WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
“Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. Weng Chenguang
Case No. D2013-1182
1. The Parties
The Complainant is “Dr. Martens” International Trading GmbH of Gräfelfing, Germany, and “Dr. Maertens” Marketing GmbH of Seeshaupt, Germany (the “Complainant”), represented by Beetz & Partner, Germany.
The Respondent is Weng Chenguang, Xiongzhou, Jiangsu, China.
2. The Domain Name and Registrar
The disputed domain name <saledrmartensshoes.com> (the “Domain Name”) is registered with Bizcn.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2013. On July 2, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 3, 2013, 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. On July 4, 2013, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On July 5, 2013, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding 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 the Respondent of the Complaint, and the proceedings commenced on July 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 1, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 2, 2013.
The Center appointed Linda Chang as the sole panelist in this matter on August 8, 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 Complainant is the owner of DR. MARTENS, an international brand for footwear, clothing and accessories. The Complainant’s products are available for sale at retailers throughout the world, as well as online at the Dr. Martens website located at “www.drmartens.com”.
The Complainant has obtained a number of DR. MARTENS marks worldwide, inter alia, International Trademark Registration No. 575311 registered on July 18, 1991, which was granted territorial extension to China in class 25 and stays valid till now.
The Domain Name <saledrmartensshoes.com> was registered on January 15, 2013. The Domain Name currently does not resolve to any active website, but the Panel notices from the case file that the Domain Name was once diverted to two online shops located at “www.distinctdrmartens.com” and “www.originaldrmartensboots.com” that offer purported Dr. Martens footwear.
5. Language of the Proceedings
Under paragraph 11(a) of the Rules, the language of the proceedings shall be the language of the registration agreement, unless both parties agree otherwise, or the registration agreement specifies otherwise, or the panel determines otherwise.
The Complainant filed its Complaint in English and later requested for English to be the language of the proceedings for the following reasons:
(a) the Registrar is an ICANN registrar and usually has knowledge of the English language;
(b) the links offered by the Respondent are pointing to third parties’ English language websites; and
(c) all documentation provided with the Complaint is in English. It would make sense for practical as well as for legal reasons to conduct the proceedings in English.
As confirmed by the Registrar, the language of the Registration Agreement is Chinese. Based on the evidence presented on the record, no agreement appears to have been reached between the Complainant and the Respondent that the language of the proceedings should be English.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceedings by taking into account all relevant circumstances. It is established practice to take paragraphs 10(b) and 10(c) of the Rules into consideration for the purpose of determining the language of the proceedings to ensure that the parties are treated with equality and that each of them is given a fair opportunity to present its case.
The Panel notices that the Complainant is registered in Germany and operates its business in multiple jurisdictions including Australia, Canada and United States of America where the business primarily operates in English.
The Panel notices that the website at the Domain Name is currently inaccessible but was once resolved to websites, “www.distinctdrmartens.com” and “www.originaldrmartensboots.com", with their contents displayed in English.
The Panel further notices that the Respondent has been given an opportunity to object to the use of English as the language of the proceedings but it did not do so.
The Panel takes into consideration that the Complainant has submitted all documents in English, and additional expense and delay would likely be incurred if the Complaint is requested to be translated into Chinese. The Panel finds that using English as the language of the proceedings would not be prejudicial to the Respondent in its ability to articulate the arguments for the case, while the Complainant would be unfairly disadvantaged if the proceedings were to be conducted in Chinese.
Considering all of these circumstances, the Panel decides that the language of the proceedings shall be English and the decision will be rendered in English.
6. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to its various trademark registrations of DR. MARTENS. The Domain Name is a combination of the descriptive elements “sale” and “shoes” and the characterized name “drmartens”, which is identical to its mark DR. MARTENS. The mere addition of the descriptive words “sale” and “shoes” does not in any way prevent the likelihood of confusion.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent is using the Domain Name to point to a third party website offering for sale footwear showing the Complainant’s trademarks which are not authorized by the Complainant or its licensees. The Respondent is using the Domain Name in a manner which takes unfair advantage of and is detrimental to the Complainant’s earlier rights.
The Complainant finally contends that the Domain Name was registered and is being used in bad faith. The Respondent had knowledge of the Complainant’s rights to its trademark DR. MARTENS when registering the Domain Name, and its awareness of the Complainant’s trademark rights at the time of registration suggests opportunistic and bad faith registration. By selecting the Domain Name, the Respondent intentionally attempted to attract for commercial gain Internet users to the website or other online location, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and/or location and/or a product or service on the Respondent’s website or location.
The Respondent did not reply to the Complainant’s contentions.
7. Discussion and Findings
To succeed in a complaint, a complainant must, in accordance with paragraph 4(a) of the Policy, satisfy the UDRP panel of the following three elements:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Based on the evidence presented by the Complainant and the relevant provisions of the Policy, the Panel concludes as follows:
A. Identical or Confusingly Similar
The Complainant has obtained a number of trademark registrations for DR. MARTENS worldwide, inter alia, International Trademark Registration No. 575311 registered on July 18, 1991, which was granted territorial extension to China and stay valid till now. All trademark registrations presented by the Complainant predate the Domain Name. The Panel holds that the Complainant has introduced sufficient evidence demonstrating its established rights in the mark DR. MARTENS.
It is an accepted principle that an addition of the suffixes such as “.com” being the generic top-level domain is not a distinguishing factor. The Panel views that the Domain Name consists of three parts, “sale”, “drmartens” and “shoes”. The words “sale” and “shoes” are of descriptive and generic nature, while “drmartens” is identical to the Complainants’ trademark DR. MARTENS (with the symbol “.” omitted).
Given the descriptive nature of the words “sale” and “shoes”, the Panel agrees that the mere addition of the above-mentioned words does not avoid its confusing similarity with the Complainant’s mark DR. MARTENS but instead reinforces the confusing similarity as the Domain Name directly indicates the business of the Complainant. See Carlsberg A/S v. Personal/decohouse, decohouse, WIPO Case No. D2011-0972; ECCO Sko A/S v. Jacklee, WIPO Case No. D2011-0800.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy and the Domain Name is confusingly similar to the Complainant’s trademark DR. MARTENS.
B. Rights or Legitimate Interests
No evidence on the record shows that the Respondent has been authorized or permitted by the Complainant or its licensees to use the Complainant’s trademark DR. MARTENS. There is also no indication that the Respondent is commonly known by the Domain Name, or that before notice to the Respondent of the dispute, the Respondent was using, or preparing to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services.
The Panel is satisfied that the Complainant has established prima facie evidence that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(c) of the Policy. It is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to demonstrate its rights or legitimate interests. See among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683.
The Panel however notices that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the Domain Name. In accordance with paragraph 14 of the Rules, the Panel thus draws inferences therefrom as she considers appropriate, which are that the Respondent is unable to adduce evidence of any rights or legitimate interests to the Domain Name.
For all of the above reasons, the Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
Given the distinctive nature of the Complainant’s mark DR. MARTENS, and that the Complainant has acquired worldwide reputation, the Panel finds it inconceivable that the Respondent had no actual notice of the Complainant’s trademark DR. MARTENS at the time of registering the Domain Name, especially when the Respondent incorporated the word “shoes” in the Domain Name, which indicates exactly the business of the Complainant and the product covered by the Complainant’s mark DR. MARTENS. Consequently, it is pertinent for the Respondent to provide evidence to justify its choice of the term “drmartens”, failing which the Panel draws the conclusion that the Respondent registered the Domain Name in bad faith attempting to create a false impression of association with the Complainant’s trademark DR. MARTENS.
Evidence presented on the record shows that the Respondent was using the Domain Name to drive Internet users to online shops offering purported DR. MARTENS products. The mark DR. MARTENS is used on the websites as well as various DR. MARTENS products being offered for sale. The Respondent however has not identified itself as being independent from the Complainant by clearly stating on the sites its relation with the Complainant.
The Panel agrees that consumers who are seeking genuine products from the Complainant on the Internet may be attracted to a domain name incorporating the Complainant’s mark and may most likely be confused into believing that the websites associated with the Domain Name are owned or managed by the Complainant and/or the Respondent is affiliated with or authorized to sell products of the Complainant, which contradicts the fact. The Panel is satisfied that the Respondent is trying to falsely suggest an affiliation with the Complainant and the mark DR. MARTENS and bad faith is established by the Respondent’s use of the Domain Name to intentionally confuse Internet users and to trade on the Complainant’s reputation. The Panel therefore holds that the present case falls within the circumstances referred to in paragraph 4(b)(iv) of the Policy.
The Respondent could have rebutted the contentions of the Complainant but has chosen not to do so. Failure of the Respondent to respond to the Complaint may be further indicative of bad faith. See The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610, “The failure of the Respondent to respond to the Complaint further supports an inference of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787)”.
Based on the above facts and reasons, the Panel concludes that the Respondent has registered and is using the Domain Name in bad faith.
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 <saledrmartensshoes.com> be transferred to the Complainant.
Date: September 2, 2013