WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
“Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Mantova On Line Sas
Case No. D2014-0246
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 Mantova On Line Sas of Cerese di Virgilio, Italy.
2. The Domain Name and Registrar
The disputed domain name <scarpedrmartens.com> (the “Domain Name”) is registered with Register.IT SPA (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 18, 2014. On February 18, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 19, 2014, 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 February 25, 2014 the Center notified the Parties that the Complaint was filed in English but that according to the information received from the Registrar the language of the Registration Agreement is Italian. Accordingly, on February 27, 2014, the Complainants submitted a request for English to be the language of the proceedings. The Respondent did not reply. The Center thus informed the Parties that it would send all case-related communications in both English and Italian, that it would accept a Response filed in either language, and that the language of the proceeding would be decided by the Panel once appointed.
The Center verified that the Complaints 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 March 5, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 25, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 26, 2014.
The Center appointed Michael A.R. Bernasconi as the sole panelist in this matter on April 7, 2014. 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
Both Complainants are private companies incorporated with limited liability in Germany. The Complainants supply footwear, clothing and accessories under the DR. MARTENS brand. DR. MARTENS footwear, clothing and accessories are available for sale at retailers throughout the world as well as online at the DR. MARTENS website “www.drmartens.com”.
The Complainants are the owners of the following trademarks:
- CTM 59147 DR. MARTENS of April 1, 1996, registered for various goods, mainly for footwear and clothing in class 25, as well as retail services in class 35;
- Australian Trademark No. 500799 DR. MARTENS of December 5, 1988 for footwear and clothing in class 25;
- Australian Trademark No. 652619 DR. MARTENS of February 8, 1995 for retail services in class 35;
- Canadian Trademark No. 420485 DR. MARTENS of December 17, 1990, mainly for footwear and clothing in class 25;
- Canadian Trademark No. 625884 DR. MARTENS of June 25, 2002 mainly for retail services in the field of footwear and clothing in class 35;
- US Trademark No. 1454323 DR. MARTENS of June 9, 1983 for footwear in class 25;
- US Trademark No. 1798791 DR. MARTENS of March 14, 1990 for footwear in class 25;
- US Trademark No. 2838397 DR. MARTENS of June 26, 2002 for retail services in the field of footwear and clothing in class 35;
- International Trademark No. 575311 DR. MARTENS of July 18, 1991 for clothing in class 25, also protected in Italy via seniority of CTM 59147.
The Respondent is the registered owner of the Domain Name <scarpedrmartens.com>. The Domain Name was registered on October 25, 2013.
5. Parties’ Contentions
The Complainants argue that the Domain Name <scarpedrmartens.com> is identical respectively confusingly similar to Complainants’ various trademark registrations for DR. MARTENS. In particular, the Complainants bring forward that within the Domain Name, the element “scarpe” is merely and clearly descriptive, it being the Italian word for the products of the Complainants (i.e. “shoes”), while the characterizing element is “drmartens”. As a consequence, the Complainants hold that the Domain Name is even identical compared to the DR. MARTENS trademarks, at least with regard to the distinctive part (i.e. “drmartens”). Pursuant to the Complainants, the mere addition of the descriptive term “scarpe” does not prevent the likelihood of confusion in the minds of the relevant Internet users.
In addition, the Complainants argue that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainants hold that the Respondent has been using the Domain Name as a parked website for links to unauthorized footwear selling sites for DR. MARTENS products but also for footwear of third parties being direct competitors of the Complainants, without being authorized or approved by the trademarks’ owners or their licensees. Furthermore, the Complainants assert that Respondent has knowingly registered the Domain Name with the intention of deceiving and misleading Internet visitors.
Finally, the Complainants hold that the Respondent registered and is using the Domain Name in bad faith. The Complainants submit that the Respondent registered the disputed Domain Name fully aware of the Complainants’ trademark rights. The Complainants further allege that the Respondent is intentionally attempting to attract Internet users for commercial gain, by creating a likelihood of confusion with the Complainants’ trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. According to the Complainants, these circumstances support a finding of bad faith use.
In view of the above, the Complainants requests that in accordance with paragraph 4(i) of the Policy, the Domain Name be transferred to the Complainants.
The Respondent did not reply to the Complainants’ contentions. Accordingly, and based on paragraph 14(b) of the Rules, the Panel shall draw such inferences from this default of the Respondent as it considers appropriate.
6. Discussion and Findings
A. Preliminary Issue: language of the proceedings
The Complaint was filed in English and the Respondent did not object to the Complainants’ request for English to be the language of the proceedings.
In its request, the Complainants allege that the Registrar has knowledge of English and that the Domain Name resolves to a website in various languages, including English.
The Panel is of the opinion that the translation of all the documents into Italian would unduly delay the administrative proceeding, and that the Complainants would have to incur substantial expenses for translation.
In the circumstances, and in the interest of fairness to both parties, pursuant to paragraph 11(a) of the Rules, noting also the use of Italian in the Notification of Complaint and Commencement of Administrative Proceeding, and, absent a Response, the Panel determines that the Decision will be rendered in English.
B. Substantive Elements of the Policy
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; that
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and that
(iii) the Domain Name has been registered and is being used in bad faith.
C. Identical or Confusingly Similar
It has remained undisputed that the Complainants are the owners of various trademarks for DR. MARTENS.
The Domain Name <scarpedrmartens.com> is not identical to the trademarks for DR. MARTENS. However, in the view of the Panel, the Domain Name is confusingly similar to Complainants’ trademarks. The Domain Name entirely incorporates the Complainants’ distinctive DR. MARTENS trademarks. The mere addition of the descriptive and generic word “scarpe” (i.e. the Italian word for “shoes”) does not make the predominant element “drmartens” less distinctive (see Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Above.com Domain Privacy/Transure Enterprise Ltd., WIPO Case No. D2009-1253). Quite to the contrary, since the addition of the generic Italian term “scarpe” makes reference to products that are sold by the Complainants, an even bigger confusion for the public is created, likely leading to the assumption that under the Domain Name, products of the Complainants are being sold.
The Panel notes that the generic Top-Level Domain suffix “.com” is typically ignored when assessing identity or confusing similarity (see Accor v. Noldc Inc., WIPO Case No. D2005-0016; Crédit Industriel et Commercial S.A. v. Name Privacy, WIPO Case No. D2005-0457; F. Hoffmann-La Roche AG v. Bobik Marley, WIPO Case No. D2007-0694).
The Complainants have therefore succeeded in proving that the Domain Name is confusingly similar to the Complainants’ trademarks. The first criterion, as per paragraph 4(a)(i) of the Policy, is established.
D. Rights or Legitimate Interests
It has remained undisputed that the Complainants have not authorized the Respondent to use Complainants’ trademarks nor to seek the registration of a Domain Name incorporating said trademarks.
There is no evidence that the Respondent was known by the Domain Name prior to its registration or that after registration of the Domain Name, it has legitimately become known by the Domain Name for reasons beyond its simple use. The Domain Name was registered only after the Complainants had used their trademarks for many years. Furthermore, there are no indications that a connection between the Complainants and the Respondent existed or exists.
Thus, the Complainants have provided a prima facie case showing that the Respondent has no rights or legitimate interests in the Domain Name, in particular that the Respondent has not used the Domain Name in connection with a bona fide offering of goods or services and that it is not making a legitimate noncommercial or fair use of the Domain Name. Therefore, the burden of proof shifts to the Respondent to demonstrate its rights or legitimate interests in the Domain Name (see Swarovski Aktiengesellschaft v. blue crystal, WIPO Case No. D2012-0630). Given that the Respondent has failed to submit a response, which in the Panel’s view is a fact that may speak for the nonexistence of any rights or legitimate interests with respect to the Domain Name (see Spenco Medical Corporation v. Transure Enterprise Ltd, WIPO Case No. D2009-1765), the Panel concludes that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The second requirement of paragraph 4(a)(ii) of the Policy is therefore satisfied.
E. Registered and Used in Bad Faith
When assessing bad faith in the registration requirement, it must be considered (1) whether the Respondent knew or should have known of the Complainants and its trademarks (see Janet E. Sidewater v. Worldwide Media Inc., WIPO Case No. D2006-1281), and (2) whether the Respondent targeted the Complainants to benefit from confusion generated by the similarity between the Domain Name and the trademarks of the Complainants (see Align Technology Inc. v. Web Reg/ Rarenames/ Aligntechnology.Com, WIPO Case No. D2008-0103).
The Panel is satisfied that the Respondent knew of the Complainants, their products and their trademarks prior to registering the Domain Name, for the following reasons. The Complainants have proven that their trademarks were registered long before the registration of the disputed Domain Name. Further, it is established that DR. MARTENS trademarks are quite famous on an international level and enjoy worldwide consumer recognition. Finally, the Respondent has combined Complainants’ trademark in the Domain Name with a word (“scarpe”) descriptive of the Complainants’ products.
The Panel is further satisfied that the use of the Domain Name is in bad faith. The Respondent intentionally attempts to attract Internet users trying to find websites legitimately associated with the Complainants to its website or other online locations, by creating a likelihood of confusion with the Complainants’ trademarks as to the source, sponsorship or affiliation, in order to profit from pay-per-click links or the sale of other products offered on these websites. Since the Domain Name is connected with the name and trademarks of the Complainants, its use by someone with no connection with the Complainants suggests opportunistic bad faith (see Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070).
Under these circumstances, and taking into consideration the fact that the Respondent has not provided any evidence whatsoever of any actual or contemplated legitimate, good faith use by itself of the Domain Name, the Panel finds that the Respondent has registered and used the Domain Name in bad faith.
For the above mentioned reasons, the Panel concludes that paragraph 4(a)(iii) of the Policy is established.
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 <scarpedrmartens.com> be transferred to the Complainant.
Michael A.R. Bernasconi
Date: April 21, 2014