WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Niche Republic LLC

Case No. D2012-0114

1. The Parties

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

1.2 The Respondent is Niche Republic LLC of Wilmington, Delaware, United States of America (“U.S.”) (the “Respondent”).

2. The Domain Name and Registrar

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

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2012. On January 23, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed Domain Name. On January 23, 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.

3.2 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”).

3.3 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 January 25, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 14, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 15, 2012.

3.4 The Center appointed Ike Ehiribe as the sole panelist in this matter on February 20, 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

4.1 The Complainants in these administrative proceedings are Dr. Martens International Trading GmbH and Dr. Maertens Marketing GmbH both companies duly registered under the laws of Germany with limited responsibility. The Complainants own the well-known DR. MARTENS trademark which is used all over the world to market footwear, clothing and accessories, including distinctive shoes and boots first sold in the late 1950’s. The Dr. Martens footwear, clothing and accessories are available for sale at retailers throughout the world as well as online at the Dr Martens website at “www.docmarten.com”.

4.2 The Respondent in these proceedings is based in Delaware in the U.S. and according to the Registrar, the disputed Domain Name <drmartenssale.org> was registered on April 7, 2011.

5. Parties’ Contentions

A. Complainants

5.1 The Complainants own numerous DR. MARTENS trademark registrations all over the world including in the U.S. where the Respondent is located and in Canada. According to the registration certificates attached to these proceedings, the Complainants own the following trademark registrations:

(i) CTM 59147 DR. MARTENS of April 01, 1996 registered mainly for footwear and clothing in class 25 as well as retail services in class 35;

(ii) Canadian Trademark No. 420485 DR. MARTENS of December 17, 1990 mainly for footwear and clothing in class 25;

(iii) Canadian Trademark No. 625884 DR. MARTENS of June 25, 2002 mainly for retail services in the field of footwear and clothing in class 35;

(iv) US Trademark No. 1454323 DR. MARTENS of June 09, 1983 for footwear in class 25;

(v) US Trademark No. 1798791 DR. MARTENS of March 14, 1990 for footwear in class 25; and

(vi) US Trademark No. 2838397 DR. MARTENS of June 26, 2002 for retail services in the field of footwear and clothing in class 35.

5.2 The Complainants assert that the disputed Domain Name <drmartenssale.org> is phonetically similar to the Complainants’ trademark as the disputed Domain Name completely reproduces the Complainants’ trademark except for the omission of the point between “Dr” and “Martens”. The Complainants however state that this omission is not sufficient to create enough distinctiveness between the Complainants’ trademark and the disputed Domain Name as “Dr Martens” and “drmartens” are identical with respect to their phonetics, writings and meaning. Also it is stated that “Dr” and “dr” are common abbreviations for “doctor” in many countries worldwide. The Complainants further argue that the addition of the word “sale” to the disputed Domain Name is merely and clearly descriptive without any distinctive meaning and as such cannot prevent the likelihood of confusion.

5.3 The Complainants submit that the Respondent is using the disputed Domain Name to host a parked website 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 which refer to the competitors of the Complainants. The Complainants argue further that the Respondent is likely to mislead and deceive consumers into believing that it has a sponsorship, affiliation or approval with the original DR. MARTENS trademark owners, licensees or customers which is not the case. The Complainants contend further that the Respondent is hereby passing off the Complainants’ goodwill and reputation in the DR..MARTENS trademark and the Dr. Martens name as found in previous UDRP decisions such as Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Above.com Domain Privacy/Transure Enterprise Ltd., WIPO Case No. D2009-1253; and “Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. PrivacyProtect.org/ Tech Domain Services private Limited, WIPO Case No. D2010-1342. The Complainants further argue that the Respondent is making illegitimate commercial and unfair use of the disputed Domain Name for commercial gain and to tarnish the Complainants’ trademarks. From the foregoing facts the Complainants assert that nothing seems to indicate that the Respondent has any rights or legitimate interests in respect of the disputed Domain Name.

5.4 On the question of bad faith use and registration, the Complainants assert that the Respondent must have known of the Complainants’ rights in the DR. MARTENS trademark when it registered the disputed Domain Name since the Complainants’ trademark is well-known. The Complainants submit that the Respondent’s awareness of the Complainants’ trademark rights at the time of registration suggests opportunistic bad faith registration as held in a number of previous UDRP decisions including BellSouth Intellectual Property Corporation v. Serena Axel, WIPO Case No. D2006-0007. In addition, it is submitted that since the Respondent must have had knowledge of the Complainants’ rights in the DR. MARTENS trademark and since the Respondent has no rights or legitimate interests in the disputed Domain Name, it is established that the disputed Domain Name was registered in bad faith as also held in Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Above.com Domain Privacy/Transure Enterprise Ltd., WIPO Case No. D2009-1253. It is further argued by the Complainants that since the disputed Domain Name is linked to an active website featuring links to third parties who are competitors of the Complainants the Respondent is intentionally attempting to attract Internet users for commercial gain thereby creating a likelihood of confusion with the Complainants’ trademarks as to the source, sponsorship, affiliation, endorsement of the Respondent’s website. The Complainants therefore assert that it is more than likely that the Respondent is profiting from the goodwill associated with the Complainants’ trademark by accruing click-through fees for each redirected and confused Internet user. In this regard the Complainants rely on a number of cases including McLaughlin Gormley King Company v. BMI Domains c/o Domain Manager, NAF Claim No. FA 1230837 in support of the contention that such conduct by the Respondent supports a finding of bad faith use.

B. Respondent

5.5 The Respondent did not reply to the Complainant’s contentions and is in default. Therefore in accordance with paragraphs 14(a) and (b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s default.

6. Discussion and Findings

6.1 Under paragraph 4(a) of the Policy, to succeed in these administrative proceedings the Complainants must prove: (i) that the disputed Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainants have rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name; and (iii) that the disputed Domain Name has been registered as is being used in bad faith.

6.2 As expressly stated in the Policy, the Complainants must establish the existence of each of the three elements in these proceedings.

A. Identical or Confusingly Similar

6.3 The Complainants have provided evidence of their ownership of trademark registrations of the trademark DR. MARTENS in a number of countries including the U.S. where the Respondent is located. The Panel accepts unequivocally that the disputed Domain Name <drmartenssale.org> is identical or confusingly similar to the Complainants’ well-known trademark, namely DR. MARTENS. Clearly, the disputed Domain Name which wholly incorporates the Complainants’ trademark except for the point between “Dr” and “Martens” is phonetically similar and also identical in writing and in meaning. The Panel finds that the omission of the point or the mere addition of the descriptive term “sale” does not in any way prevent the likelihood of confusion in the minds of Internet users. See in this regard a previous UDRP decision in Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Above.com Domain Privacy/Transure Enterprise Ltd., supra, where the addition of the non-distinctive term “shoes” to the disputed domain name <drmartenshoes.com> was held to be incapable of preventing confusing similarity with the complainants’ well-known DR. MARTENS trademark.

6.4 Accordingly, the Panel is satisfied that the Complainants have established the disputed Domain Name to be confusingly similar to the Complainants registered trademark in accordance with paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

6.5 The Panel equally finds that the Respondent has failed to provide any evidence of circumstances required to establish that there exists any rights or legitimate interests in the disputed Domain Name within the ambit of paragraph 4(c) of the Policy. The Respondent has failed to produce any evidence of any legitimate relationship between the Complainants and the Respondent or consent or any license issued to the Respondent authorising the Respondent to register and use the disputed Domain Name; therefore the Respondent has failed to establish a bona fide offering of goods and services contrary to paragraph 4(c)(i) of the Policy.

6.6 The Panel is satisfied that the Respondent knowingly registered the disputed Domain Name with the intention of deceiving and misleading Internet visitors by creating a likelihood of confusion with the Complainants’ trademark as to source, affiliation or endorsement of the Respondent’s websites or of a product or service on the Respondent’s website. This Panel finds that the Respondent is clearly making illegitimate commercial use of the disputed Domain Name for commercial gain and to tarnish the Complainants’ trademark as demonstrated in a printout of the Respondent’s website of January 23, 2012. Such usage by the Respondent cannot be said to constitute a bona fide offering of goods or services nor a legitimate noncommercial use or fair use of the disputed Domain Name. See particularly, “Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. PrivacyProtect.org/Tech Domain Services private Limited, supra.

6.7 Accordingly, the Panel finds that the Complainants have established that the Respondent has no rights or legitimate interests in the disputed Domain Name in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

6.8 On the question of bad faith registration and use the Panel finds without any doubt that the Respondent registered and continued to use the disputed Domain Name in bad faith. In arriving at this finding the Panel has considered a number of undisputed factors. Firstly, the Respondent who is based in the U.S. must have known of the Complainants’ well-known registered trademark registered in U.S. trademark registry since 1983 and 1990 and the Complainants’ website located at “www.docmarten.com”, having decided to register the disputed Domain Name on April 07, 2011. The Complainants correctly suggest that the Respondent’s knowledge of the Complainants’ trademark rights at the time of registration is tantamount to opportunistic bad faith registration and in this regard rely on a previous UDRP decision in Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070, where the use of the well-known word “Pokémon” by persons without any connection or legal relationship with the complainant was held to be suggestive of opportunistic bad faith. Secondly, the Complainants have provided evidence in the form of a print out of the Respondent’s website which shows that the disputed Domain Name is linked to an active website featuring links to third parties some of whom are competitors of the Complainants which the Panel finds to be clear evidence that the Respondent is more than likely exploiting the goodwill associated with the Complainants’ trademarks by accruing click–through fees for each redirected and confused Internet visitor. As held in McLaughlin Gormley King Company v. BWI Domains c/o Domain Manager, supra, such conduct supports a finding of bad faith registration and use and pursuant to paragraph 4(b)(iv) of the Policy. Thirdly, as indicated at paragraph 5.6 above, the Panel has drawn adverse inferences from the Respondent’s failure or refusal to respond to the evidence and submissions forwarded by the Complainants in these proceedings.

7. Decision

7.1 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 <drmartenssale.org> be transferred to the Complainants.

Ike Ehiribe
Sole Panelist
Dated: March 6, 2011