WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
"Dr. Martens" International Trading GmbH, "Dr. Maertens" Marketing GmbH v. Ma Ying Jo/PrivacyProtect.org
Case No. D2011-0357
1. The Parties
The Complainants are "Dr. Martens" International Trading GmbH of Gräfelfing, Germany and "Dr. Maertens" Marketing GmbH of Seeshaupt, Germany represented by Beetz & Partner of Germany.
The Respondent is Ma Ying Jo/PrivacyProtect.org of Shanghai, the People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <docmarten.com> is registered with RegisterMatrix.com Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2011. On February 23, 2011, the Center transmitted by email to RegisterMatrix.com Corp. a request for registrar verification in connection with the disputed domain name. On February 28, 2011, RegisterMatrix.com Corp. transmitted by email to the Center its verification response confirming that the 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 the Complainant on March 1, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 2, 2011. 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 the Respondent of the Complaint, and the proceedings commenced on March 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 24, 2011. The Response was filed with the Center on March 17, 2011.
The Center appointed Anna Carabelli as the sole panelist in this matter on March 30, 2011. 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 a number of trademarks consisting of the words “Dr. Martens” and “Doc Martens” registered, amongst others, for footwear and clothing (Annex 4 to the Complaint).
The Complainants have submitted evidence that DR. MARTENS is a famous international brand for footwear, clothing and accessories, particularly renowned for its distinctive shoes and boots first sold in the late 1950 and now available throughout the world (Annexes 5 and 6 to the Complaint).
The disputed domain name was registered on June 17, 2000 as shown by a copy of the Registrar’s WhoIs database annexed to the Complaint. According to the evidence submitted by the Complainants the disputed domain name is used to host a parking website which features links to advertisements for the sale of footwear and of “Dr. Martens” footwear on websites which are not authorized to or approved by the Complainants as well as on websites which refer to competitors of the Complainants (Annex 7 to the Complaint).
5. Parties’ Contentions
The Complainants contend that the disputed domain name is almost identical to their registered trademarks and particularly to the DOC MARTENS trademarks, the only difference being the omission of the final “s”. In addition the disputed domain name is highly similar to the Complainants’ trademarks in respect to their phonetics, writings and meaning since “Dr.” and “Doc” are common abbreviation for “doctor”.
The Complainants assert that the Respondent has no rights or legitimate interests in the disputed domain name because the use thereof is likely to mislead or deceive consumers into believing that the Respondent is sponsored by, affiliated to, or has the approval of, the owners, licensees or customers of the original Dr. Martens products.
The Complainants further contend that the Respondent is not only passing off their goodwill and reputation in the DR. MARTENS trademarks and the Dr Martens name but is also making an unfair and illegitimate commercial use of the disputed domain name with the clear intention of commercial gain and to mislead customers as well as to tarnish the Complainants’ trade and service marks.
The Complainants also contend that the Respondent: (i) must have had knowledge of the Complainants’ trademark DR. MARTENS given its notoriety, (ii) is creating a likelihood of confusion with the Complainants’ name and trademarks as to the source, sponsorship, affiliation, or endorsement of its website, and (iii) is profiting from the goodwill in the Complainants’ trade marks by accruing click-through fees for each redirected and confused Internet user.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
Paragraph 15.a of the Rules instructs the Panel to 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.
Under paragraph 4.a of the Policy, the Complainants must prove each of the following:
(i) The disputed domain name is identical or confusingly similar to the Complainants’ trademark or service mark; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4.a(iii) shall be evidence of registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by the Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the disputed domain name for the purpose of paragraph 4(a)(ii) above.
A. Identical or Confusingly Similar
The Complainants have submitted evidence of their ownership of registrations for the mark “DR. MARTENS” and DOC MARTEN in Canada, United States of America and the European Union. The existence of these trademarks has not been contested by the Respondent.
The disputed domain name contains the term “docmarten”, which only differs from the Complainants’ DOC MARTENS trademark in that it drops the final “s” in the trade mark and omits a space between “doc” and “marten”. However spaces are not permitted in domain names and in any case “the absence of the space between the words is not significant in determining similarity” as stated by a previous WIPO decision (see “Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. PrivacyProtect.org/Tech Domain Services private Limited. WIPO Case No. D2010- 1342 )
In the Panel’s view the above differences cannot be considered sufficient to avoid confusion between the disputed domain name and the Complainants’ trademarks.
Accordingly the Panel finds that the Complainant has established element 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three circumstances which, if met, could demonstrate that a respondent does have rights or legitimate interests in a disputed domain name, and it is well established that this list is not exhaustive.
The Complainants established prima facie evidence that none of the above three circumstances applies. As stressed by many WIPO decisions, in such a case the burden of proof shifts on the Respondent to rebut the evidence (see among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia, Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, Case No. D2002-0683).
Since the Respondent failed to submit a Response, it made no attempt to rebut the Complainants’ allegations. The Panel accepts as true all allegations set forth in the Complaint and holds that the Respondent has no rights or legitimate interests in the disputed domain name.
According to the evidence submitted by the Complainants the disputed domain name is used to host a parking website which features links to advertisements for the sale of footwear and “Dr. Martens” footwear on websites which are not authorized or approved by the Complainants as well as on websites which refer to competitors of the Complainants (Annex 7 to the Complaint).
This is not a legitimate use of the disputed domain name as assessed by many prior UDRP decisions; in particular, in two cases involving the Complainants’ trademarks and domain names that were very similar to the disputed domain name in this case, namely <drmartenshoes.com> and <doctormartinsshoes.com> (see 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. Privac Protect.org/Tech Domain Services private Limited.supra, respectively) it was held that diverting Internet traffic to third party websites of direct competitors of the complainant can be considered to be misleading and damaging to the complainant’s trademarks.
Accordingly the Panel finds that the Complainants have established element 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Given the fame and notoriety of the Complainants – uncontested by the Respondent – the Panel finds that in all likelihood the Respondent should have been aware of the Complainants well-known trade marks at the time it registered the disputed domain name (see Revlon Consumer Products Corporation v. Domain Manager, PageUp Communications, WIPO Case No. 2003-0602; Microsoft Corporation v. Superkay Worldwide Inc., WIPO Case No. 2004-0071; Revlon Consumer Products Corporation. v. Easy Weight Loss Info, Augustinus Ferry Yonatan, WIPO Case No. 2010-0936; Hermes International, SCA v. cui zhenhua WIPO Case No. D 2010-1743) and the contents of the Respondent’s website corroborate this conclusion.
The Respondent’s awareness of the Complainants’ trade mark rights at the time of registration of the disputed domain name suggests opportunistic bad faith. (See Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007).
The website at the disputed domain name features sponsored links to competitors of the Complainant, presumably on a “pay per click” basis. Applying the comments of numerous other panelists (see L’Oreal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623, Deutsche Telekom AG v. Keyword Traffic, WIPO Case No. D2005-0443; Lowen Corporation d/b/a/ Lowen Sign Company v. Henry Chan, WIPO Case No. D2004-0430; Associazione Radio Maria v. Mr. Hong Hee Dong, WIPO Case No. D2005-0062; Micro Electronics Inc. v. J. Lee, WIPO Case No. D2005-0170), the Panel finds that such a use does not constitute a bona fide offering of goods or services and that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its web site (and hence divert Internet traffic) by creating a likelihood of confusion with the Complainants’ mark.
Accordingly the Panel finds that the Complainant has established element 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <docmaren.com> be transferred to either of the two Complainants.
Dated: April 8, 2011