WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

“Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. Gisela Duggan

Case No. D2013-1002

1. The Parties

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

The Respondent is Gisela Duggan of Fuzhou, Fujian Province, China.

2. The Domain Name and Registrar

The disputed domain name <drmartensclearancesale.com> is registered with Shanghai Yovole Networks, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 5, 2013. On June 5, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 6, 2013, 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 7, 2013, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding 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 June 13, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 3, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 4, 2013.

The Center appointed Susanna H.S. Leong as the sole panelist in this matter on July 10, 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 Complainant is the owner of DR. MARTENS, an international brand for footwear, clothing and accessories, particularly renowned for its distinctive shoes and boots, since it first started business in the late 1950’s. The Complainant’s “Dr. Martens” footwear, clothing and accessories are available for sale at retailers throughout the world as well as online at the “Dr. Martens” website, located at “www.drmartens.com”, the official “Dr. Martens” website.

The Complainant is the owners of the following trademarks:

1) Community Trademark (CTM) 59147 DR. MARTENS of April 1, 1996, registered for various goods, mainly for footwear and clothing in class 25, as well as retail services in class 35;

2) Australian Trademark No. 500799 DR. MARTENS of December 5, 1988 for footwear and clothing in class 25;

3) Australian Trademark No. 652619 DR. MARTENS of February 8, 1995 for retail services in class 35;

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

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

6) United States of America (US) Trademark No. 1454323 DR. MARTENS of June 9, 1983 for footwear in class 25;

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

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

9) International Registration (IR) No. 584207 DR. MARTENS of February 28, 1992; and

10) IR No. 575311 DR. MARTENS of July 18, 1991, both registered in China for footwear and clothing in class 25.

The disputed domain name <drmartensclearancesale.com> was registered on March 11, 2013.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The reasons are as follows:

1) The disputed domain name <drmartensclearancesale.com> is a combination of the descriptive elements “clearance” and “sale” and the characterizing name “drmartens”. The elements “clearance” and “sale” are clearly descriptive for the products of the Complainant and consequently consumers will pay their major attention to the first characterizing element “drmartens”.

2) The disputed domain name is phonetically highly similar to the Complainant’s trademarks. The Complainant’s trademarks DR. MARTENS are identical to the “drmartens” in the disputed domain name, being the distinctive part of the disputed domain name. The mere addition of the descriptive terms “clearance” and “sale” does not in any way prevent the likelihood of confusion in the minds of the relevant Internet users.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name on the following grounds:

1) The Respondent is using the disputed domain name <drmartensclearancesale.com> as a platform to sell “Dr. Martens” products showing the Complainant’s trademarks without being authorized. The links to “Dr. Martens” as offered on the disputed website have never been authorized by the Complainant or their licensees. The Respondent has no right or legitimate interest to the use of the trademark DR. MARTENS within the disputed domain name. The Respondent is clearly making illegitimate commercial use of the disputed domain name for commercial gain and to tarnish the Complainant’s trademarks.

2) By using the disputed domain name which is confusingly similar to the Complainant’s trademark, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to her website or other online locations, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship or affiliation or endorsement of the Respondent’s website or location.

The Complainant contends that the disputed domain name was registered and is being used in bad faith on the following grounds:

1) It is asserted that the Respondent must have had knowledge of the Complainant’s right to the DR. MARTENS trademarks when she registered the disputed domain name, since the Complainant’s trademark is a widely well-known trademark. The Respondent’s awareness of the Complainant’s trademark rights at the time of registration suggests opportunistic and bad faith registration.

2) By using the disputed domain name which is confusingly similar to the Complainant’s trademark, the Respondent intentionally attempted to attract for commercial gain Internet users to her/the Respondent’s website or other online location, by creating likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and/or location and/or of a product or service on the Respondent’s website or location. The Respondent is linking <drmartensclearancesale.com> with his own unauthorized website which is selling “Dr. Martens” footwear without being authorized or approved by the trademarks owners or their licensees. It is clear that the Respondent is profiting from the goodwill associated with the Complainant’s trademark by accruing click-through fees for each redirected and confused Internet user. These circumstances support a finding of bad faith use pursuant to paragraph 4(b)(iv) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Language of the Proceeding

According to the information received by the Center from the Registrar, the language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the Case File, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be in English. Complying with the instructions from the Center, the Complainant has submitted a request that English should be the language of the present proceeding for the following reasons:

1) That the Registrar under which the disputed domain name is registered is an ICANN registrar and is usually presumed to have knowledge of the English language.

2) That the content of the homepage upon which the disputed domain name <drmartensclearancesale.com> resolves is written in English.

3) All documentation provided with the Complaint is in English and it would be sensible both for practical as well as for legal reasons to conduct the proceeding in English.

After considering the circumstances of the present case and the submission of the Complainant’s request, the Panel is of the opinion that the language of the present proceeding shall be English and the decision will be rendered in English. The Panel based its decision on the following reasons:

(i) The Panel’s discretion under the Policy

Paragraph 11 of the Rules provides:

“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 proceeding.”

Thus, parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.

(ii) The circumstances of this proceeding

One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.

In particular, the Panel notes that the material facts of this proceeding are generated in the English language. On record, the Respondent appears to be Chinese and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence has been adduced by the Complainant to suggest in the interests of fairness, the language of the proceeding ought to be English. In particular, the Panel notes that (a) the disputed domain name is made up of letters in Ascii-Script and could be pronounced phonetically in English; and (b) the website to which the disputed domain name is pointed is in English which suggests that the Respondent understands English; (c) the Center has notified the Respondent of the proceeding in both Chinese and English. The Respondent had a choice to respond to the Complaint in either Chinese or English as the Panel who has been appointed by the Center is conversant in both languages. The Panel is of the view that if the Respondent had experienced difficulty with the English language, she could have communicated this to the Center and the Panel will rule accordingly. However, the Respondent has chosen not to respond to the Complainant’s allegations. Considering these circumstances, the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.

In considering the circumstances of the present case, the Panel decides that the language of the proceeding shall be English and the decision will be rendered in English.

6.2 Substantive Elements of the Policy

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following Policy elements are satisfied:

1. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

2. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

3. the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.

Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.

On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Complainant has adduced evidence to demonstrate that it has registered trademark rights and continues to have such rights in the DR. MARTENS mark for footwear and retail services in many countries in the world. Furthermore, the Panel finds that the Complainant has registered trademark rights in the DR. MARTENS mark in China, the country in which the Respondent appears to reside. The Panel finds that the Complainant’s DR. MARTENS mark is a widely-known mark for footwear and retail services offered by the Complainant.

In assessing the degree of similarity between the Complainant’s trademark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s mark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned in this case, and the average consumer is the Internet user seeking to purchase or download information about the Complainant’s products.

The disputed domain name consists of the Complainant’s mark DR. MARTENS in its entirety followed by the words “clearance” and “sale” and the top level domain suffix “.com”. The Panel is of the view that the most prominent and distinctive part of the disputed domain name is the term “drmartens” which for all intents and purposes is identical to the Complainant’s registered trademark DR. MARTENS. Given the fame and notoriety of the Complainant’s DR. MARTENS mark, the addition of the words “clearance” and “sale” do not provide sufficient distinction from the Complainant’s mark. Furthermore, it is also an accepted principle that the addition of suffixes such as “.com” or “.net” being the generic top-level domain is not a distinguishing factor.

Bearing in mind the following factors, in particular (a) the widespread reputation and high degree of recognition of the Complainant’s DR. MARTENS mark as a result of its fame and notoriety; (b) the distinctive character of the Complainant’s DR. MARTENS mark; and (c) the dominant component of the disputed domain name, the Panel therefore finds that the disputed domain name is confusingly similar to the DR. MARTENS mark in which the Complainant has rights.

The Panel finds for the Complainant on the first part of the test.

B. Rights or Legitimate Interests

Based on the following reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:

1) the Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term “drmartensclearancesale” in its business operations;

2) there was no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the DR. MARTENS mark;

3) there is no indication whatsoever that the Respondent is commonly known by the disputed domain name and/or is using the disputed domain name in connection with a bona fide offering of goods or services;

4) the Complainant and its DR. MARTENS mark enjoy a widespread reputation and high degree of recognition as a result of its fame and notoriety in the footwear and retail services sector and is a registered trademark in many countries all over the world, including China. Consequently, in the Panel’s view, in the absence of contrary evidence from the Respondent, the DR. MARTENS mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.

The Panel notes the overall burden of proof on this element rests with the Complainant. However, 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 rebut the complainant’s contentions. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1. Based on the above reasons, the Panel finds that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption.

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [Respondent] of the dispute, your use of, 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; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a 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 has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or evidence of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. The Panel further notes that the Respondent has failed to submit a Response to the Complaint filed against her. In particular, the Respondent has failed to make submissions to demonstrate that she has rights to or legitimate interests in the disputed domain name.

In accordance with the Rules, paragraph 14, the Panel thus draws such inferences as it considers appropriate, which are that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent appears to be unable to adduce evidence of any rights to or legitimate interests in the disputed domain name.

The Panel finds for the Complainant on the second part of the test.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:

(i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has 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) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s 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.

The above circumstances are indicative of registration and use of the domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the panel can also constitute registration and use of the domain name in bad faith by a respondent in appropriate cases.

One important consideration in the Panel’s assessment of whether the Respondent has registered and used the disputed domain name in bad faith is prior knowledge on the part of the Respondent of the Complainant’s rights in the trademark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcend national borders. Taking into account the worldwide reputation of the Complainant and its DR. MARTENS mark, as well as the market presence of the Complainant in numerous countries including China, the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name. Furthermore, the Complainant’s brand of footwear is available on the Internet via its official website “www.drmartens.com”. A simple search on the Internet would reveal the presence of the Complainant’s trademark and domain name. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name. Consequently, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of association with the Complainant and its products.

Where the Respondent has chosen to register a disputed domain name that is identical or confusingly similar to the Complainant’s trademark and where the mark in question has through substantial use acquired worldwide fame, reputation and notoriety, a reasonable conclusion is that the mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, the burden on the Respondent to show that the choice of the disputed domain name was made legitimately and in good faith for the genuine offering of goods or services on the Internet is a very heavy one. There is no evidence that the Respondent has used or intends to use to the disputed domain name for purposes of bona fide offering of goods and services over the Internet. On the contrary, the Respondent has linked <drmartensclearancesale.com> with unauthorized website which sell “Dr. Martens” footwear without being authorized or approved by the trademarks’ owners or their licensees. In this regard, the Panel finds that the Respondent has not provided any plausible explanation.

The Panel finds that the Complainant has adduced evidence and proved that by using a confusingly similar disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website under paragraph 4(b)(iv) of the Policy. The Panel finds that given the widespread fame of the Complainant’s DR. MARTENS mark and a lack of plausible explanation for the choice of incorporating the Complainant’s famous mark in the disputed domain name, the link by the Respondent of the disputed domain name to unauthorized websites which sell competitors’ and “Dr. Martens” footwear without being authorized or approved by the trademarks’ owners or their licensees is certainly a relevant factor indicating bad faith registration and use.

Thus, the Panel finds for the Complainant on the third part of the test.

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, <drmartensclearancesale.com>, be transferred to the Complainant.

Susanna H.S. Leong
Sole Panelist
Date: July 31, 2013