WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
"Dr. Martens" International Trading GmbH, "Dr. Maertens" Marketing GmbH v. huwai
Case No. D2014-0968
1. The Parties
The Complainants are "Dr. Martens" International Trading GmbH of Graefelfing, Germany; "Dr. Maertens" Marketing GmbH of Seeshaupt, Germany, represented by Beetz & Partner, Germany.
The Respondent is huwai of United States of America.
2. The Domain Name and Registrar
The disputed domain name <drmartensbootsuk.com>) (the "Domain Name") is registered with eName Technology Co., Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 6, 2014. On June 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 11, 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 June 11, 2014, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On June 12, 2014, the Complainants submitted a 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 in both English and Chinese the Respondent of the Complaint, and the proceedings commenced on June 24, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 14, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 15, 2014.
The Center appointed Karen Fong as the sole panelist in this matter on July 22, 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 this case.
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 12, 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 operated in 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 trade mark 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 jurisdictions 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 Trade mark 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 December 20, 2013. The Website contains the Complainants' DR. MARTENS trade marks and also offers for sale "Dr. Martens" footwear. The footwear may be counterfeit. The Domain Name is also being used to link to websites selling competitors' as well as "Dr. Martens" products. 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.
A. 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 descriptive word "boots" and the geographical word "uk" 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.
B. 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 counterfeit.
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.
C. 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 Website contains the Complainants' "Dr. Martens" logo and 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 "Dr. Martens" footwear as well as linking the Domain Name to websites selling competitors' as well as "Dr. Martens" products without being authorized or approved.
The Website 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 is 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 <drmartensbootsuk.com> be transferred to the Complainants.
Date: August 7, 2014