WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
“Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. Jason Griewing
Case No. D2014-1029
1. The Parties
Complainants are “Dr. Martens” International Trading GmbH of Gräfelfing, Germany; “Dr. Maertens” Marketing GmbH of Seeshaupt, Germany, represented by Beetz & Partner, Germany.
Respondent is Jason Griewing of San Jose, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <docmarten.clothing> (the “Domain Name”) is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2014. On June 16, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 17, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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 June 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 13, 2014. On June 25, 2014, an email communication was received from Respondent where Respondent appeared to be willing to transfer the Domain Name to Complainants. On the same day, the Center acknowledged receipt of this email communication, and invited Complainants to comment if they wished to suspend the proceeding to explore the possibility of settlement with Respondent. On July 1, 2014, Complainants advised the Center that they preferred to proceed with the proceeding. Although a couple of additional emails were further received from Respondent, Respondent did not submit a Response. Accordingly, the Center notified Respondent’s default on July 14, 2014.
The Center appointed Clive L. Elliott Q.C. as the sole panelist in this matter on July 21, 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
Complainants have rights in the trademarks DR. MARTENS and DOC MARTENS (“Complainants’ Trademarks”) that significantly pre-date Respondent’s registration of the Domain Name. According to the Registrar, the Domain Name was registered on February 8, 2014.
5. Parties’ Contentions
Complainants state that they are the owners of numerous trademarks for DR. MARTENS and DOC MARTENS. They contend that Complainant’s Trademarks are famous international brands for footwear, clothing and accessories and that they are particularly renowned for their distinctive shoes and boots; such shoes and boots first being sold in the late 1950’s.
As well as being available for sale at retailers throughout the world, Dr. Martens footwear, clothing and accessories are also available for sale online at “www.docmartens.com” (the “Dr. Martens website”). Complainants contend that the Domain Name is phonetically and visually similar to Complainants’ Trademarks.
Complainants submit that Respondent has been using the Domain Name as a parked website with links to sites selling footwear including its “Doc Martens” and “Dr. Martens” products, but mainly for footwear of third parties being direct competitors of Complainants. The Domain Name also directly links to the site “www.dab.equipment” which sells caps, shirts and hats, all of which are competitive products to Complainants’ “Dr. Martens” / “Doc Martens” clothing range.
Complainants contend that by choosing and using the Domain Name, Respondent is likely to mislead and deceive consumers into believing that he has a sponsorship, affiliation or approval with the original “Dr. Martens” / “Doc Martens” trademark owners, licensees and customers. Complainants state that Respondent has never been authorized by them to sell their “Dr. Martens” / “Doc Martens” footwear, nor is he entitled to incorporate Complainants’ registered and well-protected Trademarks into the Domain Name.
Complainants assert that the Domain Name has been used by Respondent in a manner which takes unfair advantage of and is detrimental to Complainants’ earlier rights, and that the use of the Domain Name and associated website by Respondent causes confusion as to the identity of the entity behind the Domain Name. They contend that an Internet user seeing the Domain Name is likely to believe that the Domain Name is registered to, operated or authorized by, or otherwise connected with Complainants. Complainants suggest therefore that Respondent is making illegitimate commercial use of the Domain Name for commercial gain and to tarnish Complainants’ Trademarks.
Complainants assert that Respondent must have had knowledge of Complainants’ right to the “Doc Martens” / “Dr. Martens” trademarks when he registered the Domain Name, since Complainants’ Trademarks are widely well-known. Complainants submit that Respondent acted in bad faith when registering the Domain Name because the widespread and longstanding advertisement and marketing of goods and services under Complainants’ Trademarks, together with the inclusion of the entire trademark in the Domain Name, and the identity of products implied by addition of a completely descriptive element, suggests knowledge of Complainants’ rights in the trademarks.
Whilst Respondent advised in email communications with the Center that he was willing to transfer the Domain Name to Complainants, he did not submit a formal response.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainants assert that they have traded since the late 1950’s and are renowned for their distinctive shoes and boots. Complainants provide clear evidence that they are the owners of various trademarks for DR. MARTENS and DOC MARTENS and that Complainants’ Trademarks are famous international brands for footwear, clothing and accessories.
The Panel concludes that Complainants’ Trademarks are exclusively associated with Complainants. It is clear that by virtue of its long-standing use that an unrelated entity or person using a domain name containing or comprising as a material part Complainants’ Trademarks is likely to lead to members of the public being confused and deceived.
Complainants argue that the Domain Name is at least confusingly similar to Complainants’ Trademarks in so far as it incorporates “Doc Martens” in its entirety with the addition of or in conjunction with a completely descriptive element, namely “clothing”, which fails to distinguish the Domain Name from Complainants’ Trademarks.
As noted above, Complainants assert that Respondent has been using the Domain Name as a parked website with links to sites selling footwear including its “Doc Martens” and “Dr. Martens” products, but mainly for footwear of third parties being direct competitors of Complainants.
This conduct is likely to confuse and deceive consumers as to the true nature of the goods they are purchasing and the origin of those goods. Further, the overall impression must be that the Domain Name is necessarily connected in some way to Complainants and/or Complainant’s Trademarks.
On this basis the Panel finds:
a) Complainants have rights in respect of Complainants’ Trademarks.
b) The Domain Name is identical to or confusingly similar to Complainants’ Trademarks.
Accordingly, the Panel is satisfied that the first element of the Policy has been met.
B. Rights or Legitimate Interests
As noted above, Complainants contend that Respondent has been using the Domain Name as a parked website with links to sites selling competitive third-party footwear. It is not difficult to infer, in the absence of any denial, that through these activities Respondent is using or has used a deliberately similar version of Complainant’s trademark and Complainants’ significant goodwill and reputation to attract Internet traffic.
The Panel concludes that the Domain Name has been employed as a means of improperly diverting Internet customers. In those circumstances, it is difficult to see how Respondent’s conduct could be characterized as legitimate and thus permissible.
On this basis the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
The Panel is satisfied that the second element of the Policy has been met.
C. Registered and Used in Bad Faith
Having reached the view that Respondent has attempted to attract Internet users to its or others websites for commercial gain, thereby creating a likelihood of confusion with Complainants and/or Complainants’ Trademarks, in the absence of any explanation from Respondent the Panel finds that it registered and used the Domain Name in bad faith. That is, so as to take advantage of Internet users who may wish to purchase Complainants’ genuine and well-known branded goods.
Further, the Panel is satisfied that bad faith registration is supported by the fact that Complainants’ Trademarks significantly pre-dated Respondent’s registration of the Domain Name and in light of the long-established use and widespread protection of Complainants’ Trademarks that Respondent knew or ought to have known of Complainant’s prior rights.
The Panel thus has no difficulty in concluding that the third element of the Policy has been met.
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 <docmarten.clothing> be transferred to Complainant.
Clive L. Elliott QC
Date: August 4, 2014