WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
“Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. LinHua
Case No. D2012-0435
1. The Parties
Complainants are “Dr. Martens” International Trading GmbH of Gräfelfing, Germany and “Dr. Maertens” Marketing GmbH Seeshaupt, Germany, represented by Beetz & Partner, Germany.
Respondent is LinHua of Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <drmartenonsale.com> is registered with Xin Net Technology Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2012. On March 5, 2012, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain name. On March 8, 2012, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On March 9, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On March 12, 2012, the Complainant confirmed its request that English be the language of proceeding. 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 Respondent of the Complaint, and the proceedings commenced on March 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 5, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 10, 2012.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on April 25, 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
Complainants sell footwear, clothing, and accessories under the DR. MARTENS trademark which has been registered for these goods in multiple jurisdictions including Australia, Canada, the European Community, and the United States of America. Complainants’ goods and Complainants’ DR. MARTENS trademark have been featured in multiple third party publications and have been recognized by third party evaluators as a brand with an iconic reputation.
Respondent is based in China. The disputed domain name was created on August 15, 2011.
5. Parties’ Contentions
Complainants claim that the disputed domain name <drmartenonsale.com> is confusingly similar to the DR. MARTENS trademark because it combines the trademark with the descriptive element “onsale”. Complainants also claim that the exclusion of the letter “s” from their DR. MARTENS trademark in the disputed domain name <drmartenonsale.com> is not a material difference which would avoid consumer confusion. Complainants maintain that they have not authorized Respondent to use the DR. MARTENS trademark and that Respondent does not have any rights or legitimate interests in or to the disputed domain name. Complainants allege that Respondent was aware of Complainants and Complainants’ trademark rights in DR. MARTENS when registering the disputed domain name because the disputed domain name incorporates Complainants’ DR. MARTENS trademark. Regarding use of the disputed domain names, Complainants allege that Respondent has linked the website featured at the disputed domain name with websites which offer products of third party competitors of Complainants, and alleges that this use has been in bad faith because it is creating consumer confusion and trading off the goodwill of Complainants’ DR. MARTENS trademark. The Complaint requests that the disputed domain name be transferred from Respondent to Complainants.
Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
A. Language of Proceeding
The language of the registration agreement for the disputed domain name is Chinese. Complainants have requested that English be recognized as the language of the proceeding. Respondent has not commented regarding the language of the proceeding. The Center has communicated notice of the Complaint in both the English and Chinese languages and has invited Respondent to answer the Complaint in either language.
The Center has communicated with Respondent in the English and Chinese languages and has provided Respondent with the opportunity to file its response in either language. The content featured on the website at the disputed domain name is displayed in the English language, and this demonstrates that Respondent has a working knowledge of this language. Taking the foregoing points into account along with Respondent’s default and lack of any communication in this proceeding, the Panel concludes that English should be the language of the proceedings. Translation of the Complaint and other materials would cause unnecessary cost and delay.
B. Identical or Confusingly Similar
The record shows that Complainants own rights in DR. MARTENS which are recognized, inter alia, in the European Community, the United States, Canada, and Australia. The disputed domain name <drmartenonsale.com> features the DR. MARTENS trademark without its final letter (i.e., “s”).
It is not a requirement of the Policy that a complainant’s trademark rights be recognized in a respondent’s country of residence. See, e.g., Advanced Magazine Publishers Inc. v. Computer Dazhong, WIPO Case No. D2003-0668 (“The Policy requires that the disputed domain name must be identical or confusingly similar to a mark in which the Complainant has rights. This requirement can be satisfied by proof that the Complainant is the owner or licensee of a registered mark anywhere in the world – not just in the country of Respondent’s residence”). A majority of the results of an Internet search query for “Dr. Martens” are related to Complainants’ goods; it is therefore difficult to imagine a scenario where consumers would not be confused by the use of the trademark to compose a domain name.
The disputed domain name combines a literal element composed of a majority of Complainants’ DR. MARTENS trademark with the literal element “onsale”. The Panel views the “DrMarten” portion of this disputed domain name as a misspelling of Complainants’ DR. MARTENS trademark. When evaluating misspellings, it is appropriate to review the disputed domain name(s) vis a vis the trademark(s) at issue to determine whether the misspellings create a new or different mark in which a respondent would have rights in for the purpose of the proceeding. See, e.g., adidas-Salomon AG v. Digi Real Estate Foundation, Patrick Williamson, WIPO Case No. D2006-0748. In this case, the Panel does not believe that the exclusion of the letter “s” from Complainants’ DR. MARTENS trademark creates a new or different mark or literal element which is substantially different to Complainants’ trademark to which Respondent would be entitled. Respondent’s use of this misspelling of Complainants’ DR. MARTENS mark in combination with the literal element “onsale” does not form a domain name which is sufficiently distinct to avoid a likelihood of confusion. The literal element “onsale” in domain names has been regarded by prior UDRP panels as non-distinctive due to its connotation, specifically that the domain name is a place where goods are sold (See, e.g., Richemont International S.A. v. Admin Domain, Domain Admin and Domain Admin, WIPO Case No. D2012-0032 and Pandora Jewelry, LLC v. David Lee, WIPO Case No. D2010-0582). Accordingly, use of the literal element “onsale” in this domain name actually aggravates the likelihood of consumer confusion when used with “DrMarten”, as consumers would likely believe that the disputed domain name may be is connected with Complainants and is a place where Complainants’ merchandise can be obtained. Prior UDRP panels have made the same conclusions regarding confusing similarity involving similarly composed domain names. See, e.g., Tiffany (NJ) LLC, Tiffany and Company v. Whois Privacy Protection Service, Inc. and Ning Zhou, WIPO Case No. D2009-0189.
The Panel concludes that the disputed domain name is confusingly similar to Complainants’ DR. MARTENS trademark and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
C. Rights or Legitimate Interests
Complainants have established rights in the DR. MARTENS trademark which precede the creation of the disputed domain name. Additionally, the record shows that Complainants’ DR. MARTENS trademark has been highly publicized and used extensively.
There is no evidence in the record to indicate that Respondent is associated or affiliated with Complainants, or that Respondent has any other rights or legitimate interests in the terms used to compose the disputed domain name. Complainants have provided prima facie evidence of Respondent’s lack of rights or legitimate interests in the disputed domain name, and the burden of production therefore shifts to Respondent to come forward with evidence demonstrating any rights or legitimate interests it may have. However, Respondent has not submitted any evidence of rights or legitimate interests in the disputed domain name.
The Panel therefore finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
D. Registered and Used in Bad Faith
The record shows that Complainants own trademark rights in DR. MARTENS which precede creation of the disputed domain name. The disputed domain name is predominantly composed of this trademark. A simple Internet search for “Dr. Martens” results in links predominantly related to Complainants and Complainants’ goods. It is clear that Respondent was likely aware of Complainants or should have known of Complainants when registering the disputed domain name.
The record shows that the content of the disputed domain name has featured Complainants’ DR. MARTENS trademark and has advertised goods identical to those provided by Complainants under the DR. MARTENS trademark. These goods include products produced by third party competitors of Complainants. Paragraph 4(b)(iv) of the Policy states that where a registrant, by using a domain name, intentionally attempts to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website, such use constitutes evidence of bad faith registration and use. There is no evidence in the record to indicate that Respondent chose the disputed domain name which is subject of the Complaint based upon a bona fide intent to offer goods including those provided by Complainants under the DR. MARTENS trademark. On the contrary, the record shows that Respondent has used the disputed domain name to advertise goods produced by third parties. Moreover, the incorporation of Complainants’ trademark in the disputed domain name combined with the content featured on the disputed domain name illustrates an intent to deceive consumers into believing that the disputed domain name is somehow associated with, affiliated with, and/or endorsed by Complainant. There is no evidence in the record to refute this conclusion.
Furthermore, it should be noted that the use of a domain name featuring a trademark to advertise goods or services which compete with those provided under that trademark supports a finding that the domain name registrant was aware of the other party’s mark at the time the domain name was registered. Lancôme Parfums et Beaute & Compagnie v. D Nigam, Privacy Protection Services / Pluto Domains Services Private Limited, WIPO Case No. D2009-0728. By registering a domain name using Complainants’ DR. MARTENS trademark and advertising goods of Complainants’ competitors, Respondent is diverting traffic from Complainants’ websites.
The Panel concludes that Respondent’s conduct falls within the scope of paragraph 4(b)(iv) 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 domain name <drmartenonsale.com> be transferred to Complainants.
Kimberley Chen Nobles
Dated: May 25, 2012