WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
“Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. lusheng
Case No. D2012-1227
1. The Parties
The Complainants are “Dr. Martens” International Trading GmbH of Gräfelfin, Germany, and “Dr. Maertens” Marketing GmbH of Seeshaupt, Germany (the “Complainant”), represented by Beetz & Partner, Germany.
The Respondent is lusheng of Jilin, Jilin, China.
2. The Domain Name and Registrar
The disputed domain name <drmartenshoeshop.com> (the “Domain Name”) 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 June 15, 2012. On June 18, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 19, 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 June 26, 2012, the Center transmitted an email to the parties in both Chinese and English languages regarding the language of proceedings. On the same day, the Complainant 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 July 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 22, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 23, 2012.
The Center appointed Jacob (Changjie) Chen as the sole panelist in this matter on July 30, 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 Complainant is internationally famous for producing footwear, clothing and accessories, particularly renowned for its distinctive shoes and boots, first sold in the late 1950s. Its products are available for sale at retailers throughout the world, as well as online at the “Dr. Martens” website, located at the domain name <drmartens.com>.
The Complainant has registered a number of DR. MARTENS marks worldwide, inter alia, International Trademark Registration No. 575311 registered on July 18, 1991, which was granted territorial extension to China in class 25 and is still valid.
The Domain Name <drmartenshoeshop.com> was registered on December 28, 2011. The Respondent was using the Domain Name to host a parked website which features links to advertisements for the sale of footwear inclusive of Dr. Martens footwear on websites.
5. Language of the Proceedings
Under paragraph 11(a) of the Rules, the language of the proceedings shall be the language of the registration agreement, unless both parties agree otherwise, or the registration agreement specifies otherwise, or the panel determines otherwise.
The Complainant filed its Complaint in English and requested for English to be the language of the proceedings for the following reasons:
(a) the Registrar is an ICANN registrar and usually has knowledge of the English language;
(b) the content of the homepage at the Domain Name is written in English; and
(c) all documentation provided with the Complaint is in English. It would make sense for practical as well as for legal reasons to conduct the proceedings in English.
As confirmed by the Registrar, the language of the Registration Agreement is Chinese. Based on the evidence presented on the record, no agreement appears to have been reached between the Complainant and the Respondent that the language of the proceedings should be English.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceedings by taking into consideration all relevant circumstances, and it is established practice to take paragraphs 10(b) and 10(c) of the Rules into consideration for the purpose of determining the language of the proceedings to ensure that the parties are treated with equality and that each of them is given a fair opportunity to present its case.
The Panel notes that the Complainant is registered in Germany and operates its business in multiple jurisdictions including Australia, Canada and United States of America where the business primarily operates in English.
The Panel takes into consideration that the Complainant has submitted all documents in English, and additional expense and delay would likely be incurred if the Complaint is requested to be translated into Chinese.
Using English as the language of the proceedings would not be prejudicial to the Respondent in its ability to articulate the arguments for the case, while if the proceedings are to be conducted in Chinese, the Complainant would be unfairly disadvantaged by being forced to translate the Complaint into Chinese.
The Panel notes that the website at the Domain Name is currently inaccessible and the language of the website is therefore unknown; however, according to the Complainant, the homepage of the website at the Domain Name was written in English. The Panel also notes that the Respondent has been given a fair opportunity to object to the use of English as the language of the proceedings but did not do so.
Considering all of these circumstances, the Panel decides that the language of the proceedings shall be English and the decision will be rendered in English.
6. Parties’ Contentions
The Complainant contends that the Domain Name is identical respectively confusingly similar to various trademark registrations of DR. MARTENS in which the Complainant has rights. The Domain Name is similar to the DR. MARTENS trademark held by the Complainant since the elements “shoe” and “shop” are merely and clearly descriptive while the element “drmarten” is the major part of the Domain Name, which is identical with the trademark DR. MARTENS. The omission of the letter “s” will not be sufficient in order to avoid likelihood of confusion.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent is using the Domain Name to host a parked website which features links to advertisements for the sale of DR. MARTENS footwear on websites which are not authorized or approved by the Complainant as well as on websites which refer to competitors of the Complainant. The Respondent is making an illegitimate commercial and unfair use of the Domain Name with the clear intention for commercial gain misleading to divert consumers and to tarnish the trademark and service mark DR. MARTENS.
The Complainant finally contends that the Domain Name was registered and is being used in bad faith. The Respondent had knowledge of the DR. MARTENS mark when it registered the Domain Name since the DR. MARTENS mark is well-known, and the Respondent has combined it in the Domain Name with words “shoe” and “shop” which are descriptive for the Complainant’s products. By using the Domain Name, the Respondent intentionally attempted to attract for commercial gain Internet users to the website at the Domain Name or other online location, by creating likelihood of confusion with the DR. MARTENS mark as to the source, sponsorship, affiliation, or endorsement of the website and/or location and/or a product or service on the website or location. The Respondent is linking the Domain Name with unauthorized websites which are selling competitors’ and Dr. Martens footwear without being authorized or approved by the Complainant or its licensees.
The Respondent did not reply to the Complainant’s contentions.
7. Discussion and Findings
To succeed in a complaint, a complainant must, in accordance with paragraph 4(a) of the Policy, satisfy the UDRP panel of the following three elements:
(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.
Based on the evidences presented by the Complainant and the relevant provisions of the Policy, the Panel concludes as follows:
A. Identical or Confusingly Similar
The Complainant has introduced evidence demonstrating its established rights in the DR. MARTENS mark. The Complainant’s mark DR. MARTENS is protected as a trademark and the Complainant holds registration for the DR. MARTENS mark worldwide, inter alia, International Trademark Registration No. 575311 registered on July 18, 1991, which was granted territorial extension to China in class 25 and is still valid. The registration of the DR. MARTENS trademark predates that of the Domain Name.
The Panel notes that the Domain Name consists of three terms “drmarten”, “shoe” and “shop”. The terms “shoe” and “shop” are descriptive and generic, while the term “drmarten” which is not descriptive or generic incorporates the major part of the DR. MARTENS mark with the letter “s” omitted.
The Panel finds it an accepted principle that an addition of the suffixes such as “.com” being the generic top-level domain is not a distinguishing factor. The Panel views that the term “Dr. Marten” differentiates the DR. MARTENS trademark from other marks, therefore is the major part of the DR. MARTENS mark. The Panel notes that in the Domain Name, the term “drmarten” is identical with the major part of the DR. MARTENS mark; the Panel therefore holds that the omission of the letter “s” in the Domain Name does not avoid its confusing similarity with the DR. MARTENS mark. Moreover, the fact that what is next to the term “drmarten” in the Domain Name is also a letter “s” and that the combination of the term “drmarten” and the letter “s” is identical to the Complainant’s trademark DR. MARTENS also strengthens the confusing similarity. The Panel further agrees that addition of descriptive terms such as “shoe” and “shop” to the Complainant’s DR. MARTENS trademark does not dispel but instead reinforces the confusing similarity as the Domain Name directly indicates the business of the Complainant. See Carlsberg A/S v. Personal / decohouse, decohouse, WIPO Case No. D2011-0972; ECCO Sko A/S v. Jacklee, WIPO Case No. D2011-0800.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy and the Domain Name is confusingly similar to the Complainant’s DR. MARTENS trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services;
(ii) the fact that respondent has been commonly known by the domain name; or
(iii) legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel notes that the Respondent is not authorized by the Complainant to use the DR. MARTENS mark or to apply or use any domain names or websites incorporating the mark as contended by the Complainant. The Panel also notes that there is no indication whatsoever that the Respondent is commonly known by the Domain Name and/or is using the Domain Name in connection with a bona fide offering of goods or services. Before notice to the Respondent of the dispute, there is no evidence of its use, or demonstrable preparations to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. In fact, the Respondent’s use of the Domain Name to divert Internet users to a parked website in order to redirect Internet users to third parties’ unauthorized or competing websites and thus capitalizing on the Complainant’s trademark is not a bona fide use pursuant to paragraph 4(c)(i) of the Policy. See Lyonnaise de Banque v. Richard J., WIPO Case No. D2006-0142.
The Panel is satisfied that the Complainant has established prima facie evidence that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(c) of the Policy. It is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to demonstrate its rights or legitimate interests. See among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683. The Panel however notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the Domain Name. In accordance with paragraph 14 of the Rules, the Panel thus draws such inference as the Panel considers appropriate, which is that the Respondent appears to be unable to adduce evidence of any rights or legitimate interests to the Domain Name.
For all of the above reasons, the Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out the following circumstances which, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The Panel notes that the Complainant and its mark DR. MARTENS enjoy a considerable reputation with regards to shoes and boots worldwide including China. Therefore, the Panel finds that it is inconceivable that the Respondent had no actual notice of the Complainant’s trademark rights at the time of the registration of the Domain Name, especially that the term “shoe” in the Domain Name indicates the product which is covered by the Complainant’s DR. MARTENS mark. Consequently, it is pertinent for the Respondent to provide an explanation of its choice in the Domain Name, failing of doing which the Panel draws the conclusion that the Domain Name was registered in bad faith with intent to create an impression of an association with the Complainant and its DR. MARTENS trademark.
The Complainant has adduced evidence to show that the Respondent was using the Domain Name to host a parking website which features links to advertisements for the sale of footwear inclusive of Dr. Martens footwear on websites which are not authorized or approved by the Complainant as well as on websites which refer to competitors of the Complainant (See Annex 6 to the Complaint). It is very likely that the Respondent attempts to attract the Internet users and divert the Complainant’s customers while using the Domain Name to promote third parties’ unauthorized or competing websites for commercial gain. The Panel therefore holds that the present case falls within the circumstances referred to in paragraph 4(b)(iv) of the Policy.
The Respondent could have rebutted the contentions of the Complainant but has chosen not to do so. Failure of the Respondent to respond to the Complaint may be further indicative of bad faith. See The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610, “The failure of the Respondent to respond to the Complaint further supports an inference of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787)”.
Besides, the Panel notes that the Respondent disconnected the Domain Name from the parking service shortly after the proceeding was notified to the Respondent by the Center. This may be further indicative of the Respondent’s bad faith in using the Domain Name.
Based on the above facts and reasons, the Panel finally concludes that it is adequate to conclude that the Respondent has registered and used the Domain Name in bad faith.
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 <drmartenshoeshop.com> be transferred to the Complainant.
Jacob (Changjie) Chen
Date: August 16, 2012