WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
"Dr. Martens" International Trading GmbH, "Dr. Maertens" Marketing GmbH v. Fundacion Private Whois
Case No. D2012-1861
The Complainants are “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH, of Gräfelfing, Germany and Seeshaupt, Germany, respectively, represented by Beetz & Partner, Germany.
The Respondent is Fundacion Private Whois of Panama, Panama.
2. The Domain Name and Registrar
The disputed domain name <drmartens2012.com> (the “Domain Name”) is registered with Internet.bs Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2012. On September 18, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 20, 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.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 September 25, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 15, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 16, 2012.
The Center appointed Steven A. Maier as the sole panelist in this matter on October 29, 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 registered trademarks for the mark DR MARTENS in various territories. These registrations include, among others, Community Trade Mark number 59147 registered on March 3, 1999 for footwear and clothing in International Class 25, Canadian trademark number 420485 registered on December 10, 1993 for footwear and clothing in International Class 25 and US trademark number 1454323 registered on August 25, 1987 for footwear in International Class 25.
The Domain Name was registered on February 27, 2012.
At the date of the Complaint, the Domain Name resolved to a website at “www.drmartens2012.com” which comprised a directory website offering links to various suppliers of footwear, clothing and other goods and services.
5. Parties’ Contentions
The Complainants provide evidence of their trademark registrations referred to above.
The Complainants also submit that “Dr Martens” is a famous brand of footwear, clothing and accessories that have been sold since the 1950s. The goods sold under that brand are available from retailers worldwide and online from the Complainants’ official website at “www.drmartens.com”. The Complainants submit evidence of the worldwide recognition of the DR MARTENS mark, including media articles concerning the history and prominence of the brand.
The Complainants submit that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. In particular, the significant element of the Domain Name is the term “drmartens” which is identical with the Complainants’ registered trademarks and brand. The additional element “2012” is not sufficient to avoid the likelihood of confusion as consumers will have regard only to the “drmartens” element.
The Complainants submit that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent is using the Domain Name to direct Internet users to unauthorized websites which offer the Complainants’ goods and other websites which are operated by the Complainants’ competitors. Further, by its use of the Domain Name, the Respondent is falsely representing that it has an association or affiliation with the Complainants and is guilty of passing off and of taking unfair advantage of the Complainants’ reputation and goodwill. There is no evidence that the Respondent has any rights or legitimate interests in respect of the Domain Name.
The Complainants submit that the Domain Name was registered and is being used in bad faith. The Complainants repeat their contentions concerning the Respondent’s use of the disputed domain name. They submit in particular that the Respondent is attempting to attract Internet users to its site for commercial gain by creating confusion with the Complainants’ mark as to the source of the goods offered. Further, given the fame of the Complainants’ DR MARTENS mark, the Respondent must have known of that mark at the time of registration of the Domain Name and must have registered the Domain Name with the intention of profiting from the Complainants’ goodwill. The Respondent is unfairly profiting from that goodwill by obtaining click-through revenue from its directory website.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
In order to succeed in its Complaint, the Complainants are required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
Even in a case such as this where the Respondent has failed to reply to the Complaint, it is still necessary for the Complainants to prove its case in respect of each of the above elements.
A. Identical or Confusingly Similar
The Complainants have demonstrated that they are the owners of various registered trademarks for the mark DR MARTENS. These include Community, Canadian and US trademarks for footwear and other goods. The Complainants have also provided some anecdotal evidence of the worldwide recognition of the “Dr Martens” brand. Although the Panel would have found it more helpful to have statistics concerning the Complainants sales, promotional and advertising spend, etc., the Panel finds this evidence is sufficient to establish that the Complainants also enjoy unregistered rights in the DR MARTENS mark in numerous territories worldwide for purpose of the Policy.
The Domain Name is <drmartens2012.com>. The Panel accepts the Complainants’ submission that the distinctive part of the Domain Name is “drmartens”, which is identical to the Complainants’ mark DR MARTENS and would be likely to be understood by Internet users to refer to that mark. The suffix “2012”, as a reference to the current year, does not detract from the distinctive element of the Domain Name and the consequent likelihood of confusion. Accordingly, the Complainants have duly established that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights.
B. Rights or Legitimate Interests
The Panel finds that the Respondent is using the Domain Name to direct Internet users to a directory website offering links to various providers of footwear, clothing and other services, a number of which are competitive with the Complainants. The Panel also accepts the Complainants’ submissions that the Respondent is using the Domain Name in a manner which dishonestly suggests an association with the Complainants and that as a result the Respondent is unfairly profiting from the Complainants’ goodwill. This use of the Domain Name does not establish any rights or legitimate interests in the Domain Name on the part of the Respondent.
Further, the Respondent has failed to reply to the Complaint and has not itself provided any evidence of rights or legitimate interests in the Domain Name, whether in accordance with the guidance provided in paragraph 4(c) of the Policy or otherwise. Nor does any other evidence of rights or legitimate interests on the part of the Respondent appear from the material available to the Panel. In the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
The Complainant relies on similar matters as in the case of rights or legitimate interests. Under paragraph 4(b) of the Policy, it shall be evidence of registration and use in bad faith, if the Complainant can show that by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainants' mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on her website or location. The Panel finds that the Respondent has done so. In particular, the Panel readily infers that the Respondent knew of the Complainants’ DR MARTENS mark and that it registered and has used the Domain Name with the intention of unfairly profiting from the Complainants’ goodwill. This conduct constitutes registration and use of the Domain Name in bad faith for the purpose 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 Domain Name <drmartens2012.com> be transferred to the Complainants.
Steven A. Maier
Dated: November 2, 2012