WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
"Dr. Martens" International Trading GmbH and "Dr. Maertens" Marketing GmbH v. Private Whois
Case No. D2012-0383
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 Private Whois of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <docmartensshoes.com> is registered with Bargin Register Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2012. On February 27, 2012, the Center transmitted by email to Bargin Register Inc. a request for registrar verification in connection with the disputed domain name. Between February 29, 2012 and March 7, 2012, the Center sent to Bargin Register Inc. several email communications with no reply from them. After such ineffective attempts, on March 7, 2012, the Center informed Bargin Register Inc. that the Center would proceed in this case on the basis that, for the adjudication of disputes concerning or arising from use of the domain name, the domain name registrant had submitted in its Registration Agreement (“RA”) to the jurisdiction of the courts where the registrar is located. Bargin Register Inc. was also informed that unless otherwise advised by them, the Center would proceed on the basis that the RA is consistent with applicable contractual obligations (ICANN-accredited registrars are contractually obliged to ICANN under section 18.104.22.168 of the Registrar Accreditation Agreement to incorporate such a clause) and that the Center would need to proceed in this matter on the basis that the information in the publically available WhoIs accurate. Finally, the Center advised them that the Center would do so reluctantly, and accepts no responsibility in the event of complications resulting from inaccurate or incomplete information.
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 9, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 29, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 30, 2012.
The Center appointed Petter Rindforth as the sole panelist in this matter on April 11, 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.
The Panel shall issue its Decision based on the Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in the English language.
4. Factual Background
The Complainants are the owners of the trademarks DR. MARTENS and DOC MARTENS, registered as:
Community Trademark No 150 144 DOC MARTENS, registered on February 24, 1999, in respect of goods and services in classes 14, 16, 18, 25 and 35
Canadian trademark No 420,485 DR. MARTENS, registered on December 10, 1993, in respect of goods in class 25.
Canadian trademark No 625,884 DR. MARTENS, registered on November 18, 2004, in respect of services in class 35.
United States trademark No 1,454,323 DR. MARTENS, registered on August 25, 1987, in respect of goods in class 25.
United States trademark No 1,798,791 DR. MARTENS, registered on October 12, 1993, in respect of goods in class 25.
United States trademark No 2,838,397 DR. MARTENS, registered on May 4, 2004, in respect of services in class 35.
United States trademark No 2,397,734 DOC MARTENS, registered on October 24, 2000, in respect of goods in class 25.
(Copies of the Certificates of Registrations, as well as official renewal confirmations, provided as Annex 3 of the Complaint).
The disputed domain name <docmartensshoes.com> was first registered on December 11, 2006.
No detailed information is provided about the Respondent’s activities, apart from what is mentioned below by the Complainant.
5. Parties’ Contentions
The Complainants inform that Dr. Martens is a famous international trademark for footwear, clothing and accessories, and has been used since the late 1950’s. Through the Complainants’ website, as well as by retailers, the trademarked goods are sold throughout the world.
The Complainants state that the disputed domain name is phonetically similar to the Complainants’ trademarks, as <docmartensshoes.com> is identical with DOC MARTENS and DR. MARTENS with the only addition of the descriptive word “shoes”.
According to the Complainants, the Respondent has no rights or legitimate interests in respect of <docmartensshoes.com>, as the Respondent is currently using the disputed domain name to host a pay-per-click website which features links to advertisements for the sale of footwear and of Dr. Martens’ footwear on websites which are not authorized or approved by the Complainants.
The Complainants argue that the Respondent is passing off the Complainants’ goodwill and reputation in the Complainants trademarks, as well as making an illegitimate commercial and unfair use of the disputed domain name. Accordingly, the Complainants conclude that nothing seems to indicate that the Respondent has any rights or legitimate interests in respect of the disputed domain name.
By choosing <docmartensshoes.com>, 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’ trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and/or location and/or a product or service on the Respondent’s website or location. The Complainants conclude that the Respondent must have had knowledge of the Complainants’ trademarks at the time of registration of the disputed domain name.
The Complainants request that the Panel issue a decision that the disputed domain name be transferred to the Complainants.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the complainant must prove each of the following:
(i) that the domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainants are the owners of the DR. MARTENS and DOC MARTENS trademarks, registered prior to the disputed domain name in the European Union, the United States of America and Canada.
The relevant part of the disputed domain name is <docmartensshoes>. The Panel concludes that the disputed domain name consists of the Complainants trademark DOC MARTENS, with the addition of the generic word “shoes”. This addition does not preclude a finding of confusing similarity between the trademark and the disputed domain name.
For pure technical reasons, there are only two ways to create a domain name based on a two worded trademark: either to write the two worded trademark with a hyphen, or – as in this specific case – combine the two words into one.
Further, as stated in many UDRP decisions, the addition of a generic term does not necessarily distinguish a domain name from a trademark. The generic word may even add to the confusing similarity (see Scholastic Inc. v. 366 Publications, WIPO Case No. D2000-1627, holding that “[t]he addition of the generic term ‘online’…is not a distinguishing feature. In fact, in this case it seems to increase the likelihood of confusion because it is an apt term for [the] Complainant’s online business”). In this actual case, the prior goods of interest for the Complainants is in fact footwear, making the addition of the word “shoes” even more closely related to the Complainants and the Complainants’ trademark.
Further, the Panel notes that the “DR.” part of the Complainants trademark is the common abbreviation of the word/title Doctor. The “Doc” version is a common nickname for someone with a doctorial degree. Accordingly, <docmartensshoes.com> is also clearly relating to the trademark DR. MARTENS for footwear.
The Panel therefore concludes that <docmartensshoes.com> is confusingly similar to the Complainants’ trademarks DR. MARTENS and DOC MARTENS.
B. Rights or Legitimate Interests
Once the Complainants make a prima facie case in support of its allegations in respect of the second element of the Policy, the burden of production shifts to Respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy, see Clerical Medical Investment Group Limited v. Clericalmedical.com (Clerical & Medical Services Agency), WIPO Case No. D2000-1228 (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of production to the respondent to demonstrate that such a right or legitimate interest does exist).
The Respondent is apparently not an authorized agent or licensee of the Complainants and has no other permission from the Complainants to apply for any domain name incorporating the trademarks DOC MARTENS or DR. MARTENS.
By not submitting a Response, the Respondent has failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name or to rebut the Complainants prima facie case under this paragraph of the Policy.
There is nothing in the Respondent’s name that indicates it may have become commonly known by the disputed domain name, enabling it to establish a right or legitimate interest in the disputed domain name thereby. See Compagnie de Saint Gobain v. Com-Union Corp, WIPO Case No. D2000-0020 (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
As shown by the Complainants (Annex 6 of the Complaint), the Respondent used <docmartensshoes.com> for a website which features links to advertisements for the sale of footwear - some related to the Complainants goods, such as “Doc Martens”, “Fashion Designer” and “Mens Shoes” - on websites which are not authorized or approved by the Complainant, as well as links to sites that do not seem to have anything to do with footwear at all, such as “Frauen”, “New York Hotel” and “Online Computer Training”. Such use cannot constitute to the Panel a bona fide use of the disputed domain name pursuant to paragraph 4(c)(i) of the Policy. See Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809 (“Bona fide use does not exist when the intended use is a deliberate infringement of another’s rights.”), see also Mpire Corporation v. Michael Frey, WIPO Case No. D2009-0258 (stating that “…the Respondent is not connected with the Complainant, but uses the Complainant’s mark with an intention to derive advantage from user confusion. Such use by the Respondent is not legitimate use and does not confer any rights in favor of the Respondent”).
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainants are German based companies, whereas the Respondent’s apparent domicile is the Cayman Islands, Overseas Territory of the Untied Kingdom of Great Britain and Northern Ireland.
However, as stated above, the disputed domain name consists of the Complainants’ trademark with the addition of a generic word that describes the specific goods covered by the said trademark.
Thus, it is clear to this Panel that the Respondent had the Complainants’ trademarks in mind when the Respondent registered the disputed domain name, and that the addition of the generic word “shoes” was not made in order to make a difference, but rather a deliberate attempt to create a likelihood of confusion with Complainants’ mark(s) and services as to the source, sponsorship, affiliation, or endorsement of the website connected with the disputed domain name. See Swarovski Aktiengesellschaft v. Chen Meifeng, WIPO Case No. D2011-0364 (“the incorporation of Complainants’ trademark in the disputed domain name combined with the content featured on the domain name exhibits intent to deceive consumers into believing that the domain name is somehow associated with, affiliated with, and/or endorsed by the Complainant. Continued use of the domain name in this manner contributes to a risk of consumers mistakenly believing that the products featured are offered, sponsored, endorsed, or otherwise approved by Complainant, thereby diverting web traffic from Complainant’s <swarovski.com> and <swarovski.net> domain names”).
The disputed domain name is used for a website displaying sponsored links to advertisements for the sale of footwear – some related to the Complainants - and other goods and services.
In the absence of any response from the Respondent, this Panel cannot draw any other conclusion than the one that the Respondent has tried to create an illusion of commercial relationship with, or endorsement from, the Complainants, thus enabling the Respondent to earn revenues by attracting users to its website.
Thus, the Panel concludes that the disputed domain name is both registered and used in bad faith, and that the Complainants have succeeded in proving the three elements within paragraph 4(a) 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 <docmartensshoes.com> be transferred to at least one of the Complainants.
To the extent necessary for any implementation purposes, the choice of which Complainant, should be submitted directly by the Complainants to the concerned registrar.
Dated: April 16, 2012