World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

“Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. Zhang Shao

Case No. D2012-0631

1. The Parties

The Complainants are “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH of Gräfelfing, Germany and Seeshaupt, Germany, represented by Beetz & Partner, Germany.

The Respondent is Zhang Shao of Jiangxi, China.

2. The Domain Name and Registrar

The disputed domain name <drmartensale.com> is registered with Bizcn.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2012. On March 26, 2012, the Center transmitted by email to Bizcn.com, Inc. a request for registrar verification in connection with the disputed domain name. On March 27, 2012, Bizcn.com, Inc. 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 27, 2012, the Center transmitted an email to the Parties in both the Chinese and English language regarding the language of proceedings. On March 28, 2012, the Complainants confirmed their request that English be the language of proceeding. The Respondent did not comment on the language of 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 the Respondent of the Complaint, and the proceedings commenced on April 3, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 23, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 24, 2012.

The Center appointed Jonathan Agmon as the sole panelist in this matter on May 3, 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 “Dr. Martens” International Trading GmbH and “Dr. Martens” Marketing GmbH, both from Germany. The Complainants main business is marketing footwear, clothing and accessories under the brand DR. MARTENS. The Complainants’ products are offered for sale throughout the world in retail stores as well as in online stores.

The Complainants own multiple worldwide trademark registrations for the mark DR. MARTENS. For example: Community trademark registration No. 59147 - DR. MARTENS, with the registration date of March 3, 1999; Australian trademark No. 500799 - DR. MARTENS, with the registration date of December 5, 1988; Canadian Trademark No. 420485 - DR. MARTENS, with the registration date of December 17, 1990; Canadian trademark No. 625884 - DR. MARTENS, with the registration date of November 18, 2004; United States trademark No. 1454323 - DR. MARTENS, with the registration date of August 25, 1987; United States trademark No. 1798791- DR. MARTENS, with the registration date of October 12, 1993; International trademark No. 575311 - DR. MARTENS, with the registration date of July 18, 1991, designated to China, Egypt, Croatia, Russia and others.

The Complainants have also developed their presence on the Internet and are the registrants of the domain names <docmartens.com>, <drmartens.com> and many others.

The disputed domain name <drmartensale.com> was registered by the Respondent on December 18, 2011.

The disputed domain name currently resolves to an inactive webpage displaying an error page.

5. Parties’ Contentions

A. Complainant

The Complainants argue that the DR. MARTENS mark is a well-recognized trademark around the world.

The Complainants further argue the disputed domain name is phonetically similar to their widely known DR. MARTENS trademarks.

The Complainants further argue that the disputed domain name consists of two elements – “drmarten” and "sale". The Complainants contend that the element “sale” is descriptive and is not sufficient to prevent confusing similarity with the Complainants' trademark.

The Complainants further argue that the Respondent has been using the disputed domain name in order to host a parked website containing sponsored links, among others, for unauthorized websites that are offering footwear products bearing the Complainants’ DR. MARTENS trademark.

The Complainants further argue that the Respondent is passing off the Complainants’ goodwill and reputation in their trademark.

The Complainants further argue that the Respondent may lead consumers to believe it has a sponsorship, affiliation, approval or association with the Complainants.

The Complainants further argue that the Respondent is making an illegitimate commercial use of the disputed domain name.

The Complainants further argue that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the Respondent is not related in any way to the Complainants' business.

The Complainants further argue that the Respondent acted in bad faith when using the disputed domain name to intentionally attract Internet users for commercial gain, by creating a likelihood of confusion with the Complainants’ trademarks.

The Complainants further argue that the Respondent must have had knowledge of their DR. MARTENS trademarks at the time of the registration of the disputed domain name, since their trademark is a well-known trademark.

For all of the above reasons, the Complainants request the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

A. Procedural Issue – Language of the Proceedings

Paragraph 11(a) of the Rules provides that:

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

The language of the Registration Agreement for the disputed domain name is Chinese.

The Complainants requested that the language of proceedings should be English.

The Panel cites the following with approval:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

Upon deciding on the language of the proceeding, the Panel takes the following into consideration:

a) The disputed domain name <drmartensale.com> consists of the English word “sale”;

b) The website under the disputed domain name used to resolve to an online marketplace, which operated using the English language;

c) The Respondent did not object to the Complainants’ request that English be the language of proceedings.

Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for these proceedings to be conducted in English and for its Decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding should be English.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainants to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.

The Complainants own multiple worldwide trademark registrations for the mark DR. MARTENS. For example: Community trademark registration No. 59147 - DR. MARTENS, with the registration date of March 3, 1999; Australian trademark No. 500799 - DR. MARTENS, with the registration date of December 5, 1988; Canadian Trademark No. 420485 - DR. MARTENS, with the registration date of December 17, 1990; Canadian trademark No. 625884 - DR. MARTENS, with the registration date of November 18, 2004; United States trademark No. 1454323 - DR. MARTENS, with the registration date of August 25, 1987; United States trademark No. 1798791- DR. MARTENS, with the registration date of October 12, 1993; International trademark No. 575311 - DR. MARTENS, with the registration date of July 18, 1991, designated to China, Egypt, Croatia, Russia and others.

Also, the Complainants’ rights in the DR. MARTENS trademark have been established in numerous UDRP decisions (see e.g.: Dr. Martens v. Above.com, WIPO Case No. D2009-1253; Dr. Martens v. PrivacyOritect.org, WIPO Case No. D2010-1342 and Dr. Martens v. Sandy Oakes, WIPO Case No. D2012-0341).

The disputed domain name <drmartensale.com> integrates the Complainants’ DR. MARTENS trademark practically in its entirety, as a dominant element.

The disputed domain name differs from the DR. MARTENS trademark by the omittance of the period after the “DR” element of the Complainants trademark, the additional term “sale”, which conjoins the letter "s" from the “drmartens” element, and the gTLD suffix “.com”.

The additional term “sale” does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainants’ DR. MARTENS trademark as “sale” is a generic English word that is used in the Complainants field of business. It is clear that the most prominent element in the disputed domain name is the term “drmartens”, which this Panel finds confusingly similar to the Complainants’ DR. MARTENS trademark.

Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505). See also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name <redbull-jp.net> is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd., WIPO Case No. D2006-0909).

Indeed, “[t]he mere addition of a descriptive term to an identical trademark has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark” (Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709).

The addition of the gTLD “.com” to the disputed domain name does not avoid confusing similarity (See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Thus, the gTLD “.com” is without legal significance since the use of a gTLD is technically required to operate the domain name.

Consequently, the Panel finds that the Complainants have shown that the disputed domain name is confusingly similar to the trademarks in which the Complainants have rights.

C. Rights or Legitimate Interests

Once the Complainants establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

In the present case, the Complainants have demonstrated that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.

The Panel finds that the Complainants have established a prima facie case in this regard, inter alia due to the fact that the Complainants have not licensed or otherwise permitted the Respondent to use the DR. MARTENS trademark, or a variation thereof.

The Respondent did not submit a Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainants’ prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

D. Registered and Used in Bad Faith

The Complainants must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that evidence prove bad faith under paragraph 4(a)(iii).

The Complainants submitted evidence, which shows that the Respondent registered the disputed domain name after the Complainants registered their trademark. According to the evidence filed by the Complainants and the trademark search performed by the Panel, the Complainants own a registration for the DR. MARTENS trademark since at least the year 1987. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainants, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

The Complainants also provided evidence to demonstrate their trademark’s vast goodwill. The Panel cites the following with approval: “The Respondent’s selection of the disputed domain name, which wholly incorporates the Trade Mark, cannot be a coincidence… Given the fame of the Trade Mark, there is no other conceivable interpretation of the Respondent’s registration and use of the disputed domain name other than that of bad faith” (Swarovski Aktiengesellschaft v. Zhang Yulin, WIPO Case No. D2009-0947). It is therefore unlikely that the Respondent had no knowledge of the Complainants upon registering the disputed domain name.

Indeed, “when a domain name is so obviously connected with a Complainant, its very use by a registrant with no connection to the Complainant suggests ‘opportunistic’ bad faith”. (Tata Sons Limited v. TATA Telecom Inc/Tata-telecom.com, Mr. Singh, WIPO Case No. D2009-0671).

Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a Respondent, if by using the domain name it had intentionally attempted to attract, for commercial gain, Internet users to the websites or other on-line locations to which the disputed domain name resolves to, by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the domain name resolves.

The Complainants submitted evidence proving that the Respondent was using the disputed domain name to direct Internet users to a webpage which offered for sale footwear products bearing the Complainants’ trademark.

The Respondent’s use of the Complainants’ mark to promote goods similar or identical to the goods being offered by the Complainants is clear evidence, in the Panel’s view, that the Respondent registered and is using the disputed domain name with knowledge of the Complainants and of the Complainants’ use of their widely known DR. MARTENS trademark and intended to trade off the value of these. The Respondent’s actions therefore constitute bad faith. (See Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”.

Also, the disputed domain name is confusingly similar to the Complainants’ trademark. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainants’ site to the Respondent’s site” (see Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.

Finally, based on the evidence presented to the Panel, taking into consideration the goodwill the Complainants have achieved in their trademark, the late registration of the disputed domain name and the non-legitimate commercial use of the disputed domain name, the Panel draws the inference that the disputed domain name was registered and used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainants have met their burden under paragraph 4(a)(iii) of the Policy.

7. Decision

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, <drmartensale.com> be transferred to the Complainants.

Jonathan Agmon
Sole Panelist
Dated: May 16, 2012

 

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