WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
“Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. Gong Qi
Case No. D2012-2385 1. The Parties
Complainants are “Dr. Martens” International Trading GmbH of Grafelfing, Germany, and “Dr. Maertens” Marketing GmbH of Seeshaupt, Germany, represented by Beetz & Partner, Germany.
Respondent is Gong Qi of Shanghang, Fujian, China.
2. The Domain Name and Registrar
The disputed domain name <drmartenscaliente.com> is registered with Web Commerce Communications Limited dba WebNic.cc (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2012. On December 5, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 5, 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.
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 December 10, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 30, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 3, 2013.
The Center appointed Roberto Bianchi as the sole panelist in this matter on January 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
Complainants are in the business of manufacturing and marketing footwear, clothing and clothing accessories.
Complainants own the following registrations for the DR. MARTENS trademark:
Community Trademark, Reg. No. 000059147, Reg. Date March 3, 1999, covering various goods, including footwear and clothing in class 25 and retail services in class 35; Australian Trademark Reg. No. 500799, Reg. Date May 13, 1997, covering clothing, footwear and headgear in class 25; Australian Trademark Reg. No. 570247, Reg. Date December 30, 1996, covering clothing and headgear in class 25; Australian Trademark No. 652619, Reg. Date November 29, 1996, covering retail services and wholesale stores in class 35; Australian Trademark Reg. No. B400023, Reg. Date November 7, 1995, covering footwear and clothing in class 25; Australian Trademark Reg. No. 916942, Reg. Date April 29, 2003, covering retail services in the field of footwear, clothing etc. in class 35; Canadian Trademark Reg. No. 420485, Reg. Date December 10, 1993, covering mainly footwear and clothing in class 25; Canadian Trademark Reg. No. 625884. Reg. Date November 18, 2004, covering mainly retail services in the field of footwear and clothing in class 35; United States Trademark Reg. No. 1454323, Reg. Date August 25, 1987, covering soles for boots and for shoes in class 25; United States Trademark Reg. No. 1798791, Reg. Date October 12, 1996, covering footwear in class 25; United States Trademark Reg. No. 2838397, Reg. Date May 4, 2004, covering retail store services in the field of footwear and clothing in class 35, and International Trademark Reg. No. 575311, Reg. Date July 18, 1991, covering leather and leather products in class 18 and clothing and clothing accessories in class 25.
The disputed domain name was registered on January 10, 2012.
5. Parties’ Contentions
A. Complainant
In its Complaint, Complainants contend as follows:
The disputed domain name is identical or confusingly similar to various trademark registrations for DR. MARTENS in which Complainants have rights.
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’s. DR. MARTENS footwear, clothing and accessories are available for sale at retailers throughout the world, and relevantly through many retailers in Australia, as well as online at the “www.drmartens.com” website.
The disputed domain name is a combination of the term “caliente” (which is “hot” in Spanish) and the characterizing name “drmartens”. Since the term “caliente” is merely and clearly descriptive, consumers will likely remark the characterizing element “drmartens”, which is identical to the DR. MARTENS trademarks of Complainants. The omission of the point between “dr” and “martens” is not sufficient to avoid a likelihood of confusion.
Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent has been using the disputed domain name to host a parked website featuring links to advertisements for the sale of footwear and of “Dr. Martens” footwear on websites which are not authorized or approved by Complainants as well as on websites which refer to competitors of Complainants. By using the disputed domain name and by making false representations, Respondent is likely to mislead and deceive consumers into believing that it has a sponsorship by, affiliation with or approval by the original DR. MARTENS trademark owners or their licensees or customers, where this is not the case. Respondent is hereby passing off Complainants goodwill and reputation in the DR. MARTENS trademarks and the “Dr. Martens” name.
Respondent is making an illegitimate commercial and unfair use of the disputed domain name with the clear purpose of commercial gain and misleadingly diverting consumers and to tarnish the DR. MARTENS trademarks and service marks. From the facts referred to above, nothing seems to indicate that Respondent has any rights or legitimate interests in respect of the disputed domain name. It is further suspected that the activities on the website at the disputed domain name were related to credit card phishing.
The disputed domain name was registered and is being used in bad faith. Respondent must have had knowledge of Complainants’ rights in the DR. MARTENS trademarks when it registered the disputed domain name, since Complainants’ DR. MARTENS trademarks are well known. Respondent has combined this mark in the domain name with the descriptive term “caliente”. Respondent’s awareness of Complainants’ trademark rights at the time of registration suggests opportunistic bad faith registration. Since Respondent must have had knowledge of Complainants’ rights in the DR. MARTENS trademarks at the moment it registered the disputed domain name, and since Respondent has no legitimate interests in the disputed domain name, it is established that the disputed domain name was registered in bad faith.
Respondent is linking the “www.drmartenscaliente.com” website to websites which are selling Complainants’ and their competitors’ footwear without having been authorized or approved by the owners of DR. MARTENS trademarks or by their licensees. By using the disputed domain name, Respondent intentionally attempted to attract for commercial gain Internet users to its website or other online location, by creating a likelihood of confusion with Complainants’ trademarks 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.
B. Respondent
Respondent did not reply to Complainants’ contentions, and is in default.
6. Discussion and Findings
Under Policy, paragraph 4(a), a complainant must make out its case that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the 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.
A. Identical or Confusingly Similar
By submitting copies of certificates of registration and printouts of records from official trademark databases, Complainants have shown that they have rights in the DR. MARTENS mark. See section 4 above.
The disputed domain name combines the DR. MARTENS mark with the generic Spanish term “caliente”, which means, “hot” or “warm”. In the Panel’s view, neither the addition of this generic element and the gTLD “.com”, nor the absence of the dot and the space between “dr” and “martens” in the disputed domain name, is sufficient to alter the impression of confusing similarity with Complainants’ mark DR. MARTENS. See “Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. Jiang Gu, WIPO Case No. D2012-0382 (“The only difference between the Disputed Domain Name and the trade mark DR. MARTENS is the addition of a descriptive suffix ‘barato’ which means ‘cheap’ in Spanish. The Panel is of the view that this difference does not assist in distinguishing the Disputed Domain Name from the trade mark DR. MARTENS.”)
The first element of the Policy is thus met.
B. Rights or Legitimate Interests
It is well established that a complainant must first establish a prima facie case that the respondent lacks any rights or legitimate interests in the disputed domain name, and once this is done, the burden shifts to the respondent to show that it has at least some right or legitimate interest in the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1:
“[A] complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]”
In the instant case Complainants contend that Respondent has been using a parked website at the disputed domain name to feature links to advertisements for the sale of footwear, including DR. MARTENS footwear on websites which are not authorized or approved by Complainants as well as on websites referring to competitors of Complainants. Complainants add that by using the disputed domain name, Respondent is likely to mislead and deceive consumers into believing that it has a sponsorship by, affiliation with, or approval by the original DR. MARTENS trademark owners or their licensees or customers, where this is not the case. Thus, Respondent is passing off Complainants’ goodwill and reputation in the DR. MARTENS trademarks. Complainants also contend that Respondent is making an illegitimate commercial and unfair use of the disputed domain name with the clear purpose of commercial gain and misleadingly to divert consumers and to tarnish the DR. MARTENS mark. Finally, Complainants state that it is suspected that activities on the website at the disputed domain name were related to credit card phishing.
On December 10, 2012, the Center conducted a look-up visit to the disputed domain name and the corresponding website “www.drmartenscaliente.com” in conjunction with its obligations under paragraph 2(a) of the Rules. The requested URL could not be retrieved and the following error was encountered while trying to retrieve the URL “http://drmartenscaliente.com”: “Unable to determine IP address from host name “drmartenscaliente.com”. The DNS server returned: “Server Failure: The name server was unable to process such query.” On January 17, 2013, the Panel visited the “www.drmartenscaliente.com” website, and found a parked web page containing commercial links offering various products and services. One such link resolved to the “www.rojoservice.com.ar/zapatos.html?gclid=CLrklriK8LQCFQSqnQodyz4A8A” web page, on which safety boots and other footwear from competitors of Complainants were being offered.
Also, on January 18, 2013, the Panel, through the “www.archive.org” website, searched for historic web pages at the disputed domain name. The only available web pages crawled by the Internet Wayback Machine correspond to March 18, 22 and 23, and April 18, 2012, and show ads and texts in Spanish relating to “Dr. Martens” shoes and boots for men, ladies and children, as well as numerous links to the “www.shopwiki.com” website, therein described as a shopping search engine. These web pages also contain links and fill-in fields for Internet users to create accounts and buy “Dr. Martens” footwear online.
The Panel’s overall impression from the evidence, including the independent search results, is that Respondent, without any authorization or consent from Complainants, has been using the DR. MARTENS mark to attract Internet users presumably looking for Complainants’ footwear, to the website at the disputed domain name, offering them to enroll and buy online footwear labeled “Dr. Martens” (whether authentic or not). Presently, Respondent appears to have ceased to actively market “Dr. Martens” footwear and, via a pay-pay-click scheme, is presumably generating income from links marketing various products and services, including those totally unrelated to Complainants line of business, as well as footwear from competitors of Complainants. Whether or not Respondent selected these ads and links personally, and even if the provider of the parking service automatically displayed them, Respondent clearly appears to be seeking to obtain profit from the confusion generated among Internet users presumably looking for Complainants’ DR. MARTENS products. It is well established that this kind of use of a domain name is not a bona fide offering or goods or services pursuant to Policy paragraph 4(c)(i). Nor is Respondent making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish Complainants’ mark pursuant to Policy paragraph 4(c)(iii). As shown, Respondent is using Complainants’ mark to generate income via a pay-per-click scheme only made possible because Complainants’ mark is well known or famous, which attracts the interest of Internet users looking for DR. MARTENS products. See WIPO Overview 2.0, paragraph 2.6:
(“Panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a ‘bona fide offering of goods or services’ […] or from ‘legitimate noncommercial or fair use’ of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder.”)
Since there is no allegation or evidence that Respondent is commonly known by the disputed domain name, or by any other term corresponding to the disputed domain name, Policy, paragraph 4(c)(ii) must be excluded.
Finally, Respondent did not submit any explanation or evidence whatsoever that it may have some right or legitimate interest in the disputed domain name.
Accordingly, the Panel concludes that the second element of the Policy is met.
C. Registered and Used in Bad Faith
Complainants’ mark for footwear has been considered widely known or famous. See e.g. Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Above.com Domain Privacy/Transure Enterprise Ltd., WIPO Case No. D2009-1253. Complainants’ extensive use of the DR. MARTENS mark and their registrations for this mark in several jurisdictions predate the registration of the disputed domain name – made on January 10, 2012 - by many years. See section 4 above. Also, Complainants began operating their “www.drmartens.com” website to market DR. MARTENS products much before the registration of the disputed domain name. Further, aside from having offered online “Dr. Martens” products (whether authentic or not), Respondent’s website at the disputed domain name presently contains links to commercial websites offering products including some directly competing with those protected by Complainants’ DR. MARTENS mark. Also, the disputed domain name consists of Complainants’ mark in its entirety, merely adding a generic term in Spanish possibly implying that DR. MARTENS footwear is “hot” or comfortably “warm” in winter. In the opinion of the Panel, this - presumably laudatory - combination of terms suggests that Complainants’ mark was known and intentionally chosen. Finally, Respondent did not submit a response, and has not denied or qualified in the least its previous knowledge and targeting of Complainants’ mark.
These facts lead the Panel to conclude that Respondent in all likelihood knew of Complainants and/or their DR. MARTENS trademark and products, and targeted them when it registered the disputed domain name, which is evidence of registration in bad faith.
Although the Panel did not find evidence on the record that Respondent is engaged in credit card fraud or phishing, as suggested by Complainants, Respondent’s use of the disputed domain name <drmartenscaliente.com> nevertheless appears to be in bad faith. In 2012, on the website at the disputed domain name, Respondent has been luring Internet users presumably looking for DR. MARTENS mark and goods into believing that its website is official, or that it is sponsored by Complainants.
As to the present use of the disputed domain name, whether or not Respondent is causing the website at the disputed domain name to post commercial links presumably generating click-through income, Respondent is deemed responsible for such content. See WIPO Overview 2.0, paragraph 3,8:
(“Panels have found that a domain name registrant will normally be deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content - for example, in the case of advertising links appearing on an "automatically" generated basis. To the extent that the presence of certain advertising or links under such arrangement may constitute evidence of bad faith use of the relevant domain name, such presence would usually be attributed to the registrant unless it can show some good faith attempt toward preventing inclusion of advertising or links which profit from trading on third-party trademarks.”)
Thus, Respondent appears to be intentionally attempting to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its website or location, which is evidence of registration and use in bad faith pursuant to Policy paragraph 4(b)(iv).
The Panel concludes that the disputed domain name was registered and is being used in bad faith.
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 <drmartenscaliente.com> be transferred to the Complainants.
Roberto Bianchi
Sole Panelist
Date: January 21, 2013