WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
"Dr. Martens" International Trading GmbH, "Dr. Maertens" Marketing GmbH v. Wang Li Qing
Case No. D2012-2420
1. The Parties
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 Wang Li Qing of XinYang, HeNan, China.
2. The Domain Name and Registrar
The disputed domain name <drmartens168.com> (the “Disputed Domain Name”) is registered with Xin Net Technology Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2012. On December 11, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 13, 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 December 13, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On December 14, 2012, the Complainants confirmed their request that English be the language of proceedings. 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 December 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 8, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 9, 2013.
The Center appointed Peter J. Dernbach as the sole panelist in this matter on January 28, 2013. 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 factual findings pertinent to the decision in this case are that:
The Complainants’ products marketed under the trademark DR. MARTENS include footwear, clothing and accessories. The Complainants’ products are available through retailers and online at the website “www.drmartens.com”.
The Complainants are the owners of numerous trademarks for DR. MARTENS, inter alia, Community Trademark Registration No. 59147 for the word mark DR. MARTENS dated April 1996, and International Trademark registration No. 575311 dated July 1991 in China.
The Disputed Domain Name was registered on August 14, 2012.
The Disputed Domain Name resolves to a website which offers for sale boots and shoes by reference to the trademark DR. MARTENS.
5. Parties’ Contentions
The Complainants’ contentions could be summarized as follows:
(i) The Disputed Domain Name is confusingly similar to the registered trademark of the Complainants.
The Disputed Domain Name is a combination of a word of “dr. martens”, which is identical with the Complainants’ trademark, and the descriptive suffix “168” which is not sufficient enough to avoid the likelihood of confusion.
(ii) The Respondent has no rights or legitimate interests in the Disputed Domain Name.
The Disputed Domain Name resolves to a parked website featuring links to advertisement for the sale of footwear including purported Dr. Martens footwear on a website that has never been authorized or approved by the Complainants. By using the Disputed Domain Name, the Respondent is likely to mislead consumers into believing it has some form of sponsorship, affiliation or the approval of the Complainants when in fact there is none.
The Respondent is making illegitimate commercial and unfair use of the Domain Name with the intention of making commercial gain, misleading and diverting consumers, and tarnishing the trademark of the Complainants.
(iii) The Disputed Domain Name was registered and is being used in bad faith
The Respondent is intentionally attempting to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainants’ trademark as to the source sponsorship, affiliation or endorsement of the Respondent’s website or products available on or through it.
The Respondent must have had knowledge of the Complainants’ rights when it registered the Disputed Domain Name given the fame of the Complainants’ trademark suggesting “opportunistic bad faith”.
The Respondent links the Disputed Domain Name to a website from which products in direct competition with the Complainants could be purchased and it is likely that the Respondent is profiting from “click-through” fees.
The Respondent did not reply to the Complainants’ contentions.
6. Preliminary Procedural Issues
Paragraph 11(a) of the Rules provides that “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 proceedings”.
The language of the Registration Agreement in relation to the Disputed Domain Name <drmartens168.com> is Chinese. The Complainants requested, in their email dated December 14, 2012 to the Center, that the language of proceedings be English. The Complainants raised the following arguments to support their request: (i) the Registrar is an ICANN registrar which usually has knowledge of English; (ii) the website operated at the Disputed Domain Name displays all brand indications in English; and (iii) the Complaint and its annexes are in English.
Paragraph 11(a) of the Rules allows the Panel to determine the language of proceedings having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of proceedings. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293). The language finally decided by the Panel for proceedings should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ( “WIPO Overview 2.0”) further states: “in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (See paragraph 4.3 of WIPO Overview 2.0).
The Panel notes the following facts:
(i) The Respondent has used Latin scripts English term in the Disputed Domain Name. The majority of brand indications accompanying the products arrayed on the Respondent’s website operated at the Disputed Domain Name are in English. Also, a pop-up window displaying the message “May I help you” in English appears on the Respondent’s website operated at the Disputed Domain Name (captured on December 10, 2012 and provided by the Complainants in Annex 6 to the Complaint). The Panel is satisfied that the Respondent shall be familiar with the Complainants’ requested language.
(ii) The Panel notes that all Center’s communications to the Respondent were made in both Chinese and English and that the Respondent was given an opportunity to object to the Complainants’ request that English be the language of proceedings. The Respondent was also advised that, in the absence of any response from the Respondent, the Center would proceed on the basis that the Respondent has no objection to the Complainants’ request that English be the language of proceedings. The Panel finds that the Respondent has been given a fair chance to object, and has not done so.
(iii) The Panel finds that the Complainants, being Germany entities, are not in a position to conduct these proceedings in Chinese without a great deal of additional expense and delay due to the need for translation of the Complaint and supporting Annexes.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the rules that English shall be the language of proceedings and the decision will be rendered in English.
7. Discussion and Findings
The Panel now proceeds to consider this matter on the merits in light of the Complaint, the absence of a response, the Policy, the Rules, the Supplemental Rules, and other applicable legal authority, pursuant to paragraph 15(a) of the Rules.
Paragraph 4(a) of the Policy provides that the Complainants must prove, with respect to the Disputed Domain Names, each of the following:
(i) The Disputed Domain Name is confusingly similar to a trademark in which the Complainants have rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainants have established that they are owners of a number of DR. MARTENS trademarks in China and internationally.
The threshold test for confusing similarity under paragraph 4(a)(i) of the Policy involves a comparison between the trademark and the domain name itself to determine the likelihood of confusion by Internet users. The trademark at issue generally needs to be recognizable as such within the domain name, and the addition of common, dictionary, descriptive or negative terms are typically not regarded as sufficient to prevent threshold confusion by Internet users (see paragraph 1.2 of WIPO Overview 2.0).
In comparing the trademark and the Disputed Domain Name, it is clear that the Disputed Domain Name incorporates the “dr. martens” element, which is identical to the Complainants’ trademark. The “dr. martens” element in the Disputed Domain Name is immediately recognizable as the Complainants’ trademark and the addition numbers of “168” is not sufficient to avoid confusion (LEGO Juris A/S v. nichetrend products, WIPO Case No. D2010-1955).
A domain name which consists of a trademark and a generic, descriptive term would be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. (Time Warner Entertainment Company L.P. v. HarperStephens, WIPO Case No. D2000-1254, eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307, also see the generally adopted panel views under paragraph 1.9 of WIPO Overview 2.0.)
Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainants’ trademark and the condition of paragraph 4(a)(i) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following several circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a Disputed Domain Name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the Respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or
(ii) where [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the Disputed Domain Name, even if [the Respondent has] acquired no trademark or service mark rights; or
(iii) where [the Respondent is] making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.1 of WIPO Overview 2.0, whereby: “[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant […]”.
In the present case, the Complainants have established that they are owners of the DR. MARTENS trademark worldwide, and that the Complainants have used the DR. MARTENS trademark on the Internet through its website “www.drmartens.com”. The Complainants state that they have no affiliation or contractual relationship with the Respondent.
Furthermore, the Panel notes that the Registrar revealed the owner of the Disputed Domain Name to be “Wang Li Qing” and so there is no evidence in the record to suggest that the Respondent might be commonly known by the Disputed Domain Name. There is no evidence that the Respondent has any trademark rights in the Disputed Domain Name.
The Panel has examined Annex 6 to the Complaint which comprises pages taken from the website at the Disputed Domain Name (“www.drmartens168.com”) and notes, contrary to the Complainants’ assertions, that it does not appear to be a parking website but rather a developed website offering boots, shoes and clothes for sale. The boots and shoes shown on the website at the Disputed Domain Name are being referred to not only by the trademark of Complainants but also by other trademarks of Complainants’ competitors. The Respondent is clearly using the Disputed Domain Name to “attract, for commercial gain, Internet Users to the holder’s website”. The Panel also finds, after reviewing the evidence presented, that the Respondent has not taken measures to identify itself as being independent of the Complainants.
The Respondent failed to respond to the Complaint or give any explanation as to why the Disputed Domain Name was chosen and registered. Therefore, the Panel finds it is reasonable to conclude that the Respondent deliberately chose to include the Complainants’ DR. MARTENS trademark in the Disputed Domain Name, for the purpose of achieving commercial advantage by misleadingly diverting consumers into website at the Disputed Domain Name and that such use cannot be considered as a legitimate noncommercial or fair use.
Having considered the above, the Panel finds that the Complainants have made the prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name, and in absence of any reply from the Respondent, has therefore satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy explicitly states, in relevant part, that if the Panel finds the following circumstances, it shall be evidence of the registration and use of a domain name in bad faith:
“(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.”
In relation to the bad faith at the time of registration, the Panel notes that the Complainants have established that their DR. MARTENS trademark was registered in China and internationally, and had acquired an international reputation prior to the date the Disputed Domain Name was registered (August 14, 2012). The Panel finds that the Complainants have shown that they own the DR. MARTENS trademark in China and internationally, and that they have used the DR. MARTENS extensively so that it has acquired a reputation prior to the registration of the Disputed Domain Name. The Respondent’s choice to incorporate the identical DR. MARTENS element as the primary distinctive element of the Disputed Domain Name strongly suggests that the Disputed Domain Name was registered in bad faith. As the Respondent did not reply to the Complaint nor submit any evidence to the contrary, the Panel finds that the Dispute Domain Name was registered in bad faith.
As indicated previously, the website at the Disputed Domain Name offers boots, shoes and clothes for sale. The boots and shoes shown on the website at the Disputed Domain Name are being referred to not only by the trademark of Complainants but also by other trademarks of Complainants’ competitors. The Respondent is clearly using the Disputed Domain Name to “attract, for commercial gain, Internet Users to the holder’s website”. The Panel also finds, after reviewing the evidence presented, that the Respondent has not taken measures to identify itself as being independent of the Complainants.
Based on the above findings, the Panel finds that the Respondent has registered and is using the Disputed Domain Name in bad faith as provided in paragraph 4(b)(iv) of the Policy, and thus the Complainants fulfill the condition provided in paragraph 4(a)(iii) 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 <drmartens168.com> be transferred to the Complainants.
Peter J. Dernbach
Date: February 11, 2013