WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
“Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Kang Jiu
Case No. D2013-1242
1. The Parties
Complainant is “Dr. Martens” International Trading GmbH of Gräfelfing, Germany and “Dr. Maertens” Marketing GmbH of Seeshaupt, Germany, represented by Beetz & Partner of Germany.
Respondent is Kang Jiu of Nanjing, China.
2. The Domain Name and Registrar
The disputed domain name <idrmartens.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2013. On July 10, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. Also on July 10, 2013, the Registrar transmitted by email to the Center its verification response confirming Respondent as the registrant and provided 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 18, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was August 7, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 8, 2013.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on August 15, 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 paragraph 7 of the Rules.
4. Factual Background
Complainant1 is the owner of numerous registrations for the word trademark DR. MARTENS, including: (1) a Community Trade Mark (CTM) registration at the Office of Harmonization for the Internal Market, registration number 000059147, registered on March 3, 1999 in international classes (ICs) 14, 16, 18, 25, 35 & 37, covering, inter alia, leather goods, footwear and clothing; registration at IP Australia, registration number 500799, registration dated December 5, 1988, in IC 25; (2) registration at the Canadian Intellectual Property Office, registration number 420,485, registered on December 10, 1993; (3) registration on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 1,454,323, registered on August 25, 1987 in IC 25; and (4) international trademark registration through the Madrid System, registration number 575311, registered on July 18, 1991 in ICs 18 and 25, designating various countries including China, with protection in China accepted. Complainant has provided evidence of trademark registrations in addition to those expressly listed above.
Complainant manufactures and sells footwear, clothing, fashion accessories, and other goods and services under the trademark DR. MARTENS. Complainant has used the DR. MARTENS trademark in connection with the advertising and sale of footwear since the 1960s. DR. MARTENS branded footwear became well-known in connection with 1960s cultural expression, and it remains a substantial footwear and clothing brand. DR. MARTENS footwear, clothing, and accessories are sold at retailers in many countries, including in China.2 Complainant operates a commercial website at “www.drmartens.com” among other websites.
According to the Registrar’s verification, Respondent is registrant of the disputed domain name. According to that verification, the record of registration was created on January 8, 2013, and the disputed domain name was registered to Respondent on that date.
Respondent uses the disputed domain name to direct Internet users to a link-farm parking page maintained by GoDaddy.com. On a representative page printout provided by Complainant, the advertising links (in German) include a number of sellers of footwear, including sellers offering footwear using Complainant’s DR. MARTENS brand, and also sellers of footwear under other trademarks. Complainant has indicated that sellers of Complainant’s footwear linked to the parking page are not authorized by Complainant as retailers of its products.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant alleges that it owns rights in the trademark DR. MARTENS as evidenced by registration at trademark offices in a number of countries. Complainant argues that its trademark is a famous international brand.
Complainant contends that the disputed domain name is confusingly similar to its trademark, adding only the descriptive element “i” to Complainant’s distinctive trademark.
Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent is using the disputed domain name to direct users to a website providing links to unauthorized sellers of Complainant’s footwear and also to Complainant’s direct competitors; (2) Respondent is falsely creating the impression that its website is sponsored, approved or associated with Complainant or its licensees; (3) Respondent has not been authorized by Complainant to use its trademark in the disputed domain name; (4) by intentionally misleading Internet users regarding the source of its website or products on its website, Respondent is making an illegitimate commercial use of the disputed domain name for commercial gain and to tarnish Complainant’s trademark; (5) Respondent is engaged in passing off the trademark owner’s goodwill and reputation; and (6) Respondent lacks any rights or legitimate interests in the disputed domain.
Complainant contends that Respondent registered and is using the disputed domain name in bad faith, because: (1) Respondent must have had knowledge of Complainant’s well-known trademark when it registered the disputed domain name, suggesting opportunistic and bad faith registration; (2) the inclusion of Complainant’s entire trademark in the disputed domain name with only addition of a completely descriptive element suggests Respondent’s knowledge of Complainant’s rights in trademark; (3) Respondent has intentionally attempted to attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website; (4) it is more than likely that Respondent is profiting off the goodwill associated with Complainant’s trademark by accruing click-through fees for each redirected and confused Internet user.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email, fax and physical addresses provided in its record of registration. The express courier delivery service engaged by the Center reported that it was unable to complete delivery because of inadequate address information (which the Center provided based on Respondent’s registrant contact details). Delivery to the email and fax addresses provided by Respondent in its record of registration failed. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements. The Panel is satisfied that Respondent was afforded a reasonable opportunity to respond to the Complaint in this proceeding.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(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.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant provided evidence of ownership of rights in the word trademark DR. MARTENS through registration at trademark offices in a number of countries, including (but not limited to) the European Union, United States and (through the Madrid System) China and furnished substantial evidence of use in commerce in various countries. Complainant established a presumption of rights in the DR. MARTENS trademark. Respondent has not contested those rights. The Panel determines that Complainant has rights in the trademark DR. MARTENS.
The disputed domain name directly incorporates Complainant’s distinctive trademark, adding the prefix “i”. The prefix “i” has been used as a signifier in the branding of products in electronic commerce as a short form reference for “Internet” or “information”, although there is no apparent set definition or standardization for this usage.3 Whether or not a particular definition or significance is attached to the letter “i”, combining it with Complainant’s distinctive DR. MARTENS trademark does not create a substantially different visual impression than the trademark standing alone. An Internet user viewing the disputed domain name is likely to be confused as to Complainant’s association with that domain name. The Panel determines that the disputed domain name is confusingly similar to Complainant’s DR. MARTENS trademark.
The Panel determines that Complainant has established rights in the DR. MARTENS trademark, and that the disputed domain name is confusingly similar to Complainant’s trademark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that Respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
(Policy, paragraph 4(c)).
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name .
Respondent is using the disputed domain name to direct Internet users to a link-farm parking page that includes links to retailers offering third-party products in direct competition with Complainant’s trademark products, as well as to unauthorized retailers of Complainant’s products. By using Complainant’s trademark to direct Internet users to vendors of products in direct competition with Complainant’s branded products, Respondent is taking unfair advantage of Complainant’s right to prevent third parties from using its trademark in connection with the sale of substantially similar goods. Such use by Respondent does not constitute a bona fide offering of goods or services, and it does not constitute noncommercial or fair use of Complainant’s trademarks. See, e.g., NBA Properties, Inc. v. Huang Li Technology Corp. c/o Dynadot Privacy, WIPO Case No. D2013-0011; Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp., WIPO Case No. D2010-1404 (and references therein). There is no evidence that Respondent has been known by the disputed domain name or has trademark rights in it.
The Panel determines that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include that “(iv) by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or of a product or service on [respondent’s] web site or location.”
Respondent is using the disputed domain name to direct Internet users to a link-farm parking page where Internet users are directed to third-party providers of goods directly competitive with those produced, advertised and sold by Complainant. Complainant’s trademark is distinctive, and it is registered through the Madrid System in China, where Respondent lists its address. Moreover, Complainant’s branded products are sold in China. The Panel considers that Respondent knew or should have known of Complainant’s distinctive trademark when it registered the disputed domain name. The evidence indicates to the Panel that Respondent registered the disputed domain name with the intention of taking unfair advantage of Complainant’s rights in its trademark. Respondent is presumably earning click through revenues from its link-farm page. Respondent is using the disputed domain name for commercial gain by creating confusion as to Complainant as the source, sponsor, affiliate, or endorser of Respondent’s link farm website. Such use is in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning 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 the disputed domain name <idrmartens.com> be transferred to Complainant.
Frederick M. Abbott
Date: August 27, 2013
1 Complainant is comprised of two related business entities. Some of the referenced trademark registrations are owned by both entities and some by one of them. The two entities are referred to herein as "Complainant".
2 See store locator at “http://www.drmartens.com/Locator.asp,” searching Beijing, China, Panel visit of August 27, 2013.
3 See, e.g., Wikipedia, Internet-related prefixes, “http://en.wikipedia.org/wiki/Internet-related_prefixes,” Panel visit of August 27, 2013.