WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

“Dr. Martens" International Trading GmbH, "Dr. Maertens" Marketing GmbH v. Huang Hailian

Case No. D2012-2200

1. The Parties

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

Respondent is Huang Hailian of Xiamen, China.

2. The Domain Name and Registrar

The disputed domain name <drmartensshoesoutletss.com> is registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2012. On November 7, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 20, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On November 21, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On the same day, Complainants 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 November 28, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 18, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 19, 2012.

The Center appointed Yijun Tian as the sole panelist in this matter on January 14, 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 “Dr. Martens" International Trading GmbH and "Dr. Maertens" Marketing GmbH, companies incorporated in Grafelfing and Seeshaupt, Germany, respectively. DR. MARTENS is a well-known international brand for footwear, clothing and accessories. Complainants have exclusive rights in the DR. MARTENS Marks. Complainants are the exclusive owners of famous and well-known registered trademarks DR. MARTENS globally (since 1983; see Annex 3 to the Complaint), including China (since 1991; see Annex 3 to the Complaint). It also owns the domain name registrations, such as <drmartens.com> and <drmartens.co.uk>, incorporating the DR. MARTENS Marks (see Annex 4 to the Complaint).

Respondent is Huang Hailian of Xiamen, China. The disputed domain name <drmartensshoesoutletss.com> was registered on September 20, 2012, long after the DR. MARTENS Marks were registered (Annex 3 to the Complaint).

5. Parties’ Contentions

A. Complainant

(a) The disputed domain name is identical or confusingly similar to various trade mark registrations in which Complainants have rights.

Complainants are the exclusive owners of trade mark rights in the DR. MARTENS Marks globally (since 1983; see Annex 3 to the Complaint), including China (since 1991; see Annex 3 to the Complaint).

DR. MARTENS is a well-known international brand for footwear, clothing and accessories, particularly renowned for its distinctive shoes and boots, first sold in the late 1950’s.

Dr. Martens footwear, clothing and accessories are available for sale at retails throughout the world, and relevantly through many retails in Australia, as well as online at the Dr. Martens website <drmartens.com> (see Annex 4 to the Complaint).

Evidence shows that worldwide consumers recognize DR. MARTENS brand (see Annex 5 to the Complaint).

The disputed domain name <drmartensshoesoutletss.com> is a combination of descriptive elements “shoes”, “outlets”, “s” and the characterizing name “drmartens”.

With respect to the fact that the element “shoes”, “outlets”, “s” are merely and clearly descriptive, the respective consumers will pay their major attention to the first characterizing element “drmartens”.

The various trade mark DR. MARTENS are de facto identical with “drmartens”. The omission of the point between “dr” and “martens” is not sufficient enough in order to avoid likelihood of confusion.

(b) Respondent has no rights or legitimate interests in respect of the disputed domain name.

The disputed domain name is used by Respondent to operate an unofficial website taking all devices and trade marks from Complainant’ website <drmartens.com> which has never been authorized or approved by the trade mark owner.

By choosing and using the disputed domain name, Respondent is likely to mislead and deceive consumers into believing that he has a sponsorship, affiliation or approval with the original DR. MARTENS trade mark owners when this is not the case.

Respondent is clearly making false representations that he and/or his website have a sponsorship, approval or association with the original DR. MARTENS trade mark owners which is not the case.

Respondent is hereby passing off the trade mark owners’ goodwill and reputation in the DR. MARTENS trade marks and the “Dr. Martens” name.

Respondent is likely to make an illegitimate commercial and unfair use of the disputed domain name with the clear intension for commercial gain misleading to divert consumers and to tarnish the trade mark and service marks DR. MARTENS.

From the fact provided above, nothing seems to indicate that Respondent has any rights or legitimate interests in respect of the disputed domain name.

(c) The disputed domain name was registered and is being used in bad faith.

By selecting the disputed domain name, Respondent intentionally attempted to attract for commercial gain Internet users to Respondent’s website or other online location, by creating likelihood of confusion with Complainants’ trade marks 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 linking <drmartensshoesoutletss.com> with unauthorized websites which are selling competitors’ and Dr. Martens footwear without being authorized or approved by the trade mark owners.

Respondent must have had knowledge of Complainants’ rights in the DR. MARTENS trade marks when it registered the disputed domain name, since Complainants’ trade marks are widely well-known trade marks, and Respondent has combined it in the disputed domain name with words (“shoes”, “outlets”, “s”) which are descriptive as a general term.

Respondent’s awareness of Complainants’ trade mark rights at the time of registration suggest opportunistic bad faith registration.

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

This is likely that Respondent is intentionally attempting to attract Internet users for commercial gain. By doing so, Respondent is creating a likelihood of confusion with Complainants’ trade marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.

It is more than likely Respondent is profiting from the goodwill associated with Complainants’ trade mark 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

Respondent did not reply to Complainants’ contentions.

6. Discussion and Findings

6.1 Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the 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 on the record, no agreement appears to have been entered into between Complainants and Respondent to the effect that the language of the proceedings should be English. Complainants filed initially their Complaint in English, and have requested that English be the language of the proceedings for the following reasons:

(a) The concerned registrar is an ICANN accredited registrar and usually has knowledge of the English language.

(b) The content of the homepage at <drmartensshoesoutletss.com> is written in English (Annex 6 of the Complaint).

(c) All documentation provided with the Complaint is in English.

(d) Therefore, it would make sense for practical as well as for legal reasons to conduct the proceedings in English.

Respondent did not make any submissions with respect to the language of the proceedings and did not object to the use of English as the language of the proceedings.

Paragraph 11(a) allows the Panel to determine the language of the proceedings having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceedings. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceedings should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states:

“in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).

The Panel has taken into consideration the facts that Complainants are companies from Germany, and Complainants will be spared the burden of working in Chinese as the language of the proceedings. The Panel has also taken into consideration the facts that the websites at the disputed domain name are in English and that the disputed domain name includes Latin characters “dr”, “s” and “martens” and English words “shoes” and “outlets” (Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).

On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that Respondent has sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name <drmartensshoesoutletss.com> is registered in Latin characters and particularly in English language, rather than Chinese script; (b) the website at the disputed domain name is an English-based website and Respondent is apparently doing business in English through this website (Annex 6 to the Complaint); (c) the website appears to have been directed to users worldwide (particularly English speakers) rather than Chinese speakers; (d) the Center has notified Respondent of the proceedings in both Chinese and English, and Respondent has indicated no objection to Complainant’s request that English be the language of the proceedings; (e) the Center informed Respondent that it would accept a Response in either English or Chinese.

Considering these circumstances, the Panel finds the choice of English as the language of the present proceedings 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. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.

6.2. Discussion and Findings

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trade mark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

On the basis of the evidence introduced by 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 Panel finds that Complainants have rights in the DR. MARTENS Marks acquired through registration. The DR. MARTENS Marks have been registered worldwide including in China, and Complainants have a widespread reputation in producing footwear, clothing and accessories, particularly renowned for its distinctive shoes and boots.

The disputed domain name <drmartensshoesoutletss.com> comprises the DR. MARTENS Mark in its entirety. The disputed domain name only differs from Complainant’s trade mark by the addition of the words “shoes”, “outlets” and “s” to the mark DR. MARTENS. This does not seem to eliminate the identity or at least the similarity between Complainant’s registered trade mark and the disputed domain name.

Previous UDRP panels have consistently held that a domain name may be identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

Generally a respondent “may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; PCCW-HKT DataCom Services Limited v. Yingke, ADNDRC Case No. HK0500065).

The mere addition of the descriptive terms “shoes”, “outlets” and ‘s’ as suffixes to Complainant’s mark fails to distinguish to this Panel the disputed domain name from Complainants’ trade mark. By contrast, it may increase the likelihood of confusion. “Shoes” are one of renowned products of Complainant. One of common meanings of the term “outlet” is a store that sells the goods of a particular manufacturer or wholesaler. Internet users who visit <drmartensshoesoutletss.com> are likely to be confused and may falsely believe that <drmartensshoesoutletss.com> is an online shop operated by Complainants for selling DR. MARTENS-branded products, particularly shoes. Thus, the Panel finds that the additions are not sufficient to negate the confusing similarity between the disputed domain name and the DR. MARTENS Marks.

The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:

(i) use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services;

(ii) the fact that Respondent has commonly been known by the disputed domain name; or

(iii) legitimate noncommercial or fair use of the disputed domain name.

The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).

Complainants have rights in the DR. MARTENS Marks globally (since 1983), including registration in China since 1991 – (see Annex 3 to the Complaint) which long precedes Respondent’s registration of the disputed domain name (September 20, 2012).

According to Complainants, DR. MARTENS is a well-known international brand for footwear, clothing and accessories, particularly renowned for its distinctive shoes and boots, first sold in the late 1950’s. Moreover, Respondent is not an authorized dealer of DR. MARTENS branded products. Complainants have therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

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

(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the word “Dr. Martens” in its business operation or the use of the DR. MARTENS Marks and design on its website (without disclaimer or other clarifying details). There has been no evidence to show that Complainants have licensed or otherwise permitted Respondent to use the DR. MARTENS Marks or to apply for or use any domain name incorporating the DR. MARTENS Marks;

(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trade mark rights with respect to the disputed domain name. Respondent registered the disputed domain name <drmartensshoesoutletss.com> on September 20, 2012. The disputed domain name is identical or confusingly similar to Complainant’s DR. MARTENS Marks.

(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainant, Respondent was in actuality advertising, offering and selling purported Dr. Martens products at <drmartensshoesoutletss.com> (Annex 6 to the Complaint).

The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.

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 disputed domain name in bad faith, namely:

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

(ii) Respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

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

(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other online location, by creating a likelihood of confusion with Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or location or of a product or service on Respondent’s website or location.

The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.

a) Registered in Bad Faith

The Panel finds that Complainants have a widespread reputation in the DR. MARTENS Mark with regard to its products. Complainants have registered its DR. MARTENS Marks internationally, including registration in China (since 1991). Moreover, the Website advertises for sale various purported Dr. Martens products. Respondent would likely not have advertised products purporting to be Dr. Martens products on the Website if it was unaware of Complainants’ reputation. In the other words, it is not conceivable to the Panel that Respondent would not have had actual notice of Complainants’ trade mark right at the time of the registration of the disputed domain name. The Panel therefore finds that 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 Complainants. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).

Moreover, Respondent has chosen not to formally respond to Complainants’ allegations. According to the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”. (See also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787). Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with Complainants’ DR. MARTENS branded products.

b) Used in Bad Faith

Complainants have adduced evidence to prove that by using a confusingly similar disputed domain name, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites” offering purportedly Complainants’ DR. MARTENS branded products and services without authorization. Complainants claimed that, by selecting the disputed domain name, Respondent intentionally attempted to attract for “commercial gain” Internet users to Respondent’s website or other online location.

To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. and Wal-Mart China Co. Ltd v. Liangchenyong, ADNDRC Case No. HKcc-0800008).

Given the widespread reputation of the DR. MARTENS Marks (as well as the content on the Website mentioned above), the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainants, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the disputed domain name is resolved (see Annexes 4 and 6 to the Complaint). In other words, Respondent has through the use of a confusingly similar disputed domain name and webpage contents created a likelihood of confusion with the DR. MARTENS Marks. Noting also that apparently no clarification as to Respondent’s relationship to Complainants is made on the homepage of the disputed domain name, potential Internet users are led to believe that the website at <drmartensshoesoutletss.com> is either Complainants’ sites or the sites of official authorized agents of Complainants, which it is not. Moreover, Respondent has not responded formally to the Complaint. The Panel therefore concludes that the disputed domain name was used by Respondent in bad faith.

In summary, Respondent, by choosing to register and use the disputed domain name which is confusingly similar to Complainants’ trade mark, intended to ride on the goodwill of Complainants’ trade mark in an attempt to exploit, for commercial gain, Internet users destined for Complainants. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the Website to which the disputed domain name resolves is indicative of registration and use of the disputed domain name in bad faith.

The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.

7. Decision

For all 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 at <drmartensshoesoutletss.com> be transferred to Complainants.

Yijun Tian
Sole Panelist
Dated: January 31, 2013