WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
"Dr. Martens" International Trading GmbH and "Dr. Maertens" Marketing GmbH v. Zhong Fu
Case No. D2012-0698
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 Zhong Fu of Dengong, Shanxi, China.
2. The Domain Name and Registrar
The Disputed Domain Name <drmartenshoesale.com> is registered with Web Commerce Communications Limited dba WebNic.cc.of Kuala Lumpur, Malaysia (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2012. On the same day the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 3, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing his 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 used all available means to notify the Respondent of the Complaint. Although physical delivery and other email and fax notifications failed and the physical delivery package was abandoned, one email and one fax notification was successfully transmitted to contact details associated with the Respondent. By virtue of paragraph 2(g) of the Rules time started to run on April 16, 2012 being the day that the Center transmitted email notice to the email address of the Respondent and the Administrative contact shown in the WhoIs entry and as advised by the Registrar in its verification response. In accordance with the Rules, paragraph 5(a), the due date for Response was May 6, 2012.
On April 18, 2012, the Center received an email communication in the Chinese language from the email address of the technical contact as shown in the WhoIs entry for the Disputed Domain Name. That communication advised the Center of an additional email address to use to contact the Respondent, being different to the email address already used by the Center on April 16, 2012 and which was the subject of a successful delivery notification. The Center nevertheless forwarded the Complaint material to the Respondent on April 18, 2012 using the additional email address. The Respondent did not submit any formal response by May 6, 2012 and had still not submitted any response as at the date of this decision. The Center notified the parties of the proceeding on May 7, 2012.
The Center appointed Philip N. Argy as the sole panelist in this matter on May 9, 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.
All other administrative requirements appear to have been satisfied.
4. Factual Background
The Complainants are joint owners of a large number of registered trademarks for DR MARTENS in many countries. The first Complainant is also the registered owner of similar marks in different countries. The founders of the Complainants were the original registered owners of the trademarks for DR MARTENS and variants such as DOC MARTENS in various jurisdictions. There is an extensive global reputation in DR MARTENS and its variants in association with shoes and accessories, and this inures to the Complainants.
Whilst the majority of the trademark registrations relied upon by the Complainants are relatively recent (mid 1980s and 1990s) there is also evidence of use since the 1950s of DR MARTENS as a brand of shoes and related products being sold by the Complainants’ founders and predecessors in business.
The Disputed Domain Name was first registered on December 20, 2011.
5. Parties’ Contentions
Identical or Confusingly Similar
The Complainants assert that the Disputed Domain Name “is identical respectively [sic] confusingly similar to various trademark registrations in which the Complainants have rights”.
The Disputed Domain Name is a combination of the descriptive element “shoesale” and the characterizing name “drmarten”. With respect to the fact that the element “shoesale” is merely and clearly descriptive, consumers will pay more attention to the first characterizing element “drmarten”. The fact that the secondary element is corroborative of the “shoe” association of the Disputed Domain Name with the Complainants’ marks, consumer confusion is enhanced rather than dispelled.
The various DR MARTENS trademarks are almost identical with “drmarten”. “Dr. Martens” is almost identical to “drmarten”. The omission of the letter "s" is not sufficient to avoid a likelihood of confusion.
Rights or legitimate Interests
The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Respondent is pointing the Disputed Domain Name to a parking website which features links to advertisements for the sale of footwear (including “Dr. Martens” brand footwear) on websites which are not authorized or approved by the Complainants as well as on websites operated by competitors of the Complainants.
By using the Disputed Domain Name, the Respondent is likely to mislead and deceive consumers into believing that he has a sponsorship, affiliation or approval with “the original DR MARTENS trademark owners/licensees/customers” when this is not the case. The Respondent is clearly making false representations that it and/or its website have a sponsorship, approval or association with the original DR MARTENS trademark owners/licensees/customers which is not the case. The Respondent is passing off the trademark owners’ goodwill and reputation in the DR MARTENS trademark and the “Dr. Martens” name (see: Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Above.com Domain Privacy/Transure Enterprise Ltd, WIPO Case No. D2009-1253).
The Respondent is making an illegitimate commercial and unfair use of the Disputed Domain Name with the clear intention for commercial gain misleadingly to divert consumers and to tarnish the DR MARTENS trademark and service marks .
Nothing seems to indicate that the Respondent has any rights or interests in respect of the Disputed Domain Name nor any legitimate interests.
Registered and used in bad Faith
The Disputed Domain Name was registered and is being used in bad faith.
By using the Disputed Domain Name, the Respondent intentionally attempted to attract for commercial gain Internet users to his or other online locations, by creating the 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 of a product or service on the Respondent’s website or location. The Respondent is linking the Disputed Domain Name with unauthorized websites which are selling competitors’ and “Dr. Martens” branded footwear without being authorized or approved by the trademarks’ owners or their licensees. It is clear that the Respondent must have had knowledge of the Complainants’ rights in the DR MARTENS trademarks when he registered the Disputed Domain Name, since the Complainants’ trademarks are widely and well-known trademarks, and the Respondent has combined it in the Disputed Domain Name with words (“shoesale”) which are descriptive of the Complainants’ products. The Respondent’s awareness of the Complainants’ trademark rights at the time of registration suggest opportunistic bad faith registration (relying, inter alia, on BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the domain name, because widespread and long-standing advertisement and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix suggested knowledge of the complainant’s rights in the trademarks).
Since the Respondent must have had knowledge of the Complainants’ rights in the DR MARTENS trademarks when it registered the Disputed Domain Name, and since the Respondent has no rights or legitimate interests in the Disputed Domain Name, the Disputed Domain Name was registered in bad faith (relying also on Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Above.com Domain Privacy/Transure Enterprise Ltd, supra).
The Respondent did not reply to the Complainant’s contentions.
6. Procedural Issue: Requests to transfer in cases of joint or multiple complainants
The Complaint specifies as the remedy sought that the Disputed Domain Name be transferred to “the Complainants”. In "Dr. Martens" International Trading GmbH, "Dr. Maertens" Marketing GmbH v. Posers/Philip Cox, WIPO Case No. D2011-1142, the UDRP panel reviewed the state of UDRP decisions in such situations in the following passage:
“The practice of gTLD domain name registration is generally that only one entity is listed as the registrant of a domain name. Where a complaint is brought under the Policy by multiple complainants, the remedy sought by the complainants is transfer of the disputed domain name(s), and the complaint succeeds, the issue arises as to which of the complainants the panel should order the transfer of the disputed domain name(s). It would seem that, as a matter of principle, a panel should only order transfer of a disputed domain name to a complainant which, in its individual capacity, has an entitlement to the trademark(s) on which the complaint in relation to that domain name was based. Thus, in a case brought by multiple complainants where only one of the complainants has entitlement to the trademark(s) on which the complaint is based, the panel should order transfer of the domain name only to the complainant that has the trademark entitlement. This is the approach that has been adopted in cases under the Policy from the very beginning of the Policy – see, e.g., The Avenue, Inc. and United Retail Incorporated v. Chris Guirguis doing business as Lighthouse Web Design and/or Cannibal, and Sam Guirguis, WIPO Case No. D2000-0013 (where first complainant was the trademark owner and second complainant a licensee of the first complainant, the panel ordered transfer of the disputed domain name to first complainant); and NFL Properties, Inc. et al. v. Rusty Rahe, WIPO Case No. D2000-0128 (where multiple complainants owned various trademarks individually, the panel ordered transfer of disputed domain names to the complainant which owned the trademark to which the domain names were confusingly similar).
But what about a case brought by multiple complainants where more than one of the complainants has entitlement to the trademark(s) on which the complaint is based (such as, e.g., where each of the complainants holds a registration for the relevant trademark)? In this situation, it would seem appropriate, as a matter of principle, for a panel to order transfer of the disputed domain name to any of the complainants having an entitlement to the relevant trademark. But, as a matter of practice, only one of the complainants can be listed as the registrant of the disputed domain name. To which one of the complainants should transfer be ordered?
It seems … that the answer to this question is to be decided by the complainants, not the panel. Given that the complainants have chosen to bring a joint action under the Policy, it seems appropriate that the complainants should be left to determine which of them is to be listed as the registrant in the event that the joint action is successful. Where the complainants have specified in the complaint to which of them transfer of the disputed domain name is requested, the panel should make the order accordingly (an approach that was adopted in, inter alia, Westfield Corporation, Inc and Westfield Limited v. Graeme Michael Hobbs (Dynamic Marketing Consultants), WIPO Case No. D2000-0227). Where the complainants have not specified this in the complaint, it should generally be left to them to inform the registrar of their wishes (this being the approach adopted in, inter alia, Zee Telefilms Ltd. and Wimpole Holdings Ltd. (presently known as Zee Multimedia Worldwide Ltd.) v. Rahul Dholakia and Oznic.com, WIPO Case No. D2001-0624; and Asprey & Garrard Limited and Garrard Holdings Limited v. www.24carat.co.uk/domainnames.html, WIPO Case No. D2001-1501).
The record in this Complaint shows that both Complainants hold, either singularly or jointly, various registrations for the trademark DR. MARTENS. The Complaint does not specify to which of the Complainants transfer of the disputed domain is requested. It follows that, in the event that this Complaint is successful, an order should be made for transfer of the disputed domain names to at least one of the Complainants – with the choice of which one to be determined by them.”
Although the Complaint in the present case asserts in summary form that the Complainants own various trademarks, it has annexed to it a large volume of material purportedly evidencing the Complainants’ rights in various trademarks. The relevance, arrangement and legibility of that material leaves a lot to be desired. For example, in relation to Australian trademark number 500799, there is a copy of a Certificate of Registration showing that the Complainants were joint registered owners of the DR MARTENS word mark in class 25 for footwear and the like, for a period of 10 years from December 8, 1998. That certificate is accompanied by two apparently identical copies of the original application dated December 5, 1988 in the joint names of Dr Funck and Dr Maertens, and a copy of a letter dated November 12, 1998 showing its registration for a further 10 years in the names of the Complainants, but no explanation of when or how the mark came to be assigned from the original applicants to the Complainants. Similar levels of documentation are provided for similar marks, some of which are in the joint names of the Complainants, others in the name of one only of the Complainants, and yet others describing the Complainants as a partnership. No explanation is provided to the Panel as to what of this material, the Complainants rely upon or how. In all some 58 pages of trademark registration evidence is provided for the Panel to digest and understand covering the history of more than 50 trademarks across a large number of jurisdictions (none of which include China). The Complaint then annexes a further 36 pages of material (some of which is almost illegible) apparently directed to establishing the renown of the DR MARTENS and DOC MARTENS trademarks.
The Policy requires only that a complainant demonstrate extant rights in a trademark. Whilst additional material may be relevant for the second and third limbs of the Policy to support submissions in relation to a respondent’s knowledge of a complainant and its reputation, the material furnished with the present Complaint was manifestly excessive, disorganized, poorly adapted to the particular case, and not in fact the subject of any directed submissions. The Panel infers that the Complainants’ representative has prepared similar material for innumerable complaints under the Policy and has simply annexed the bundle as a matter of course. Such conduct does not attract this Panel’s favor and should be discouraged.
Before the large volume of trademark material attached to the Complaint had been fully assimilated, the Panel issued an Administrative Panel Procedural Order No. 1 directing the Complainants to amend the Complaint so as to nominate which of them was to be the transferee of the Disputed Domain Name in the event the Complaint was upheld. This was done because the Panel disagrees with the approach taken by the panel in "Dr. Martens" International Trading GmbH, "Dr. Maertens" Marketing GmbH v. Posers/Philip Cox, supra. If complainants are not jointly entitled to at least one of the relied-upon trademarks for the first limb of the Policy, then this Panel’s view is that the proper course is for the complaint to be amended so that any transfer sought is to only one of the complainants. An order transferring a domain name to multiple complainants and then leaving it to them to nominate to the registrar which of them is to be entered on the register is not a course which this Panel would regard as appropriate, and leaves the potential for confusion if the contemplated nomination is not made.
After the Panel had had an opportunity to absorb the effect of the evidence submitted, it became apparent that, for the most part, the trademarks relied upon by the Complainants are indeed owned by them jointly. Accordingly, the Panel revoked the Administrative Panel Procedural Order No. 1 and accepts that, if the Complaint is upheld, the Complainants are entitled to be jointly registered as transferees of the Disputed Domain Name.
7. Discussion and Findings
The Complainants bear the onus of proof of each of the limbs of the Policy, and that onus is unaffected by the Respondent’s failure to respond to the Complaint.
A. Identical or Confusingly Similar
For the reasons given by the Complainants, the use of “shoesale” appended to the singular form “drmarten” enhances the confusing similarity rather than dispelling it. Although neither party raised it, the Panel has considered whether the Disputed Domain Name could be construed as the DR MARTENS trademark suffixed with “hoesale”. A hoe, being very different from a shoe, could conceivably have conferred sufficient distinguishing power on the Disputed Domain Name for it to cease being confusingly similar to the DR MARTENS trademark. The Panel is satisfied that the global reputation of the DR MARTENS trademark and its strong association with shoes would preclude that interpretation from being controlling, even though it is theoretically possible and might have afforded a respondent selling ground breaking implements a plausible haven. Even “hoesale” could, in juxtaposition with “Dr Martens”, be confused as “wholesale”, and thus not afford sufficient distinguishing power.
The Panel finds that the Disputed Domain Name is confusingly similar to those DR MARTENS trademarks in which the Complainants own joint rights.
B. Rights or Legitimate Interests
Once a complainant makes out a case under the first element of the Policy and combines it with an asserted lack of authority, rights or legitimate interests, then the onus shifts to a respondent to at least make some showing if it is to avoid an adverse finding on the second element. Absent a compelling entitlement that is apparent without any suggestion to that effect from a respondent, a panel will inevitably find against a respondent on this limb. Here the Complainants have persuasively demonstrated that the Respondent has used the Disputed Domain Name to generate click through revenue solely by leveraging the goodwill in the Complainants’’ trademarks, and has done so without their permission and without any plausible legitimate reason.
The Panel is less ready to accept the Complainants’ submission that the “Respondent is … making false representations that he and/or his website have a sponsorship, approval or association with the original DR MARTENS “Dr. Martens” trademark owners/licensees/customers which is not the case”. It is not clear to the Panel why an allusion to the original registrants of the trademarks is relevant but the evidence does not demonstrate any knowledge on the part of the Respondent as to the antecedents of the Complainants.
The Panel nevertheless comfortably finds the second limb of the Policy made out.
C. Registered and Used in Bad Faith
After more than 50 years’ use in relation to shoes around the world, there would be few people who had not heard of DR MARTENS or DOC MARTENS brand shoes. It is hard for the Panel to conceive of any reason the Respondent might choose “shoesale” as a suffix to the Complainants’ trademark to form the Disputed Domain Name other than the most obvious explanation: the Respondent knew of the Complainants’ trademark and the goods with which it was associated.
Having determined that the Respondent has no rights or legitimate interests in the Complainants’ trademark, and the Respondent having registered the Disputed Domain Name so recently, the Panel finds that the Disputed Domain Name was registered in bad faith with knowledge of the Complainants’ brand and reputation. As the Disputed Domain Name resolves to a parking site that generates click-through revenue for links to sites that promote shoes under both the Complainants’ brand and the brands of their competitors (or at least did when the Complaint was prepared), the Panel is satisfied that the Disputed Domain Name is also being used in bad faith.
Accordingly, the Complainants have made out the third element 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 <drmartenshoesale.com> be transferred to the Complainants jointly.
Philip N. Argy
Dated: May 22, 2012