WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
"Dr. Martens" International Trading GmbH / "Dr. Maertens" Marketing GmbH v. Mu Tian
Case No. D2012-0372
1. The Parties
The Complainant is "Dr. Martens" International Trading GmbH / "Dr. Maertens" Marketing GmbH of Gräfelfing, Germany and Seeshaupt, Germany represented by Beetz & Partner, Germany.
The Respondent is Mu Tian of Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <drmartenuks.com> (the “Disputed Domain Name”) is registered with HiChina Zhicheng Technology Ltd..
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2012. On February 28, 2012, the Center transmitted by email to HiChina Zhicheng Technology Ltd a request for registrar verification in connection with the Disputed Domain Name. On March 2, 2012, HiChina Zhicheng Technology Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On March 5, 2012, the Center informed the parties regarding the language of the proceeding. On March 6, 2012, the Complainant requested for English to be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 March 13, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 2, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 3, 2012.
The Center appointed Kar Liang Soh as the sole panelist in this matter on April 24, 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.drmartens.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 (e.g., 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
Australia DR MARTENS 500799 December 5, 1988
Australia DR MARTENS 570247 December 5, 1988
Australia DR MARTENS 652619 February 8, 1995
Australia DR MARTENS 400023 November 16, 1983
Australia DR MARTENS 916942 June 20, 2002
Canada DR MARTENS 420485 December 17, 1990
Canada DR MARTENS 625884 June 25, 2002
The Complainant "Dr. Martens" International Trading GmbH 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
The Respondent appears to be an individual. No further information about the Respondent is known beyond what is disclosed in the WhoIs record of the Disputed Domain Name.
The Disputed Domain Name was registered on December 23, 2011. As at February 15, 2012, the Disputed Domain Name resolved to a redirected website under the domain <drmartenukco.com> which prominently referenced a webhosting service and links to various sponsored listings and other links to various brands of footwear. As at March 13, 2012, the Disputed Domain Name was still resolving to this same website but without redirecting to the domain <drmartenukco.com>.
5. Parties’ Contentions
The Complainant contends that:
1) The Disputed Domain Name is confusingly similar to the Complainant’s trade mark registrations. The Disputed Domain Name comprises the only characterizing element “drmarten” and the descriptive element “uks” which does not assist to avoid the risk of confusion;
2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent is making a false representation that he has the sponsorship, approval or association with the Complainants which is not the case. There is nothing in the evidence to indicate that the Respondent has any rights or interests in respect of the Disputed Domain Name; and
3) The Disputed Domain Name was registered and is 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 website by creating a likelihood of confusion with the Complainants’ trade mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’ website and/or products on the Respondent’s website. The Respondent exhibited opportunistic bad faith in registering the Disputed Domain Name.
The Respondent did not reply to the Complainant’s 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.
6.1 Language of proceedings
Having considered the circumstances of the case, the Panel decides that English be adopted as the language of the proceedings under paragraph 10 of the Rules. In coming to this decision, the Panel has taken the following into account:
1) The Complaint has already been submitted in English and the Panel is fully capable of dealing with the Complaint in English;
2) The Respondent has not indicated any language preference;
3) The website resolved from the Disputed Domain Name was fully in English, which is strongly suggestive that the Respondent is or has ready access to competence in English; and
4) Since no response has been filed, there does not appear to be any procedural benefit that may be achieved by insisting on the default language of the proceedings and it is likely that delay to the proceedings would result should the Complainants be required to re-submit the Complaint in Chinese.
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 Name incorporates the trade mark DR MARTENS almost in its entirety.
The only difference between the Disputed Domain Name and the trade mark DR MARTENS is the insertion of the letters “uk” before the last letter “s” in DR MARTENS to form “drmartenuks”. Regardless of this, the visual and phonetic impact is small as it is still readily recognizable as incorporating DR MARTENS in a very significant way. The Panel is of the view that this difference does not assist in distinguishing the Disputed Domain Name from the trade mark DR MARTENS. In the circumstances, the Panel holds that the 1st condition of paragraph 4(a) of the Policy is established on the facts.
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 Panel believes the Respondent to be an individual although the WhoIs records suggest that the Respondent is associated with an organisation known as “tian muxieyeyouxiangongsi”. There is no evidence to suggest that the Respondent or his/her associated organisation 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 also established.
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.”
Based on the evidence submitted, the Panel agrees with 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 adopt the Disputed Domain Name, the Respondent must have been aware that the trade mark and Disputed Domain Name was confusingly similar to the trade mark.
The website, whether previously redirected from or more recently resolved from the Disputed Domain Name, appears to be a parking website. The Complainant has alleged that the website is intended for commercial gain and that the Respondent is profiteering by accruing click-through fees. This is a serious allegation as the offering of click-through services on the website resolved from the Disputed Domain Name would clearly be an indication of commercial gain. An honest and reasonable trader would, in all likelihood, deny such an allegation if it were untrue. Unfortunately, the Respondent has chosen to remain silent. In view of the Respondent’s failure to respond, the Panel will draw an adverse inference against the Respondent and accept the Complainants’ submission that the Respondent is likely gaining financially from click-through arrangements.
Further, click-through revenue is only one example of commercial gain. The webpage resolved from the Disputed Domain Name contains advertisements for various types of footwear under various brands which are associated with competitors of the Complainants. It is a reasonable inference that the Respondent is either a supplier or retailer of such footwear, or an advertiser for such suppliers or retailers. This again suggests commercial gain via advertising revenue.
Based on the above, the Panel concludes that the facts justify a finding 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 Name, <drmartenuks.com> be transferred to the Complainant.
Kar Liang Soh
Dated: May 8, 2012