WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
“Dr. Martens” International Trading GmbH, and “Dr. Maertens” Marketing GmbH v. Yao Lu
Case No. D2012-0476
1. The Parties
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.
Respondent is Yao Lu of Lueyang, Shanxi, China.
2. The Domain Name and Registrar
The disputed domain name <drmartensbootshop.com> is registered with Jiangsu Bangning Science & technology Co. Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2012. On March 9, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 12, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
On March 15, 2012, the Center transmitted an email to the parties in both English and Chinese regarding the language of the proceedings. On the same day, Complainant confirmed its request that English be the language of the proceeding. Respondent did not comment on the language of the proceeding by the specified due date.
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 Respondent of the Complaint, and the proceedings commenced on March 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 10, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 12, 2012.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on April 25, 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
Complainants sell footwear, clothing, and accessories under its DR. MARTENS trademark which has been registered for these goods in multiple jurisdictions including Australia, Canada, the European Community, and the United States of America. Complainants’ goods and Complainants’ DR. MARTENS trademark have been featured in multiple third party publications and have been recognized as an iconic brand by multiple parties.
Respondent is based in China. The disputed domain name <drmartensbootshop.com> was created on December 28, 2011.
5. Parties’ Contentions
Complainants claim that the disputed domain name <drmartensbootshop.com> is confusingly similar to the DR. MARTENS trademark because it combines the DR. MARTENS trademark with two terms that Complainants maintain are descriptive, namely “boot” and “shop”. Complainants maintain that they have not authorized Respondent to use the DR. MARTENS trademark and that Respondent does not have any rights or legitimate interests in or to the disputed domain name. Complainants allege that Respondent was aware of Complainants and Complainants’ trademark rights in DR. MARTENS when registering the disputed domain name because it incorporates Complainants’ DR. MARTENS trademark in its entirety. Regarding use of the disputed domain name, Complainants allege that Respondent has used the disputed domain name to display links to websites offering goods of third party competitors of Complainants, and alleges that this use has been in bad faith because Respondent is creating consumer confusion by trading off the goodwill of Complainants’ DR. MARTENS trademark. The Complaint requests that the disputed domain name be transferred from Respondent to Complainants.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Language of the Proceeding
The language of the registration agreement for the disputed domain name is Chinese. Complainants have requested that English be accepted as the language of the proceeding. Respondent has not commented regarding the language of the proceeding. The Center has communicated notice of the Complaint in both the English and Chinese languages and has invited Respondent to answer the Complaint in either language.
The Center has communicated with Respondent in the English and Chinese languages and has provided Respondent with the opportunity to file its response in either language. The content featured on the website at the disputed domain name was displayed in the English language at the time the Complaint was filed, and this demonstrates that Respondent has a working knowledge of this language. Taking the foregoing points into account along with Respondent’s default and lack of any communication in this proceeding, the Panel concludes that English should be the language of the proceedings. Translation of the Complaint and other materials would cause unnecessary delay.
B. Identical or Confusingly Similar
The disputed domain name features Complainants’ DR. MARTENS trademark in its entirety. It is clear from the record that Complainants have rights in this trademark which precede the creation of the disputed domain name in December of 2011.
It is not a requirement of the Policy that a complainant’s trademark rights be recognized in a respondent’s country of residence. See, e.g., Advanced Magazine Publishers Inc. v. Computer Dazhong, WIPO Case No. D2003-0668 (“The Policy requires that the disputed domain name must be identical or confusingly similar to a mark in which the Complainant has rights. This requirement can be satisfied by proof that the Complainant is the owner or licensee of a registered mark anywhere in the world – not just in the country of Respondent’s residence”). A majority of the results of an Internet search query for “Dr. Martens” are related to Complainants’ goods; it is therefore difficult to imagine a scenario where consumers would not be confused by the use of the DR. MARTENS trademark to compose a domain name.
Any doubt in favor of Respondent is quelled by the fact that the disputed domain name also features the terms “boot” and “shop”. It is clear from the record that Complainants have used the DR. MARTENS trademark for footwear, and that Complainants are known for their use of this trademark on boots specifically. The use of “boot” with Complainants’ DR. MARTENS trademark as featured in the disputed domain name <drmartensbootshop.com> has a descriptive function given that boots are provided under Complainants’ DR. MARTENS trademark. Prior UDRP cases have held that the addition of a descriptive term to a distinctive trademark such as DR. MARTENS does not create a domain name which is distinguishable from the trademark. See, e.g., Nintendo of America, Inc v. Gray West International, WIPO Case No. D2000-1219 (holding that the addition of “-games” to the domain name <pokemon-games.com> did nothing to reduce confusing similarity with the POKEMON trademark) and Diageo Brands B.V., Diageo North America, Inc. and United Distillers Manufacturing, Inc. v. iVodka.com a.k.a. Alec Bargman, WIPO Case No. D2004-0627 (holding that domain names including <gilbeys-vodka.com>, <gordonsvodka.com>, and <popov-vodka.com> were confusingly similar to the GILBEYS, GORDONS, and POPOV trademarks in which complainant had established rights because the word “vodka” is descriptive of the goods offered by complainant under these marks). Regarding the use of “shop” in the disputed domain name, the Panel believes that this is also non-distinctive and notes that this term has been cited as descriptive by prior UDRP panels. See, e.g., Koninklijke Philips Electronics N.V. v. Philip Vlasov, WIPO Case No. D2011-2274 (concluding that use of “shop” in the domain name <philips-shop.com> did “not create a new or different mark, and is insufficient to avoid a finding of confusing similarity” in a finding for the complainant), and Burberry Limited v. Misson Tom aka Tom Misson aka Mission Tom, WIPO Case No. D2010-0440 (deeming the term “shop” generic and concluding that the use of “shop” with the complainant’s BURBERRY trademark and a term related to the complainant’s business (“scarf”) did “not preclude a finding of confusing similarity” in a case involving the domain name <burberryscarfshop.com>). The Panel believes that the use of the term “shop”, which is defined as “a retail store” or “a store selling specific or select types of goods”, with Complainants’ DR. MARTENS trademark and the term “boot” to form the disputed domain name increases the likelihood of consumer confusion because the domain name’s composition suggests that the disputed domain name is connected with Complainants.
C. Rights or Legitimate Interests
Complainants have established rights in the DR. MARTENS trademark which precede the creation of the disputed domain name. Additionally, the record shows that Complainants’ DR. MARTENS trademark has been highly publicized and used extensively.
There is no evidence in the record to indicate that Respondent is associated or affiliated with Complainants, or that Respondent has any other rights or legitimate interests in the terms used to compose the disputed domain names. Complainants have provided prima facie evidence of Respondent’s lack of rights or legitimate interests in the disputed domain name, and the burden of production therefore shifts to Respondent to come forward with evidence demonstrating the rights or legitimate interests it may have. However, Respondent has not submitted any evidence of rights or legitimate interests in the disputed domain name.
The Panel therefore finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
D. Registered and Used in Bad Faith
The record shows that Complainants own trademark rights in DR. MARTENS which precede creation of the disputed domain name. Given that the disputed domain name incorporates this trademark in its entirety and that a simple Internet search for “Dr. Martens” reveals extensive use and promotion of the mark by Complainants’ for Complainants’ goods, it is clear that Respondent was likely aware of Complainants or should have known of Complainants when registering the disputed domain name. Any doubt in favor of Respondent is minimized when considering Respondent’s use of the term “boot” in the disputed domain name, a term descriptive of goods provided by Complainants under its DR. MARTENS trademark.
The webpage submitted with the Complaint featured a search engine results page with links to third party websites (Annex 6 to the Complaint). The Panel also notes that the website at the disputed domain name is currently inactive. There is no evidence in the record to indicate that Respondent has used the disputed domain name to promote a bona fide intent to offer goods or services. As established in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the passive holding of a domain name following its bad faith registration can satisfy the requirements of paragraph 4(a)(iii) of the Policy if the circumstances of Respondent’s behavior are indicative of bad faith. In this case, Respondent has registered a domain name composed of a trademark, a term descriptive of the goods provided under the trademark, and a generic term (i.e., “shop”). The Panel is of the opinion that bad faith is present regardless of whether the use of the domain name has been active or passive. As noted above, a simple Internet search for “Dr. Martens” reveals extensive use and promotion of the mark by Complainants’ for Complainants’ goods. Further, a simple Internet search for “Dr. Martens boot” illustrates extensive use of Complainants’ trademark for these products and indicates that registration and use of the disputed domain name has the potential to divert consumers from Complainants’ business activities and Complainants’ legitimate channels of trade.
Having considered the Complaint and related materials, the Panel finds it difficult to imagine a scenario where Respondent’s use of the domain name could coexist with Complainants’ DR. MARTENS trademark without consumer confusion given the wide use of Complainants’ DR. MARTENS trademark for boots. Furthermore, Respondent’s lack of any legitimate commercial or fair use of the domain name and lack of participation in this proceeding support a finding in Complainants’ favor. This Panel notes that prior UDRP panels have found for complainants in similar scenarios involving passive domain names. See, e.g., Pizza Hut, Inc. v. RJ, Inc., WIPO Case No. D2000-0939 (finding bad faith given that respondent had not made, nor taken any preparatory steps to make, any legitimate commercial or fair use of the domain name) and Harrods Limited v. Surrinder Gill, WIPO Case No. D2003-0243 (finding bad faith, noting that it was difficult to see how the trademark could have been registered and used in good faith given its reputation).
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 <drmartensbootshop.com> be transferred to Complainants.
Kimberley Chen Nobles
Dated: May 30, 2012