WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. jiogabnkya jvnhyjnxb
Case No. D2014-1108
1. The Parties
Complainants are Dr. Martens International Trading GmbH of Graefelfing, Germany and Dr. Maertens Marketing GmbH of Seeshaupt, Germany, represented by Beetz & Partner, Germany.
Respondent is jiogabnkya jvnhyjnxb of New York, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <drmartensjp.com> (the "Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 26, 2014. On June 26, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 26, 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 July 2, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 22, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on July 24, 2014.
The Center appointed Clive L. Elliott QC as the sole panelist in this matter on July 29, 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 trademark DR MARTENS ("Complainants' Trademark") that significantly pre-date Respondent's registration of the Domain Name.
According to the Registrar the Domain Name was registered in April 16, 2013.
5. Parties' Contentions
Complainants state that they are the owners of numerous trademarks for DR. MARTENS worldwide. They contend that Complainants' Trademark is a famous international brand 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.drmartens.com" (the "Dr. Martens website").
Complainants assert that, as well as the Domain Name being phonetically similar to Complainants' Trademark, it also comprises the characterizing name "drmartens" together with the letters "jp", and as such Internet users will pay attention only to the characterizing element "drmartens". Complainants contend that the addition of the letters "jp" will not prevent the likelihood of confusion in the minds of Internet users.
Respondent has been using the Domain Name on a website selling footwear and accessories of competitors of Complainants together with Complainants' products. Complainants state that Respondent has never been authorized to sell its products and also suspect that Respondent has been selling imitations of "Dr. Martens" footwear.
Complainants submit that Respondent is likely to mislead and deceive consumers into believing that he has a sponsorship, affiliation or approval with the original DR. MARTENS trademark owners, and/or licensees and/or customers, when this is not the case. Complainants also submit that the Domain Name has been used by Respondent in a manner which takes unfair advantage of and is detrimental to Complainants' earlier rights.
The use of the Domain Name and associated website by Respondent causes confusion as to the identity of the entity behind the Domain Name and website. The Internet user seeing the Domain Name will believe or be likely to believe that the Domain Name is registered to, operated or authorized by, or otherwise connected with Complainants.
Complainants assert that the links to "Dr. Martens" offered on the Domain Name website have never been authorized by Complainants or their licensees and Respondent has no right or legitimate interest to the trademark "Dr. Martens". Respondent has never been authorized by Complainants and it is asserted that Respondent has knowingly registered the Domain Name with the intention of deceiving and misleading Internet visitors by creating a likelihood of confusion with Complainants' website or of a product or service of Complainants' website. Complainants contend that Respondent is clearly making illegitimate commercial use of the Domain Name for commercial gain and to tarnish Complainants' Trademark.
Respondent is hereby passing off the trademark owners' goodwill and reputation in the DR. MARTENS trademark and the DR. MARTENS name.
By choosing the Domain Name Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with Complainants' Trademark as to the source, sponsorship or affiliation or endorsement of Respondent's website or location.
Complainants submit that Respondent has acted in bad faith when registering the Domain Name because, widespread and longstanding advertisement and marketing of goods and services under the trademark in question, 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 trademark.
By selecting the Domain Name, Complainants contend, Respondent has intentionally attempted to attract for commercial gain Internet users to his website by creating likelihood of confusion with Complainants' trademark 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. Respondent is linking Domain Name with unauthorized websites which are selling competitors' and "Dr. Martens" footwear without being authorized or approved by the trademarks' owners or their licensees.
Respondent did not reply to Complainants' contentions.
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. They provide clear evidence that they are the owners of various trademarks for DR. MARTENS and DOC MARTENS and that the said trademarks including Complainants' Trademark are famous international brands for footwear, clothing and accessories.
The Panel accepts that Complainants' Trademark is exclusively associated with Complainants. It is clear that by virtue of their long-standing use that an unrelated entity or person using a domain name containing or comprising as a material part Complainants' Trademark is likely to lead to members of the public being confused and deceived.
Complainants submit that the Domain Name is phonetically similar to Complainants' Trademark and simply adds the letters "jp" and as such Internet users will pay attention only to the characterizing element "drmartens" rather than the added letters. Complainants further contend that the addition of the letters "jp" will not prevent the likelihood of confusion in the minds of Internet users.
It is unclear to the Panel what the letters "jp" represent. The first letter "j" may derive from Respondent's name "jiogabnkya jvnhyjnxb". However, it is not for the Panel to speculate and Respondent has chosen to not elaborate or explain its position. On that basis the Panel accepts Complainants' argument that whatever the letters might mean, Internet users will pay attention only to the characterizing element "drmartens" rather than the letters themselves.
As noted above, it is asserted that Respondent has been using the Domain Name on a website selling footwear and accessories of competitors of Complainants together with Complainants' products and that Respondent has never been authorized to sell Complainants' products. This statement is not challenged. The 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 Trademark.
On this basis the Panel finds:
a) Complainants have rights in respect of Complainants' Trademark.
b) The Domain Name is identical to or confusingly similar to Complainants' Trademark.
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 in an online store selling footwear and accessories of competitors of Complainants together with Complainants' products. 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 Complainants' 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' Trademark, 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' Trademark significantly pre-dated Respondent's registration of the Domain Name and in light of Complainants' long-established use and reputation in Complainants' Trademark 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 <drmartensjp.com> be transferred to Complainants.
Clive L. Elliott QC
Date: August 15, 2014