WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
"Dr. Martens" International Trading GmbH / "Dr. Maertens" Marketing GmbH v. Mao Li
Case No. D2012-0350
1. The Parties
The Complainant is "Dr. Martens" International Trading GmbH / “Dr. Maertens" Marketing GmbH of Gräfelfing and Seeshaupt Germany, represented by Beetz & Partner of Germany.
The Respondent is Mao Li of Guangdong, China.
2. The Domain Names and Registrar
The disputed domain names <drmartens2011.com> and <onlydrmartensuk.com> (“the Disputed Domain Names”) are registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2012. On February 21, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the Disputed Domain Names. On February 21, 2012, GoDaddy.com, LLC 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 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 28, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 19, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 21, 2012.
The Center appointed Kar Liang Soh as the sole panelist in this matter on April 2, 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 companies registered in Germany. The business of the Complainants arose from the invention of an air-cushioned sole by Munich-based Dr Maertens and Dr Funck and has been operating for about 50 years. The Complainants products marketed under the trade mark DR MARTENS include footwear, clothing and accessories and they are particularly known for their shoes and boots. The products are available through retailers throughout the world and online at the website “www.docmarten.com”. The trade mark DR MARTENS has been acknowledged as a popular fashion brand in various publications. The trade mark DR MARTENS has also been recognized by prior UDRP panels as a well-known mark (eg, Dr Martens v Above.com, WIPO Case No. D2009-1253; Dr Martens v PrivacyProtect.org, WIPO Case No. D2010-1342)
The Complainants are joint owners of the following trade mark registrations:
Jurisdiction Trade mark Trade mark no Registration Date
CTM DR MARTENS 59147 April 1, 1996
Canada DR MARTENS 420485 December 17, 1990
Canada DR MARTENS 625884 June 25, 2002
The 1st Complainant is also the owner of the following trade mark registrations:
Jurisdiction Trade mark Trade mark no Registration Date
USA DR MARTENS 1454323 August 25, 1987
USA DR MARTENS 1798791 October 12, 1993
USA DR MARTENS 2838397 May 4, 2004
USA DOC MARTENS 2397734 August 1, 2000
The Respondent appears to be an individual. The address and telephone number provided by the Respondent is “guangzhouyinheyuan, guangzhou, guangdong 11111 China” and “8611111111111” respectively. No further information about the Respondent is known.
The Disputed Domain Names, <drmarten2011.com> and <onlydrmartenuk.com> were registered on September 13, 2011 and January 5, 2012 respectively. As at January 18, 2012, both Disputed Domain Names resolved to websites with nearly identical content which offers footwear under the trade mark DR MARTENS for sale. The websites featured the trade mark DR MARTENS very prominently. The Complainants attempted to place an order for footwear from these websites but the websites indicated that shipping to the Complainant’s delivery location in Europe was not possible. As at February 28, 2012, neither of the Disputed Domain Names appear to resolve to any website.
5. Parties’ Contentions
The Complainant contends that:
1) The Disputed Domain Names are confusingly similar to the Complainant’s trade mark registrations. The Disputed Domain Names comprise the only characterizing element “drmartens” and the descriptive elements “2011”, “only” and “uk” which do not assist to avoid the risk of confusion;
2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Respondent is making a false representation that he has the sponsorship, approval or association with the Complainants which is not the case. The Respondent was selling “Dr Martens” footwear without being authorized or approved by the Complainants or their licensees. There is nothing in the evidence to indicate that the Respondent has any rights or interests in respect of the Disputed Domain Names; and
3) The Disputed Domain Names were registered and are being used in bad faith. The trade mark DR MARTENS is a well-known mark which the Respondent must have been aware of. The Respondent intentionally attempted to attract for commercial gain Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainants’ trade marks as to the source, sponsorship, affiliation, or endorsement of the Respondents’ websites and/or products on the Respondent’s websites.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
In order to succeed in this proceeding, the Complainants must show that the 3 conditions of paragraph 4(a) of the Policy are established. The Panel proceeds to consider these 3 conditions below.
A. Identical or Confusingly Similar
The Complainants clearly have rights in the trade mark DR MARTENS by virtue of their trade mark registrations. The Disputed Domain Names incorporate the trade mark DR MARTENS in their entirety.
The only difference between the Disputed Domain Name <drmartens2011.com> and the trade mark DR MARTENS is the number 2011 which clearly represent the year 2011. Fashion labels frequently present annual collections of their wares and the use of a year as a descriptive suffix does not assist to distinguish the <drmartens2011.com> from the trade mark DR MARTENS.
The Disputed Domain Name, <onlydrmartensuk.com> differs from the trade mark DR MARTENS by the addition of a prefix “only” and a suffix “uk”. The prefix is a descriptive emphasis on the trade mark DR MARTENS while the suffix “uk” can only be a geographical reference to the United Kingdom. The Panel agrees with the Complainants’ submission these elements are purely descriptive and do not assist to distinguish the Disputed Domain Name from the trade mark DR MARTENS.
In the circumstances, the Panel is of the view that the Disputed Domain Names, in incorporating the trade mark DR MARTENS in its entirety and garnished with non-distinguishing elements, are confusing similar to the trade mark DR MARTENS. The 1st condition of paragraph 4(a) of the Policy is accordingly established.
B. Rights or Legitimate Interests
The Complainants have confirmed that the Respondent does not have the sponsorship, approval or association with the Complainants to enable them to use the trade mark DR MARTENS. The Respondent appears to be an individual and there is no evidence to suggest that the Respondent is commonly known by the name “Dr Martens”. In accordance with the consensus of past UDRP panel decisions, such a circumstance supports a prima facie determination that a respondent does not have rights or legitimate interests. No response having been filed, the Panel holds that the prima facie determination stands. As such, the 2nd condition of paragraph 4(a) of the Policy is established as well.
C. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the Policy states that the following circumstance is evidence of bad faith registration and use by a respondent:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
The websites resolved from the Disputed Domain Names at least until January 18, 2012, offered products for sale. The fact that commercial gain must have been the Respondent’s intention cannot be denied. Based on the evidence submitted, the Panel agrees with the prior UDRP panel decisions of Dr Martens v Above.com (supra), and Dr Martens v PrivacyProtect.org (supra) in holding that the trade mark “Dr Martens” is well-known. In deciding to incorporate the trade mark DR MARTENS in the Disputed Domain Names, the Respondent must have been aware of and intended to benefit from the fame in the same. The prominent use of the trade mark DR MARTENS on the websites is consistent with this view. The Panel concludes that the evidence supports a finding of bad faith registration and use under paragraph 4(b)(iv) of the Policy.
In addition, the address of the Respondent is incomplete and the telephone number in all probability fictitious. The Center has verified that the postal code in the address of the Respondent does not exist and the Center’s failed attempts to contact the Respondent were not surprising.
An applicant for registration of a domain name has a duty to act honestly. The deliberate use of fictitious and/or ineffective contact particulars to register a domain name without any valid reason may be considered as further evidence of bad faith and the subsequent use of the domain name is tainted by the bad faith (see Farouk Systems Inc. v. David, WIPO Case No. D2009-1245). The Panel is of the view that the Respondent has failed to discharge this duty and the finding of bad faith registration and use is justified.
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, <drmartens2011.com> and <onlydrmartensuk.com>, be transferred to the Complainants.
Kar Liang Soh
Dated: April 21, 2012