WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr. Martens International Trading GmbH and Dr. Maertens Marketing GmbH v. Dang Cong Tien
Case No. D2013-1362
1. The Parties
Complainants are Dr. Martens International Trading GmbH of Gräfelfing, Germany and Dr. Maertens Marketing GmbH of Seeshaupt, Germany, represented by Beetz & Partner, Germany.
Respondent is Dang Cong Tien of HCM, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <shopdrmartens.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2013. On August 1, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 2, 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.
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 August 6, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 26, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 28, 2013.
The Center appointed Francine Tan as the sole panelist in this matter on September 4, 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 the owners of the DR. MARTENS trade mark which is a famous international brand for footwear, clothing and accessories, particularly renowned for its distinctive shoes and boots. The mark was first used in the late 1950’s. DR. MARTENS footwear, clothing and accessories are available for sale through retailers throughout the world as well as online at Complainants’ website, located at the domain “www.drmartens.com”.
Complainants gave evidence of the registration of their DR. MARTENS mark under, inter alia, CTM No. 59147, United States Registration Nos. 1454323, 1798791 and 2838397, International Registration Nos. 575311 and 584207, Australian Registration Nos. 500799 and 652619. Complainants’ International Registration No. 584207 designates Vietnam and covers footwear under International Class 25.
The disputed domain name was registered on May 3, 2013 and resolves to a website with links to entities selling footwear showing Complainants’ DR. MARTENS trade mark. It also contains links to the websites of competitors.
5. Parties’ Contentions
(1) The disputed domain name is confusingly similar to the DR. MARTENS trade mark in which they have rights. The disputed domain name is a combination of the descriptive element “shop” and the trade mark DR. MARTENS. As the word “shop” is merely descriptive, consumers would pay attention to the “characterizing element, ‘drmartens’”. The addition of the word shop does not serve to prevent the likelihood of confusion in the minds of Internet users.
(2) Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent has used the disputed domain name for a parking website with links to unauthorized footwear selling sites for DR. MARTENS products but also for footwear of third party competitors. Respondent was never authorized by Complainants to do so. Respondent’s use of the disputed domain name has been in a manner which takes unfair advantage of and is detrimental to Complainants’ earlier rights in the DR. MARTENS mark. It will also cause confusion to Internet users who would believe be likely to believe that the website is operated or authorized by, or that it is connected with Complainants.
(3) The disputed domain name was registered and is being used in bad faith. Respondent must have had knowledge of Complainants’ right to the DR. MARTENS trade marks when it registered the disputed domain name, since Complainants’ trade marks are well known. Respondent’s awareness of Complainants’ trademark rights at the time of registration suggests opportunistic and bad faith registration.
Respondent acted in bad faith when registering the domain name. There has been widespread and longstanding advertisements and marketing of goods and services under Complainants’ DR. MARTENS trade marks. The inclusion of the entire trade mark in the disputed domain name and the identity of products implied by the addition of a completely descriptive element, “shop”, suggest knowledge of Complainants’ rights in the DR. MARTENS trade marks.
By selecting the disputed domain name, Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a 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. It is more than likely that Respondent is profiting of the goodwill associated with Complainants’ DR. MARTENS 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.
Respondent did not reply to Complainants’ contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainants have undisputed rights in the DR. MARTENS trade mark, both by virtue of their trademark registrations and by virtue of long and extensive use.
The Panel agrees that the disputed domain name is confusingly similar to Complainants’ said trade mark as it incorporates the entire mark and differs from the mark only by the additional word “shop” and the gTLD “.com”. The descriptive element “shop” does not, generally speaking and also in the specific context of Respondent’s website and nature of Complainants’ goods and business, serve to distinguish or differentiate the disputed domain name from Complainants’ DR. MARTENS trade mark. Although the word “shop” is the first element in the disputed domain name, the well-recognized and established DR MARTENS mark is clearly identifiable within the disputed domain name. It is also a well-established principle that the gLTD in a disputed domain name is to be ignored for the purposes of assessing whether it is confusingly similar or identical to a complainant’s mark.
The Panel therefore finds that Complainants have shown that the disputed domain name is confusingly similar to a trade mark in which they have rights.
Paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
The Panel finds that Complainants have established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not affiliated with nor authorized by Complainants to use the DR. MARTENS trade mark or to incorporate it in a domain name. Neither is there evidence that Respondent is commonly known by the name DR. MARTENS nor evidence of use of the disputed domain name in connection with a bona fide offering of goods. This appears to be a blatant case of cybersquatting and misappropriation of a third party’s trade mark. In the absence of any evidence to the contrary, the Panel finds for Complainants on this issue.
Paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
The Panel finds the circumstances of this case to be a clear case of bad faith registration and use and agrees with Complainants’ contention that the disputed domain name has been registered and used in bad faith. Respondent’s website gives and/or is intended to give a false impression of association with or authorization by Complainants. Even if Internet users would be suspicious or wary of Respondent’s website and doubt the genuineness of the goods offered for sale (and to that extent may not necessarily believe that Respondent’s website to be a “legitimate” or authentic website which is endorsed by Complainants), the fact remains that Respondent’s use of the disputed domain name reflects an intentional attempt “to attract, for commercial gain, Internet users to its website 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 the Respondent’s website or location or of a product or service on its website or location”.
From the evidence submitted, the Panel is persuaded that Respondent was aware of Complainants and of their trade mark, DR. MARTENS, when it registered the disputed domain name and the intention in registration was for the specific and illegitimate purpose asserted by Complainants. In the absence of any authorization from Complainants, no bona fide or legitimate use of the disputed domain name can reasonably be claimed by Respondent.
In the premises, the Panel finds that Complainants have satisfied their burden of establishing registration and use of the disputed domain name in bad faith (per 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 <shopdrmartens.com> be transferred to Complainants.
Date: September 17, 2013