WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
“Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Whois Privacy Protection Service, Inc., Whois Agent / David J Thornton
Case No. D2013-0885
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, Germany.
The Respondent is Whois Privacy Protection Service, Inc., Whois Agent of Bellevue, Washington, United States of America / David J Thornton of Boston, Massachusetts, United States of America.
2. The Domain Name and Registrar
The disputed domain name <drmartens1460sale.com> is registered with Name.com LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 21, 2013. On May 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response 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 Complainants on May 30, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on June 3, 2013.
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 with the amendment to the Complaint, and the proceedings commenced on June 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 24, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 25, 2013.
The Center appointed George R. F. Souter as the sole panelist in this matter on July 2, 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 Complainants are two companies in the Dr. Martens group which manufacture and sell footware and other goods. Details of extensive international protection of their DR MARTENS trade mark, including United States Federal and European Community registrations, have been supplied to the Panel, together with extensive details of the Complainants’ use of the mark in commerce.
The disputed domain name was created on October 9, 2012.
5. Parties’ Contentions
The Complainants allege that the disputed domain name is confusingly similar to their DR MARTENS trade mark, containing that trade mark in its entirety with the mere addition of two descriptive elements, “1460” and “sale”.
The Complainants allege that the Respondent is, for commercial gain, making a deliberate attempt to divert potential customers of the Complainants’ products, and there is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name.
The Complainants allege that the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainants must prove to merit a finding that the disputed domain names of the Respondent be transferred to the Complainants or be cancelled:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainants have 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
It is well-established in decisions under the UDRP that generic Top-Level Domain (“gTLD”) indicators (i.e. “.com”, “.info”, “.net”, “.org”) may be considered irrelevant in assessing confusing similarity between a trade mark and a domain name. The Panel agrees with this view and considers these indicators to be irrelevant in the present case.
It is well-established in decisions under the UDRP that the addition of non-distinctive and descriptive elements to an established trade mark is insufficient to avoid a finding of confusing similarity between the complainant’s trade mark and the disputed domain name (the decision in F. Porsche AG v. Glenn Stefan Karlsson-Springare, WIPO Case No. D2011-1727 and many others). The Panel agrees with this well-established view, finds that “1460” (which has historical significance particular to the Complainants) and “sale” are descriptive elements in the circumstances of the present case, and, consequently, finds that the Complainants have satisfied the test set out in paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Where the respondent has failed to demonstrate rights or legitimate interests in the domain name, it is the predominant view of panels in previous UDRP decisions, with which the present Panel agrees, that an unrebutted prima facie case advanced by the complainant will be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy.
In this case, the Respondent did not take advantage of the opportunity presented in these proceedings to advance any justification of a claim to rights or legitimate interests in the disputed domain name, and the Panel can draw the appropriate conclusion under the Policy. The Panel accepts the Complainants’ contentions (above) under paragraph 4(a)(ii) of the Policy as establishing a prima facie case, and, accordingly, finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel is of the view that, in the case of an established trade mark, the finding that the respondent has no rights or legitimate interests in the disputed domain name, may lead, in appropriate circumstances, to a finding that the disputed domain name was registered in bad faith. The Panel accepts from the evidence presented that the Complainants’ DR MARTENS trade mark is well-established, and considers that the circumstances of the present case, in which it seems to the Panel that the disputed domain name was deliberately “engineered” to appear to emanate from the Complainants in connection with the Complainants’ products, make it appropriate to find that the disputed domain name was registered in bad faith.
The Respondent is operating a website under the disputed domain name, in which reference is made to “dr martens 1460 Online Store”, which offers footware for sale, and where there is no disclosure on the website as to the Respondent’s relationship (if any) with the Complainants. It is well-established in decisions under the UDRP that use of a disputed domain name found to be confusingly similar to a complainant’s trade mark to deceivingly entice potential customers of a trade mark owner to that website constitutes use in bad faith, and the Panel finds, in the circumstances of the present case, that the Respondent’s use of its website operated under the disputed domain name constitutes use in bad faith. Accordingly, the Panel finds that the Complainants have satisfied the requirements of paragraph 4(a)(iii) 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 disputed domain name <drmartens1460sale.com> be transferred to the Complainants.
George R. F. Souter
Date: July 16, 2013