughout the world as well as online at the Complainants’ web site, located at the domain name <docmarten.com>.
The Complainants are the owners of several trademarks including:
CTM 59147 DR. MARTENS filed on April 1, 1996, registered for various goods mainly for footwear and clothing in class 25, as well as retail services in class 35;
Canadian Trademark No. 420485 DR. MARTENS with a filing date of December 17, 1990, mainly for footwear and clothing in class 25;
Canadian Trademark no. 625884 DR. MARTENS of November 18, 2004 mainly for retail services in the field of footwear in class 35;
US Trademark No. 1798791 DR. MARTENS filed on March 14, 1990 for footwear in class 25;
US Trademark No. 2838397 DR. MARTENS filed on June 26, 2002 for retails services in the field of footwear and clothing in class 35;
US Trademark No. 2397734 DOC MARTENS filed on October 18, 1999 for footwear in class 25.
The disputed domain name <drmartenssandals.info> was registered on June 18, 2011. It is linked to a web page featuring sponsored links to several other web sites.
5. Parties’ Contentions
The Complainants allege to have prior trademark rights over DR. MARTENS and DOC MARTENS. The disputed domain name <drmartenssandals.info> is phonetically similar to the Complainants’ trademarks and visually almost identical to the various DR. MARTENS trademarks of the Complainants. The omission of the point between “Dr” and “Martens” is not sufficient to create distinctiveness between “Dr. Martens” and “drmartens”. Furthermore, the addition of the word “sandals” to the disputed domain name, does not avoid the risk of confusion, as this element is descriptive.
The Complainants also state that the Respondent has no rights or legitimate interests in the disputed domain name. By using the disputed domain name, the Respondent misleads and deceives the consumers into believing that he has a sponsorship or affiliation or any association whatsoever with the original DR. MARTENS trademark owners. In addition, the Respondent is making an illegitimate and unfair use of the disputed domain name <drmartenssandals.info> with the clear intention to misleadingly divert consumers for commercial gain and to tarnish the trademarks and service marks DR. MARTENS.
Finally, the Complainants consider that the disputed domain name was registered in bad faith, as the Respondent was undoubtedly aware of the trademarks owned by the Complainants. The Respondent is also using the disputed domain name in bad faith as the Internet users are redirected to unauthorized web sites which are selling competitors’ and Dr. Martens’ products. This is a clear indication that the Respondent is intentionally attempting to attract Internet users for commercial gain and to profit of the goodwill associated with the Complainants’ trademarks by accruing click-through fees for each redirected and confused Internet user.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
A. Language of Proceedings
The Registration Agreement is in German.
In accordance with paragraph 11(a) of the Rules, the default language of the proceedings would be German.
The Complainants have requested for English to be the language of the proceedings considering that (i) the documents in support of the Complaint were filed in English, (ii) the Registrar is an ICANN accredited company with international standard which should thus understand English and (iii) the Respondent has an address in Hong Kong where English is the administrative language.
The opportunity was given to the Respondent to challenge this point of view. However, the Respondent did not submit any comment.
Paragraph 11(a) of the Rules allows the panel to determine the language of the proceedings having regard to the circumstances. With regard to paragraphs 10(b) and (c) of the Rules, panels must ensure fairness to the parties and maintenance of a cost-efficient and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burden to the parties and undue delay to the proceedings (e.g., Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical applicance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).
The Panel notes that both parties have been given a fair opportunity to present their case. The Respondent has chosen not to use the said opportunity. Sufficient indications have been given by the Complainants to show that the Respondent is competent in English. There is thus no objective reason in the present case to disadvantage the Complainants by making them translate their Complaint.
Under the circumstances, the Panel concludes that the language of proceedings shall be English.
B. Substantive Issues
Under the Policy, in order to prevail, a complainant must prove the following three elements for obtaining the transfer of a domain name:
(i) that the domain name is identical or confusingly similar to a trademark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
C. Identical or Confusingly Similar
The Complainants showed to have trademark rights in the name “Dr. Martens” and “Doc Martens”.
The trademark DR. MARTENS is reproduced in its entirety in the disputed domain name. As mentioned by the Complainants, the fact that the point between “Dr” and “Martens” is omitted in the disputed domain name does not change the fact that the disputed domain name is confusingly similar to the trademark of the Complainants.
Furthermore, it is generally admitted that the addition of a descriptive word in a domain name along with a protected trademark is not sufficient to avoid a finding of confusing similarity (see eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307, <ebaymoving.com>). Moreover, it is well-established that the addition of descriptive additions that designate the goods or services with which the trademark is used, does not avoid confusing similarity of domain names and trademarks (see Time Warner Entertainment Company L.P. v. HarperStephens, WIPO Case No. D2000-1254 <harrypotterfilms.net> et al.). In the present case, the Complainant has established that its trademark DR. MARTENS is registered and used for footwear. Furthermore, the DR. MARTENS brand is widely known in this specific field, in particular for its boots. Respondent’s use of a domain name consisting of the descriptive element “sandals” added to “Dr. Martens” is thus likely to rise the confusion as it points to a field of goods in which the Complainants’ mark is actually used and known for.
Under these circumstances, the Panel concludes that the disputed domain name is identical or confusingly similar to the Complainants’ mark. The condition required under paragraph 4(a)(i) of the Policy is thus fulfilled.
D. Rights or Legitimate Interests
The question arises as to whether the Respondent has rights or legitimate interests to use the disputed domain name with bona fide offering of goods, being underlined that the Complainants must – under the Policy - show prima facie that this would not be the case. If the Complainants show prima facie that the Respondent has no such rights or legitimate interests, the burden of production then shifts to the Respondent.
The Respondent has pointed the disputed domain name to a web page featuring sponsored links to several other online locations. The case file shows that the business listed on this web page are mainly mobile phone sellers. They do not seem to be competitors of the Complainants. Furthermore, the web page indicates that the disputed domain name is for sale.
However, the Complainants have sufficiently evidenced that their trademark is widely known and that the DR. MARTENS boots are as a matter of fact well-known in the general public.
Consequently, even if the sponsored links do not relate to businesses selling footwear, it seems obvious to this Panel that the Respondent chose a domain name containing the trademark of the Complainants with the aim to misleadingly divert Internet users to other commercial sites and/or to sell the disputed domain name.
Furthermore, the Complainants have not granted any license or authorization to the Respondent to use their mark in any manner, nor is there an affiliation between the Complainants and the Respondent to justify the use of the Complainants’ mark by the Respondent.
In addition, the Respondent has not disputed the facts as presented by the Complainants and there is no evidence before the Panel to suggest that the Respondent either is commonly known by the disputed domain name or is operating a business or any other organization under the disputed domain name.
For these reasons, the Panel finds that the Complainants have established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name, which the Respondent has not rebutted.
The second condition of paragraph 4(a) of the Policy is therefore fulfilled.
E. Registered and Used in Bad Faith
The record shows that the Complainants are active and famous in relation to footwear and that they have an extensive presence on the Internet notably through their official web site “www.drmartens.com”.
Furthermore, the disputed domain name is confusingly similar to the Complainants’ trademark and to the Complainants’ main domain name <drmartens.com>.
It is therefore very unlikely that the Respondent could have been unaware of the trademark DR. MARTENS and of the Complainants’ web site “www.drmartens.com” when registering the disputed domain name (Heineken Brouwerijen B.V. v. Mark Lott, WIPO Case No. D2000-1487).
The Respondent uses the disputed domain name to advertise sponsored links. The Respondent has not disputed the Complainants’ contention that such use is generating revenue for the benefit of the Respondent.
Furthermore, the web page to which the disputed domain name is linked to shows that the disputed domain name is for sale.
The Panel is therefore of the view that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the web site linked to the disputed domain name, by creating a likelihood of confusion with the Complainants’ trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site (paragraph 4(b)(iv) of the Policy).
Considering the above, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith.
The third condition of paragraph 4(a) the Policy is thus established.
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 <drmartenssandals.info> be transferred to the Complainants.
Theda König Horowicz
Dated: March 28, 2012