World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

“Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. deborah Jordan

Case No. D2012-2486

1. The Parties

Complainants are “Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH of Gräfelfing, Germany and Seeshaupt, Germany, respectively, represented by Beetz & Partner, Germany.

Respondent is deborah Jordan of Spring, Texas, United States of America.

2. The Domain Name and Registrar

The disputed domain name <drmartensusa.org> is registered with GoDaddy.com, LLC. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2012. On December 18, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 18, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 19, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on December 19, 2012.

The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on December 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 9, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 10, 2013.

The Center appointed Roberto Bianchi as the sole panelist in this matter on January 17, 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

Complainants are in the business of manufacturing and marketing footwear, clothing and clothing accessories.

Complainants own several trademark registrations for the DR. MARTENS mark: Community Trademark Reg. No. 000059147, Reg. Date March 3, 1999, covering mainly footwear and clothing in class 25 and retail services in class 35; Canadian Trademark Reg. No. 420485, Reg. Date December 10, 1993, covering mainly footwear and clothing; Canadian Trademark Reg. No. 625884, Reg. Date November 18, 2004, covering retail services in the field of footwear and clothing in class 35; United States Trademark Reg. No. 1454323, Reg. Date August 26, 1987, covering soles for boots and for shoes in class 25; United States Trademark Reg. No. 1798791, Reg. Date October 12, 1993, covering footwear in class 25, and United States Trademark Reg. No. 2838397, Reg. Date May 4, 2004, covering retail store services in the field of footwear and clothing in class 35.

Complainants also own two registrations for the DOC MARTENS mark: United States Trademark Reg. No. 2397734, Reg. Date October 24, 2000, covering footwear in class 25, and Community Trademark Reg. No. 150144, Reg. Date February 24, 1999, covering horological instruments, et cetera, in class 14, stationery in class 16, leather in class 18, clothing in class 25 and business management of retail and wholesale businesses in class 25.

The disputed domain name was registered on December 21, 2011.

5. Parties’ Contentions

A. Complainant

In their Complaint, Complainants contend the following:

The disputed domain name is identical or confusingly similar to various trademark registrations in which Complainants have rights. DR. MARTENS is a famous international brand for footwear, clothing and accessories, particularly renowned for its distinctive shoes and boots, first in the late 1950’s. DR. MARTENS footwear, clothing and accessories are available for sale at retailers throughout the world as well as online at the “www.docmartens.com” website.

The disputed domain name is phonetically similar to Complainants’ trademarks. The various trademarks DR. MARTENS are identical to “drmartens”. The remaining element “usa” is merely and clearly descriptive. The disputed domain name is a clear combination of the only characterizing element “drmartens” and a descriptive indication, which cannot avoid a high risk of confusion.

Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent is using the disputed domain name as a parked website with links to sites selling “Dr. Martens” products but also footwear of third parties being direct competitors of Complainants. Respondent has never been authorized to do so. Complainants further suspect the website to be a phishing/credit card fraud site. For this reason, Complainants have immediately requested the site to be shutdown.

By choosing the identical well-known trademark DR. MARTENS and combining it with a descriptive element, Respondent is likely to mislead and deceive consumers into believing that it has a sponsorship or approval by, or affiliation with the owners/licensees/customers of the original “Dr. Martens” trademarks, when this is not the case. Respondent is clearly making false representations that it or its websites have a sponsorship or approval by, or association with the original DR. MARTENS trademark owners/licensees/customers, which is not the case. Respondent is thereby passing off the trademark owners’ goodwill and reputation in the DR. MARTENS trademarks and the “Dr. Martens” name.

Respondent is making an illegitimate commercial and unfair use of the disputed domain name with the clear intention for commercial gain misleadingly to divert consumers and to tarnish the trademark and service marks DR. MARTENS. From the facts provided above, nothing seems to indicate that Respondent has any rights or any legitimate interests in respect of the disputed domain name.

The disputed domain name was registered and is being used in bad faith. By choosing the disputed domain name, Respondent intentionally attempted to attract for commercial gain Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainants’ trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and/or location and/or of a product or service on Respondent’s website or location. Respondent is likely linking the disputed domain name with unauthorized websites selling competitors’ and “Dr. Martens” footwear without being authorized or approved by the trademarks’ owners or their licensees. In the instant case, Respondent must have had knowledge of Complainants’ rights in the DR. MARTENS trademarks when it registered the disputed domain name, since Complainants’ trademarks are widely and well known trademarks. Respondent's awareness of Complainants’ trademark rights at the time of registration suggests opportunistic bad faith.

Since Respondent must have knowledge of Complainants’ rights in the DR. MARTENS trademarks at the moment it registered the disputed domain name, and since Respondent has no legitimate interests in the disputed domain name, it is established that the disputed domain name was registered in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions, and is in default.

6. Discussion and Findings

Under Policy, paragraph 4(a), a complainant must make out its case 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

By submitting copies of certificates of registration and printouts of records from official trademark databases, Complainants have shown that they have rights in the DR. MARTENS mark. See section 4 above.

The disputed domain name contains the DR. MARTENS mark in its entirety and with the country name abbreviation “usa”. In the Panel’s view, neither the addition of this country name abbreviation and the gTLD “.org”, nor the absence of the dot and the space between “dr” and “martens” in the disputed domain name, are sufficient to alter the impression of confusing similarity with Complainants’ mark DR. MARTENS. See InfoSpace.com, Inc. v. Hari Prakash, WIPO Case No. D2000-0076, relating to <indiainfospace.com> (finding the mere addition of the word “India” insufficient to distinguish the domain name from the trademarks of the Complainant, as it appears to be made most likely to induce Internet users to believe that they are connecting with a site of an Indian affiliate or to some “Indian operation” of the Complainant).

The first element of the Policy is thus met.

B. Rights or Legitimate Interests

It is well established that a complainant must first establish a prima facie case that the respondent lacks any rights or legitimate interests in the disputed domain name, and once this is done, the burden shifts to the respondent to show that it has at least some right or legitimate interest in the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), paragraph 2.1 (“[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 the 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 […]”.

In the instant case, Complainants contend that Respondent is using the disputed domain name as a parked website with links to footwear-selling sites for “Dr. Martens” products but also for footwear of third parties being direct competitors of Complainants, while Respondent has never been authorized to do so. Complainants further suspect the website to be a phishing or credit card fraud site. Complainants add that by choosing the identical well-known trademark DR. MARTENS and combining it with a descriptive element, Respondent is likely to mislead and deceive consumers into believing that it has a sponsorship or approval by, or affiliation with the original “Dr. Martens ” trademarks as well as their owners/licensees/customers when this is not the case. Complainants allege that Respondent is making false representations that it or its websites have a sponsorship or approval by, or association with the original DR. MARTENS trademark owners/licensees/customers. Respondent is thereby passing off the trademark owners’ goodwill and reputation in the DR. MARTENS trademarks. Finally, say Complainants, Respondent is making an illegitimate commercial and unfair use of the disputed domain name with the clear intention for commercial gain misleadingly to divert consumers and to tarnish the trademark and service marks DR. MARTENS.

On December 20, 2012, the Center conducted a look-up visit to the disputed domain name and the corresponding website “www.drmartensusa.org“ in conjunction with its obligations under paragraph 2(a) of the Rules. The visit showed that the website consisted of several pages with texts and advertising relating to “Dr. Martens” footwear, including images of the products and texts with their prices. There were links to “My Account”, “Register” and “Shopping Cart”. The Panel notes that this result coincides with Complainant’s printout of the website at the disputed domain name, obtained on December 18, 2012.

On January 25 and 31, 2013, the Panel attempted to visit the “www.drmartensusa.org” website by using its browser. The system returned a “HTTP Error 404”, according to which “The requested resource is not found”. Thus, the website at the disputed domain name currently appears to be inactive.

The Panel did not find any evidence on the record supporting Complainants’ allegation that Respondent is offering footwear of third parties directly competing with Complainants, or that Respondent is making false representations that it or its websites have a sponsorship or approval by, or association with Complainant, or that Respondent is engaged in credit card fraud or phishing. However, the Panel’s overall impression from the available evidence is that Respondent, without any authorization, approval or consent from Complainants, has been using the DR. MARTENS mark to attract Internet users from the United States and elsewhere presumably looking for Complainants’ footwear, to the website at the disputed domain name, offering them “Dr. Martens” footwear online (whether authentic or not).

In the instant case, Respondent did not allege or show that it might be a reseller or distributor of Complainants’ DR. MARTENS products, but even if it did, it fails to meet the requirements of the consensus view of panels applying the Policy, to consider that a reseller or distributor is making a bona fide offering of goods and services and thus have a legitimate interest in the domain name. According to the WIPO Overview 2.0, paragraph 2.3., “[t]hese requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder. The respondent must also not try to “corner the market” in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles.”

Since Respondent is using Complainants’ DR. MARTENS mark and the look-and-feel of Complainants’ official websites without any authorization by Complainants, and without disclosing what kind of relationship – if any – it has to Complainants, a fact that Complainants deny, the Panel believes this use of the disputed domain name is not in connection with a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i). Also, since this use of the disputed domain name involves unfairly attempting to lure Internet users into believing that Respondent’s website at the disputed domain name is the original website of Complainants in the United States, which is not, and without making this circumstance clear to those users, the Panel finds that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish Complainants’ mark pursuant to Policy paragraph 4(c)(iii). Further, as there is no allegation or evidence that Respondent is commonly known by the disputed domain name, or by any other term corresponding to the disputed domain name, Policy, paragraph 4(c)(ii) must be excluded.

Also, Respondent is in default and did not provide any explanation or evidence whatsoever that it may have some right or legitimate interest in the disputed domain name. Finally, as seen above, the website at the disputed domain name is presently inactive, which does not suggest that Respondent may have at least some right or legitimate interest in the disputed domain name.

Accordingly, the Panel concludes that the second element of the Policy is met.

C. Registered and Used in Bad Faith

Complainants’ mark for footwear has been considered widely known. See e.g. Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Above.com Domain Privacy/Transure Enterprise Ltd., WIPO Case No. D2009-1253. Complainants’ extensive use of the DR. MARTENS mark and their registrations for this mark in several jurisdictions, including the United States, the country of residence of Respondent, predates the registration of the disputed domain name – made on December 21, 2011 - by many years. See section 4 above.

Also, the disputed domain name consists of Complainants’ mark in its entirety, merely adding the country name abbreviation “usa” possibly implying that DR. MARTENS footwear is an international brand and that the United States is but one of the countries where such products are marketed and valued. In the opinion of the Panel, this combination of terms suggests that Complainants’ mark was known and intentionally chosen by Respondent.

In addition, Complainants began operating their “www.drmartens.com” website and other websites to market DR. MARTENS products much before the registration of the disputed domain name.

Further, the texts appeared on the website at the disputed domain name show that Respondent was quite aware of Complainants’ story of success in manufacturing and marketing DR. MARTENS products.

Finally, Respondent did not submit a response, and has not denied or qualified in the least its previous knowledge and targeting of Complainants’ mark.

These facts lead the Panel to conclude that at the time of the domain name registration Respondent in all likelihood knew of Complainants and/or their DR. MARTENS trademark and products, and targeted them when it registered the disputed domain name, which is evidence of registration in bad faith.

Although the Panel did not find evidence on the record that Respondent is engaged in credit card fraud or phishing, as suggested by Complainants, Respondent’s use of the disputed domain name <drmartensusa.org> nevertheless appears to be in bad faith. As shown by the printouts submitted by Complainant, coinciding with the results of the Center’s look-up visit, Respondent until recently operated a website apparently imitating the look-and-feel of Complainants’ official “www.drmartens.com“ website, thus luring Internet users presumably looking for DR. MARTENS mark and goods into believing that Respondent’s website at the disputed domain name is official, or that it is sponsored by Complainants. Thus, Respondent appears to be intentionally attempting to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its website or location, which is evidence of registration and use in bad faith pursuant to Policy paragraph 4(b)(iv).

In the Panel’s opinion, the fact that the website at the disputed domain name now appears to be inactive by returning a “HTTP Error 404” is a further indication of bad faith.

The Panel concludes that the disputed domain name was registered and is being used in bad faith.

7. Decision

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 <drmartensusa.org> be transferred to Complainants.

Roberto Bianchi
Sole Panelist
Date: January 31, 2013

 

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