WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
“Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. yang tao / YinSi BaoHu Yi KaiQi (Whois Privacy Protection Service)
Case No. D2014-1764
1. The Parties
The Complainants are “Dr. Martens” International Trading GmbH of Graefelfing, Germany and “Dr. Maertens” Marketing GmbH of Seeshaupt, Germany, represented by Beetz & Partner, Germany.
The Respondent is yang tao of Guangzhou, Guangdong, China / YinSi BaoHu Yi KaiQi (Whois Privacy Protection Service) of Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <chinadrmartens.com> 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 October 8, 2014. On October 8, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 9, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 14, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on October 16, 2014. On October 14, 2014, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceeding. On October 15, 2014, the Complainant confirmed its 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. However, several English language email communications were received from the Respondent on October 16, 17 and 20, 2014.
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 both Chinese and English, and the proceeding commenced on October 22, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 11, 2014. The Respondent did not submit any formal Response.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on November 19, 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
The Complainants1 are companies incorporated in Germany and the owners of numerous national and international registrations for the trade mark Dr. Martens (the “Trade Mark”), the earliest dating from 1983, including an international registration designating China, where the Respondent is based. The Trade Mark is a well-known trade mark in respect of footwear.
The Respondent is an individual apparently with an address in China.
C. The Disputed Domain Name
The disputed domain name was registered on October 4, 2011.
D. The Website at the Disputed Domain Name
The website at the disputed domain name (the “Website”) reproduced the Complainant’s DR. MARTENS AIRWAIR logo and provided links to websites offering for sale the Complainant’s DR. MARTENS footwear as well as third party footwear.
5. Parties’ Contentions
The Complainant made the following submissions in the Complaint.
The Trade Mark is a famous international brand for footwear, clothing and accessories. The Complainant is particularly renowned for its shoes and boots, first sold under the Trade Mark in the late 1950s. The Complainant markets and sells footwear, clothing and accessories under the Trade Mark worldwide through retailers and online.
The disputed domain name is confusingly similar to the Trade Mark. It comprises the Trade Mark in its entirety, together with the non-distinctive descriptive word “china”.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with or authorised by the Complainant in any way and is not commonly known by the disputed domain name. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name
The disputed domain name has been registered and is being used in bad faith.
The disputed domain name has been used in respect of the Website, which is an unauthorised parking website containing links to third party websites offering for sale footwear, including the Complainant’s footwear, without the Complainant’s authorisation or approval.
The Respondent did not file a Response. In the Respondent’s email correspondence with the Center, the Respondent indicated that it registered the disputed domain name because the Respondent liked the Complainant’s DR. MARTENS boots when the Respondent was young; claimed not to have made any commercial use of the disputed domain name; and offered to sell the disputed domain name to the Complainant.
6. Discussion and Findings
6.1. Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Chinese.
Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. No agreement has been entered into between the Complainant and the Respondent to the effect that the language of the proceeding should be English.
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Complainant has requested that English be the language of the proceeding for the following reasons:
(1) The Registrar is an ICANN registrar with knowledge of the English language; and
(2) As the Complaint and its Annexes have been filed in English, it would make sense for practical and legal reasons to conduct the proceeding in English.
The Respondent did not file a Response and did not file any submissions with respect to the language of the proceeding.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judiciously in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs.
The Panel does not find the first reasons tendered by the Complainant in its language submission persuasive. In deciding a language request, it is the ability of the respondent to understand a language other than the language of the registration agreement which is usually determinative under UDRP jurisprudence. Whether the registrar understands English is not relevant. Similarly, the Complainant has not made any submissions in support of its assertion that there are legal reasons for conducting the proceeding in English.
The Panel notes, however, that the Website was an English language website, and the Respondent has communicated with the Center in English. Absent any submissions to the contrary from the Respondent, it therefore appears the Respondent is proficient in the English language.
The Panel therefore finds that sufficient evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be unduly prejudiced should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate the date of registration of the disputed domain name by over 60 years.
UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name”.
It is also established that the addition of generic terms to a disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the respective mark; furthermore, mere addition of a generic or descriptive term does generally not exclude the likelihood of confusion.
In the present case, the disputed domain name contains the Trade Mark in its entirety2 . The Panel concludes that the addition of the word “china” does not serve to distinguish the disputed domain name from the Trade Mark.
The Panel finds that the disputed domain name is confusingly similar to the Trade Mark.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organisation) has been commonly known by the domain name even if the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name by over 60 years. The Panel finds on the record that there is a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name was previously used in respect of the Website, which was not authorised by the Complainant, contained the Complainant’s DR. MARTENS AIRWAIR logo, contained a false copyright notice “Copyright ©2011-2014 by DR Martens CO., LTD. All rights has reserved”, and was linked to unauthorised third party websites offering for sale footwear, including the Complainant’s DR. MARTENS footwear.
The disputed domain name currently resolves to a website which simply states “Temporarily shut down the site for sale”.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Panel has no hesitation in concluding that the disputed domain name has been registered and is being used in bad faith, under paragraph 4(b)(iv) of the Policy and, by virtue of the Respondent’s offer to sell the disputed domain name, in its email communication with the Center, and in light of its current Website status, under paragraph 4(b)(i) of the Policy.
For the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <chinadrmartens.com> be transferred to the Complainant.
Sebastian M.W. Hughes
Dated: December 3, 2014
1 For ease of reference, the Complainants shall be referred to in the singular in this decision.
2 The disputed domain name does not contain the full stop that is included in the Trade Mark. It is, however, trite that, for the purposes of paragraph 4(a) of the Policy, punctuation marks such as full stops are to be disregarded in determining the question of confusing similarity.