WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
“Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. Sun Li
Case No. D2012-0770
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 Sun Li of Tianzhu, Guizhou, China.
2. The Domain Name and Registrar
The disputed domain name <kaufendrmartens.com> is registered with Bizcn.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 13, 2012. On April 16, 2012, the Center transmitted by email to Bizcn.com, Inc. a request for registrar verification in connection with the disputed domain name. On April 20, 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 April 23, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On April 24, 2012, the Complainants confirmed its request that English be the language of proceeding. The Respondent did not comment on the language of proceedings 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 May 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 22, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 25, 2012.
The Center appointed Colin Yee Cheng Ong as the sole panelist in this matter on June 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.
4. Factual Background
4.1 The Complainants have provided evidence to substantiate its claim that “Dr. Martens” is a famous international brand for footwear, clothing and accessories which is particularly known for its distinctive shoes and boots. Dr. Martens footwear was first sold in the late 1950’s and it is now available for sale, together with clothing and accessories at retailers throughout the world as well as online at the Complainants’ website, located at the domain name “www.docmarten.com”.
4.2 The Complainants have provided further evidence that it is the owner of the following trademarks:
Community Trade Mark CTM 59147 DR. MARTENS of 1 April 1996, registered for various goods, mainly for footwear and clothing in class 25, as well as retail services in class 35;
Canadian Trademark No. 420485 DR. MARTENS of 17 December 1990, mainly for footwear and clothing in class 25;
Canadian Trademark No. 625884 DR. MARTENS of 25 June 2002 mainly for retail services in the field of footwear and clothing in class 35;
US Trademark No. 1454323 DR. MARTENS of 9 June 1983 for footwear in class 25;
US Trademark No. 1798791 DR. MARTENS of 14 March 1990 for footwear in class 25;
US Trademark No. 2838397 DR. MARTENS of 26 June 2002 for retail services in the field of footwear and clothing in class 35;
International Registration No. 575311 DR. MARTENS of 18 July 1991, registered also in China for footwear in class 25.
5. Parties’ Contentions
5.1 The Complainants contend that the disputed domain name <kaufendrmartens.com> is confusingly similar to its own trademark and website at “www.docmarten.com” for several reasons:
(i) The disputed domain name <kaufendrmartens.com> is phonetically similar to the Complainants’ trademarks.
(ii) The various trademarks “Dr. Martens” are identical with “drmartens” with respect to all their letters. The Complainant submits that only the period and space between “Dr” and “Martens” has been omitted but that this omission is not sufficient to distinguish between “Dr. Martens” and “drmartens”.
(iii) “Dr. Martens” and “drmartens” are identical with respect to their phonetics, writings and meaning. “Dr.” and “Dr” are common abbreviations for “doctor” in many countries worldwide. “Dr. Martens” will be pronounced as “Doctor Martens” which enhances the phonetic similarity to “drmartens” which is equally pronounced as “Doctor Martens”.
(iv) The further element “kaufen” (German word for “buy”) is a clearly descriptive element without distinctive meaning. The contested domain name is a clear combination of the only characterizing element “Dr. Martens” and a descriptive indication which is not in the position to avoid a high risk of confusion.
5.2 The Complainants contend that the Respondent has no rights or legitimate interests in the Domain Name for the following reasons:
(i) The Respondent is using the disputed domain name <kaufendrmartens.com> to host a parked 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 trademark owners.
(ii) By using the 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 when this is not the case. The Respondent is making false representations that he and/or his website have a sponsorship, approval or association with the original “Dr. Martens” trademark owners/licensees which is not the case. The Respondent is passing off the trademark owners’ goodwill and reputation in the “Dr. Martens” trademarks and the “Dr. Martens” name
(iii) The Respondent is making an illegitimate commercial and unfair use of the disputed domain name <kaufendrmartens.com> with the clear intention for commercial gain misleading to divert consumers and to tarnish the trademark and service marks “Dr. Martens”.
(iv) From the facts provided above, nothing seems to indicate that the Respondent has any rights or legitimate interests in respect of the disputed domain name nor any legitimate interest. The Respondent has no connection or affiliation with the Complainants and has not been authorized by the Complainants to register and use its trademark or to seek registration of any domain name incorporating said mark.
5.3 The Complainant, lastly, contends that the Domain Name was registered and is being used in bad faith for the following reasons:
(i) The Complainants allege that the Respondent has registered the disputed domain name in bad faith because the Respondent must have knowledge of the Complainants’ rights in the DR. MARTENS trademarks at the moment it registered the disputed domain name, since the Complainants’ trademarks are widely and well-known trademarks. The Respondent’s awareness of the Complainants’ trademark rights at the time of registration suggest opportunistic bad faith registration
(ii) The Respondent is linking the disputed domain name with unauthorized active websites which are selling competitors’ and Dr. Martens footwear without being authorized or approved by the trademarks’ owners or their licensees. This is a clear indication that the Respondent is intentionally attempting to attract Internet users for commercial gain. By doing so, the Respondent is creating a likelihood of confusion with the Complainants’ trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. It is more than likely that the Respondent is profiting of the goodwill associated with the Complainants’ trademark by accruing click-through fees for each redirected and confused Internet user.
The Complainants request a decision that the disputed Domain Name be transferred to them.
5.4 The Respondent did not provide any response or participate in this hearing.
6. Discussion and Findings
6.1 The Complaint was filed in the English language. On April 23, 2012, the Center transmitted by email to the parties in both Chinese and English regarding the language of proceedings. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Center has been informed by the concerned registrar that the language of the registration agreement for the disputed domain name is Chinese. Although the Chinese language is the language of the registration agreement for the disputed domain name, the Complainants asserted their request on April 24, 2012 that that English should be the language of proceedings. According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of paragraph 11 of the Rules is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.
6.2 Had this been a truly contested matter, a respondent may have expected a panel to rule that the proceedings take place in Chinese, in strict adherence to paragraph 11 of the Rules. However, in the present case, considering the composition of the disputed domain name and the Panel’s assessment of the unique circumstances of the case, namely that it would unduly delay the case and add expenses also given that the website at the disputed domain name is in German with some English words, bearing in mind its broad powers given to the Panel by paragraph 11(a) of the Rules, and bearing in mind the fact that the Respondent did not attempt to contest these proceedings, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of administrative proceeding in this case.
6.3 The Panel finds that the proceedings have been conducted in accordance with the Rules and the Policy. The procedural history of this case raises the question as to whether the Respondent has received notice of this proceeding. Having gone through the series of communications as set out above under the section on procedural history, the Panel concludes that the Center has notified the Respondent of this proceeding and has discharged its responsibility under paragraph 2(a) of the Rules. The Panel finds that the proceedings have been conducted in accordance with the Rules and the Policy. The Panel has reviewed the Complaint together with its annexes and, in the light of this material, the Panel finds as set out below. This Panel does not find any exceptional circumstances pursuant to paragraph 5(e) of the Rules so as to prevent this Panel determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.4 The Respondent has been accorded with the opportunity to provide submissions and evidence to dispute the claims of the Complainant. Some previous UDRP panels have suggested that in certain circumstances if the respondent chooses not to present any such evidence, an inference may be made that such evidence would not have been favorable to the respondent, or that he accepts the claims of the complainant, or even that he does not wish to respond or defend his perceived interest in the trademark. However, this Panel respectfully views that any such adverse inference is not conclusive at all and the Complainant would still be obliged to prove his case in accordance with the Policy. The burden of proof falls upon and remains on the Complainants. In such case of silence by the Respondent, the Complainants shall then continue with their case and shall have to prove the three elements that are required by the Policy without opposition than the Complainant’s own ability to explain them. (See PRL USA Holdings, Inc. v. Yan Shif, WIPO Case No. D2006-0700).
6.5 Under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the panel “shall draw such inferences there from as it considers appropriate”. Therefore, in a case where a respondent fails to put in a response, a panel may draw negative inferences from the respondent’s default (see paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)). Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects as set out in paragraph 4(a) of the Policy (see PRL USA Holdings, Inc. v. Yan Shif, supra). Namely, the Complainant must prove that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
6.6 Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. In line with such provision, the Complainants must prove two limbs, i.e., that they hold the trademark or service mark right; and that the disputed domain name is identical with or confusingly similar to their trademark or service mark. The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the domain name’s use or other marketing factors, usually considered in trademark infringement (see, for example, Ebay Inc. v. Wangming, WIPO Case No. D2006-1107).
6.7 The Complainant has appended to the Complaint a list of registered trademarks and a registered domain name that incorporates the trademark DR. MARTENS i.e. <docmarten.com>. It is quite clear that the Complainants are the legitimate owner of these trademarks and the domain name. The Respondent’s registration consists of the use of the Complainants’ trademark DR. MARTENS causes confusing similarity. The addition of the word “kaufen” does not create enough distinguishing capacity in the context of the domain name and does not alter the value of the trademarks DR. MARTENS represented in the domain name. Given this, the Panel has little difficulty in concluding that the disputed domain name is confusing similar to a number of trademarks in which the Complainant has rights.
B. Rights or Legitimate Interests
6.8 The Panel accepts that the Complainants have satisfied it in providing evidence showing that the trademarks for DR. MARTENS are well-known throughout the world, are registered and present in China, where the Respondent is located. At the heart of the Complaint is the Complainants’ contention that the Respondent has taken the trademark of the Complainants with a view to attracting Internet users to its website to intentionally link its domain name with DR. MARTENS trademark. The Panel accepts that such activity clearly does not provide the Respondent with a legitimate interest in the disputed domain name.
6.9 According to paragraph 4(a)(ii) of the Policy, the Complainants have to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name. However, it is the prevailing view among panelists that where a complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show, inter alia, one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack a right or legitimate interest in the domain name.
6.10 As previously held by other UDRP panels, “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”. (See eBay Inc. v. Akram Mehmood, WIPO Case No. DAE2007-0001). As another UDRP panel held in the case of Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Varentinuo inc. reg by sopao.com, WIPO Case No. D2008-0186, if a respondent wants to argue that it has a right or legitimate interest in a domain name on this basis, it is then for the respondent to positively advance that case and to bring forward evidence in support (see paragraph 6.16 of that decision).
6.11 The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the disputed domain name. There is no evidence on the record of this proceeding to suggest that Respondent has been commonly known by the disputed domain name, or that Respondent has made noncommercial or fair use of the disputed domain name. The Respondent has also not used the disputed domain name in connection with a bona fide offering of goods or services. The Panel thus finds that Complainant has made a prima facie case unrebutted by the Respondent showing that the Respondent has no rights or legitimate interests in the disputed domain name.
6.12 Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.
C. Registered and Used in Bad Faith
6.13 The Complainant has rightly pointed out the fact that the Respondent has registered the disputed domain name in bad faith because it was registered with the knowledge of the Complainants’ rights in the DR. MARTENS trademark and earlier registered domain name.
6.14 The Complainants then submitted that the selection of the disputed domain name, which wholly incorporates the DR. MARTENS trademark was done in bad faith. The Panel accepts this line of submission and accepts the contention that the Respondent registered the disputed domain name in the knowledge of the Complainants’ business and its use of the DR. MARTENS trademark. The Panel accepts the Complainants’ submission that the Respondent is using the disputed domain name to intentionally gain commercially by attracting internet users to a website, by creating a likelihood of confusion with the Complainant’s mark
6.15 Paragraph 4(b) of the Policy provides a list of examples of evidence of bad faith registration and use. Paragraph 4(b)(iv) refers to use of a domain name to intentionally attempt to attract for commercial gain Internet users to a website by creating a likelihood of confusion with the Complainant’s mark as to the source of a website.
6.16 Given that the Respondent has failed to show (for the reasons set out under the heading Rights and Legitimate Interests above) that it was using the disputed domain name genuinely for its own goods or services and that it has also failed to disclose on the site the true relationship between it and the Complainant, the Panel concludes that the Respondent in this case did intentionally attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. The Panel accepts the submission that the Respondent is intentionally attempting for a commercial purpose to attract internet users to the Respondent’s website, The activities of the Respondent, therefore, fall within the scope of paragraph 4(b)(iv) of the Policy.
6.17 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy. This is sufficient to dispose of this matter in favour of the Complainant. The Panel has been able to conclude that the Respondent registered and used the disputed domain name in bad faith for the above reasons.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <kaufendrmartens.com> be transferred to the Complainants.
Dr Colin Yee Cheng Ong
Date: July 13, 2012