WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
“Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. wangxiaochuan / Whois Agent
Case No. D2014-0894
1. The Parties
The Complainants are “Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH of Graefelfing and Seeshaupt, Germany, represented by Beetz & Partner, Germany.
The Respondent is wangxiaochuan of Guangzhou, Guangdong, China; Whois Agent of Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <drmartens1.com> (“TheDomain Name”) is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2014. On May 28, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 29, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on June 3, 2014 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 4, 2014.
On June 3, 2014, the Center transmitted an email to parties in both Chinese and English regarding the language of the proceeding. On June 4, 2014, the Complainants submitted their request that English be the language of the proceeding. The Respondent did not submit any comments within the specified due date.
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 in Chinese and English, and the proceedings commenced on June 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 30, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 2, 2014.
The Center appointed Karen Fong as the sole panelist in this matter on July 11, 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.
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceedings shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceedings. According to the information received from the Registrar, the language of the registration agreement in relation to the Domain Name is Chinese.
In response to the Center’s email, regarding the language of the proceeding of the Domain Name, the Complainants submitted a request that English be the language of the proceeding on June 4, 2014 for the following reasons: the Registrar being an ICANN registrar usually has knowledge of the English language, the home page of the website connected to the Domain Name (‘the Website’) is a multilingual page including English, Further, the documentation with the Complaint is in English. The Respondent did not comment on the language of the proceeding by the specified due date.
The Panel accepts the Complainants’ submissions in the Complaint regarding the language of the proceeding and is satisfied that the Respondent appears to be familiar with the English language. The Complainants may be unduly disadvantaged by having to conduct the proceedings in Chinese. Furthermore, the Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English. The Respondent had the opportunity to respond and failed to do so. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
4. Factual Background
The Complainants are the owners of the famous international brand “Dr. Martens” for footwear, clothing and accessories, particularly renowned for its distinctive shoes and boots, first sold in the late 1950’s. “Dr. Martens” footwear, clothing and accessories are available for sale at retailers throughout the world, and relevantly through many retailers in Australia, as well as online at the “Dr. Martens” website, located at the domain name <drmartens.com>.
The DR. MARTENS trade mark is registered in many parts of the world including Australia, the European Union, the United States of America, Canada and China. Details of the international trade mark designating China are:
International Trademark No. 575311 DR. MARTENS of July 18, 1991, registered also in China for footwear in class 25.
The Domain Name was registered by the Respondent on February 26, 2014. The Website was a multi brand footwear retail site offering for sale brands such as “Nike”, “Adidas” as well as the “Dr. Martens brand”. The “Dr. Martens” footwear on the Website is not authorized or approved by the Complainants. The Website does not appear to be active at the time of writing this decision.
5. Parties’ Contentions
The Complainants contend that the Domain Name is identical or confusingly similar to the “Dr. Martens” trade mark, the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and used in bad faith. The Complainants request transfer of the Domain Name.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainants must prove each of the following, namely that:
(i) The 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 Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
B. Identical or Confusingly Similar
The Panel is satisfied that the Complainants have established that they have rights to the trade mark DR. MARTENS and that DR. MARTENS is a famous trade mark.
The threshold test for confusingly similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case the Complainants’ registered trade mark DR. MARTENS is the dominant portion of the Domain Name. The addition of the numeral “1” at the end of “drmartens” does nothing to minimise the risk of confusion. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the generic Top-Level Domain. The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainants have rights.
C. Rights or Legitimate Interests
The Complainants allege that the Respondent is not licensed or in any way affiliated with it and it has at no time given its approval or authorization for the Respondent to use the DR. MARTENS trade mark as part of the Domain Name. They also suspect that the “Dr. Martens” footwear on sale on the Website may be imitations.
The consensus view under paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) says this:
“Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder. The respondent must also not try to ‘corner the market’ in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark.”
In this case, even if the Respondent is selling genuine “Dr. Martens” footwear, it is also selling products of third parties who are direct competitors of the Complainants. Further, there is nothing on the Website explaining the relationship between the Complainants and the Respondent. Therefore, the Panel finds the Oki Data principles for the rights or legitimate interests are not satisfied in this case. The Panel also takes the view as stated in the WIPO Overview 2.0 “[…] that it will generally be very difficult for a respondent to establish rights or legitimate interests where that respondent has no relevant trade mark rights and without the authority of the complainant has used a domain name identical to the complainant's trademark.”
The Panel finds that the Complainants have made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
To succeed under the Policy, a complainant must show that the domain name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Complainants’ DR. MARTENS trade mark when it registered the Domain Name. The fact that the Domain Name incorporates the Complainants’ well-known trade mark in its entirety is in the Panel’s view evidence that the registration of the Domain Name was in bad faith.
With respect to the use of the Domain Name, the Panel observes that the Respondent in using the Website to offer for sale and sell competitors’ and “Dr. Martens” footwear without being authorized or approved by the Complainants or their licensees shows a clear intention to attract for commercial gain by confusing and misleading Internet users into believing that the Respondent’s Website is and the products sold on it are authorised or endorsed by the Complainants. The above is clearly bad faith under paragraph 4(b)(iv) of the Policy.
The Panel also concludes that the actual use of the Domain Name was 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 <drmarten1.com> be transferred to the Complainants.
Date: July 27, 2014