WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
“Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Shanbei Fu a.k.a. fushanbei
Case No. D2012-0910
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 Shanbei Fu a.k.a. fushanbei of Xiangxiang, Hunan, China.
2. The Domain Name and Registrar
The disputed domain name <nyadrmartens.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 April 30, 2012. On April 30, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 2, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On May 8, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On May 9, 2012, the Complainants confirmed their 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 14, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 3, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 5, 2012.
The Center appointed C. K. Kwong as the sole panelist in this matter on June 26, 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 the owners of numerous trademarks consisting of or comprising the words “Dr. Martens” in a number of jurisdictions worldwide. These registrations include the following:
(a) International Trademark No. 575311 designating, inter alia, China, for the word mark DR. MARTENS registered on July 18, 1991 and renewed up to July 18, 2021 in respect of certain goods under Class 25 including footwear;
(b) Community Trademark Registration No. 00059147 for the word mark DR. MARTENS which was registered on March 3, 1999 in respect of certain goods and services under Classes 14, 16, 18, 25, 35 and 37 of the Nice Classification which has been renewed up to April 1, 2016. (Annex 3 to the Complaint).
The uncontradicted evidence produced by the Complainants show that the registration of their aforesaid DR. MARTENS mark occurred well over 20 years before the registration of the disputed domain name <nyadrmartens.com> on December 18, 2011.
The Complainants have also been selling their footwear, clothing and accessories online at the “Dr. Martens” website at “www.drmartens.com”. (Annex 4 to the Complaint).
Other than the particulars shown in the print out of the database searches conducted by the Complainants of the WhoIs database (as provided in Annexes 1 and 2 to the Complaint), the website to which the disputed domain name resolves as provided in Annex 7 to the Complaint, and the WhoIs database search results and the website visit record of May 14, 2012, there is no evidence in the case file concerning the background of the Respondent and its business.
5. Parties’ Contentions
The Complainants have made the following contentions:
The Complainants have rights in the trademark DR. MARTENS which is registered in many jurisdictions, including China. It is claimed that the mark DR. MARTENS is a famous international brand for footwear, clothing and accessories, particularly well-known for its distinctive shoes and boots, first sold in the late 1950s. Such Dr. Martens branded goods are available for sale at retail outlets throughout the world as well as online at the Dr. Martens website at “www.drmartens.com”.
The disputed domain name is a combination of (a) the distinctive mark DR. MARTENS in the slightly modified form of “drmartens” by changing the capital letter “D” to small letter “d” and removing the full stop and (b) the non-distinctive term “nya” which refers to the Arabic word often found in the Malaysian language Jawi or Japanese word for “meow” as shown in Annex 6 to the Complaint and which is merely descriptive. The disputed domain name is identical or confusingly similar to the Complainants’ DR. MARTENS trademark.
The Respondent has no rights or legitimate interests in the disputed domain name. The disputed domain name resolves to a parking site 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 as well as on websites belonging to the Complainants’ competitors. There is no sponsorship, approval or affiliation of the products and services offered on the website to which the disputed domain name resolves with the Complainants or their licencees. The Respondent is passing off the goodwill and reputation of the Complainants in their mark DR. MARTENS and is making an illegitimate commercial and unfair use of the disputed domain name with the intention of commercial gain by misleading and diverting consumers to the website to which the disputed domain name resolves.
The Complainants’ trademark DR. MARTENS is well-known and widely used. The registration of the disputed domain name was an opportunistic act done in bad faith. It was done with an attempt to attract, for commercial gain, Internet users to the website to which the disputed domain name resolves or other on-line location, by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of such website or location or of a product or service on such website or location. The Complainants’ trademark has been included in the disputed domain name in its entirety and the website to which the domain name resolves offer products similar to those marketed by the Complainants. The Respondent must have knowledge of the Complainants and their trademark DR. MARTENS at the time of registration of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Notice of Proceedings
The contact particulars of the Respondent and the disputed domain name were fully set out in the WhoIs search results provided in Annex 1 to the Complaint and the WhoIs database search results of May 14, 2012 as generated by the Center pursuant to its obligations under the Rules and Policy.
Such contact details also concur with those provided by the Registrar to the Center on May 2, 2012.
On May 14, 2012, the Center forwarded the Notification of Complaint and Commencement of Administrative Proceeding to the Respondent in accordance with the contact details by courier, facsimile and email with copies to the Registrar.
There were included in the case record copies of messages exchanged between DHL and the Center indicating that the address of the Respondent was incorrect and the telephone number did not exist, which indicated that the delivery by courier was unsuccessful. This is, however, beyond the control of the Center.
It is noted, however, that there was no undeliverable email notice shown in relation to the Center’s Notifications to Respondent by email to the email address as provided for the domain name registrant in respect of the disputed domain name.
In any case, the Panel finds that as long as the Complainants and the Center as the case may be have communicated with the Respondent using the available contact information, their respective obligations of such communications will be discharged under paragraph 2 of the Rules.
The Panel is satisfied that the Center has discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint and that the failure of the Respondent to furnish a reply is not due to any omission or inadequate communication by the Center.
B. Language of Proceedings
In response to the Center’s notification in English and Chinese of May 8, 2012 to both parties on the language of proceeding, the Complainant filed a request for English to be the language of this administrative proceeding on May 9, 2012.
Paragraph 11(a) of the Rules provides:
“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.
In support of its request that English be the language of the proceeding, the Complainant has inter alia argued that:
(a) The Registrar has knowledge of the English language;
(b) The contents of the website at “www.nyadrmartens.com” are in English.
The Panel has taken into consideration the above submissions and the fact that the Respondent has provided contact details to the Registrar in English.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties taking into account all relevant circumstances of the case including matters such as the parties abilities to understand and use of the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004 also Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
Taking all circumstances into account and in the absence of objections from the Respondent even after the Notification of Respondent Default as aforesaid, the Panel is satisfied 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 shall be English.
C. The Three Elements
In rendering its decision, the Panel must adjudicate the dispute in accordance with paragraph 15(a) of the Rules which provides that, “[t]he Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 14(b) of the Rules further provides that, “if a Party, in the absence of exceptional circumstances, does not comply with any provisions of, or requirement under these Rules or any requests from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”. Paragraph 5(e) of the Rules further provides that, “[i]f a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”.
The failure of the Respondent to respond does not automatically result in a favourable decision to the Complainant, which is specifically required under paragraph 4(a) of the Policy to establish each of the three elements as provided therein. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 and Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.
The said three elements are considered below.
1. Identical or Confusingly Similar
On the evidence available before the Panel, it has no hesitation in finding that the Complainants have rights in the trademark DR. MARTENS by reason of their trademark registrations as recited in Section 4 above.
Furthermore, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainants’ trademark DR. MARTENS despite the addition for the prefix “nya”, which according to the Complainants, refers to the Arabic word often found in the Malaysian language Jawi or Japanese word for “meow” as shown in Annex 6 to the Complaint. According to paragraph 4.5 of the WIPO Overview 2.0, the Panel may undertake limited factual research into matters of public record. There is also suggestion from the online Urban Dictionary that the word “nya” as a separate word as shown in Annex 7 to the Complaint, being an element embodied as a prefix in the disputed domain name, is a word which may also mean “hello” in English or used in indifference to mean both YES or No and it can also be a mix between No and Yea [see the meanings numbered 3, 5 and 6 at http://www.urbandictionary.com/define.php?term=nya].
The Panel finds the distinctive feature of the disputed domain is “drmartens”, being the sole and distinctive feature of the Complainant’s trademark. The Panel finds the element “nya” is not distinctive. It does not assist in distinguishing the disputed domain name from the Complainants’ mark.
2. Rights or Legitimate Interests
Previous UDRP panels have found it sufficient for the Complainant to establish a prima facie case showing that the Respondent has no rights or legitimate interests in respect of the domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Once such prima facie case is made, the burden will shift to the Respondent to prove that it has rights or legitimate interests in the disputed domain name.
In the present case, the Complainants have asserted registration and use of the registered trademark DR. MARTENS long prior to the Respondent’s registration of the disputed domain name <nyadrmartens.com> on December 18, 2011. The Complainants have confirmed that the Respondent is not a licensee or authorized seller of the Complaniants’ goods. The Respondent was not authorized to register or use the disputed domain name.
There is no explanation on the record as to how the dipsuted domain name was composed by the Respondent and why it was necessary for the Respondent to embody the term “drmartens” entirely in it.
There is also no evidence before the Panel to suggest that the Respondent is commonly known as <nyadrmartens.com>. The Panel notes that the name of the Registrant does not correspond in any way with the disputed domain name.
There is also no evidence available to demonstrate any bona fide offering of goods or services, legitimate noncommercial or fair use of the disputed domain name by the Respondent.
Even assuming for the purpose of argument, that the goods offered for sale on the website to which the disputed domain name resolves are genuine Dr. Martens goods, it does not provide in this Panel’s view the owner of such website the right to use the Complainants’ trademark in that website under the circumstances. Sanofi-Aventis v. DomainsByProxy.com and Ravikant Singh, WIPO Case No. D2007-0540.
The Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name.
3. Registered and Used in Bad Faith
Given the Complainant’s uncontradicted claim of registration of its said DR.MARTENS trademark and apparent use of that mark for many years long before the registration of the disputed domain name in 2011 and the serious allegation that the website to which the disputed domain name resolves may be a credit card phishing site with customers not receiving the goods they ordered after providing their credit card details, there is a strong case for the Respondent to come forward to defend itself. Unfortunately, the Respondent has not come forward with any response.
There is no evidence that the disputed domain name has been actively used by the Respondent as a website for promoting the goods or service of the Respondent itself, but the Respondent has used the disputed domain name to divert Internet users to a parking site containing various commercial links related to the Complainants’ products and links to other sites offering similar goods. In the absence of any evidence to the contrary, it appears that the Respondent was not using the domain name for a purpose other than commercial gain. The inclusion of the term “drmartens” in the disputed domain name is likely to create confusion with the Complainants’ mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location of a product or service on the online locations where the disputed domain name leads to. It is not possible to think of any plausible, genuine use of the disputed domain name by the Respondent.
Additionally, as indicated in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.2, some UDRP panels have found that the concept of passive holding may apply in the event of the “parking” of a domain name, irrespective of whether this action may result in the generation of incidental revenue from advertising referrals.
Passive holding of the disputed domain name may in appropriate circumstances constitute bad faith registration and use, and the Panel is of the view that such circumstances exist in this case. In this case, the Complainants’ DR.MARTENS mark is sufficiently known worldwide registered and in China, where the Respondent is located. The Panel cannot conceive of any use the Respondent might make of the disputed domain name that would not be a bad faith use. Some degree of deception or confusion would seem to be inevitable in any use the Respondent might make of the disputed domain name. Putting that circumstance together with the Respondent’s failure to file any response and the use as seen on the website to which the disputed domain name resolved, the Panel is satisfied that the overall circumstances are sufficient to constitute passive bad faith registration and use, of the kind found by the panel in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Panel accordingly finds that the presumption under paragraph 4(b)(iv) of the Policy has been invoked. In reaching the above conclusion, the Panel has also taken into consideration the following:
(a) the Complainants’ international trade mark registration with extension to China long before the registration of the disputed domain name in 2011;
(b) the Respondent is situated in China; and
(c) there is no explanation given by the Respondent as to how the disputed domain name was composed and why this particular word “drmartens” was chosen by it to form part of the disputed domain name.
The Panel finds that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <nyadrmartens.com> be transferred to the Complainants.
C. K. Kwong
Dated: July 10, 2012