WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

“Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. Zhao Zhong Xian

Case No. D2017-1248

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 Zhao Zhong Xian of Shen Yang, Liao Ning, China.

2. The Disputed Domain Name and Registrar

The disputed domain name <drmartens.website> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2017. On June 30, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 4, 2017, 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 July 5, 2017, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on July 6, 2017. 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 and 4, the Center formally notified the Respondent in English and Chinese of the Complaint, and the proceedings commenced on July 12, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 1, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 2, 2017.

The Center appointed Sok Ling MOI as the sole panelist in this matter on August 8, 2017. 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

DR. MARTENS is a well-known international brand for footwear, clothing and accessories, particularly known for its distinctive shoes and boots, first sold in the late 1950s. The DR. MARTENS footwear, clothing and accessories are available for sale at retailers throughout the world as well as through the online store at the official DR. MARTENS website at “www.drmartens.com”.

The Complainants are the proprietors of trade mark registrations for DR. MARTENS in various countries worldwide, including the following:

Jurisdiction

Trade Mark

Registration No.

Registration Date

Class/Specification

European Union

DR. MARTENS

59147

March 3, 1999

14, 16, 18, 25 (clothing & footwear), 35 (retail services) & 37

Australia

DR. MARTENS

500799

December 5, 1988

25 (clothing & footwear)

Australia

DR. MARTENS

652619

February 8, 1995

35 (retail services)

International designating China etc.

DR. MARTENS

575311

July 18, 1991

18 and 25 (footwear)

The disputed domain name <drmartens.website> was registered on December 19, 2016, long after the Complainants have registered their trade mark DR. MARTENS.

According to the evidence submitted by the Complainants, the disputed domain name resolves to a website with a directory of click-through links.

5. Parties’ Contentions

A. Complainant

The Complainants contend that the disputed domain name is identical and/or confusingly similar to its DR MARTENS trade mark. The Complainants further contend that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name has been registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

6.1 Language of the Proceeding

Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding 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 proceeding.

Paragraphs 10(b) and (c) of the Rules require the Panel to ensure that the proceeding takes place with due expedition and that the Parties are treated equitably and given a fair opportunity to present their respective cases.

The language of the Registration Agreements for the disputed domain name is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainants and the Respondent regarding the language issue. The Complainants filed their Complaint in English and requested that English be the language of the proceeding. The Respondent, presumably a Chinese native, did not comment on the language issue.

The Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:

(a) the disputed domain name is registered in Latin characters, rather than Chinese script;

(b) based on the evidence submitted by the Complainants, the disputed domain name resolves to a website with contents/links in Latin characters and English words; and

(c) based on the results of a reverse WhoIs search independently conducted by the Panel using the Respondent’s email address, the Panel notes that the Respondent has registered several other domain names which contain Latin characters and English words, such as <unitedhealthgroup.website>, <chevrolet.site>, <bananarepublic.site>, <longines.site>, <colgate.website>, <clinique.website>, <desigual.website>, <dunhill.website>, <hewlett-packard.website>, <kellogg.website>, <lorealparis.website>, <omegawatches.website>, <prudential.website> and <toshiba.website>.

Additionally, the Panel notes that:

(a) the Center has notified the Respondent of the proceeding in both Chinese and English;

(b) the Respondent has been given the opportunity to present its case in this proceeding; and

(c) the Center has informed the Respondent that it would accept a Response in either English or Chinese.

Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in its ability to articulate the arguments for this case.

The Panel has taken into consideration the fact that to require the Complaint and all supporting documents to be translated into Chinese would, in the circumstances of this case, cause an unnecessary cost burden to the Complainants and would unnecessarily delay the proceeding.

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that it shall accept the Complaint and all supporting materials as filed in English, that English shall be the language of the proceeding, and that the decision will be rendered in English.

6.2 Substantive Issues

Paragraph 4(a) of the Policy directs that a complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred:

(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

On the basis of the arguments and evidence introduced by the Complainants, the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel accepts that the Complainants have rights in DR. MARTENS by virtue of its use and registration of the same as trade mark.

The disputed domain name incorporates the Complainants’ trade mark DR. MARTENS in its entirety. The addition of the generic Top-Level Domain (“gTLD”) “.website” does not impact the analysis of whether the disputed domain name is identical or confusingly similar to the Complainants’ trade mark.

Consequently, the Panel finds that the disputed domain name is identical to the Complainants’ trade mark.

Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant bears the burden of establishing that the respondent lacks rights or legitimate interests in the disputed domain name. However, once the complainant makes a prima facie showing under paragraph 4(a)(ii), the burden of production shifts to the respondent to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited honghao Internet foshan co, ltd, WIPO Case No. D2013-0974.

The Complainants have clearly established that the Respondent is not in any way affiliated with the Complainants or otherwise authorized or licensed to use the DR. MARTENS trade mark. There is also no evidence suggesting that the Respondent is commonly known by the disputed domain name or that the Respondent has any rights in the term “drmartens” or “martens”.

According to the evidence submitted by the Complainants, the disputed domain name resolves to a website with a directory of click-through links. The consensus view of previous UDRP panels is that use of a domain name to post parking and landing pages or pay-per-click links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services” or from “legitimate noncommercial or fair use” of the domain name. The Complainants argued that these links connect to websites are offering DR. MARTENS footwear as well as the Complainants’ competitors’ footwear, and this shows that the Respondent is using the disputed domain name to mislead Internet visitors by creating a likelihood of confusion with the Complainants’ official website.

The Panel is satisfied that the Complainants have made out a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production thus shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name. Since the Respondent has failed to respond, the prima facie case has not been rebutted.

Consequently, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name.

Accordingly, the Complainants have satisfied the requirements of the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the

registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

The DR. MARTENS trade mark has been in use since the 1950s, and enjoys a strong reputation worldwide and a significant online presence. There is no doubt that the Respondent was aware of the Complainants’ trade mark when it registered the disputed domain name. In any case, a presumption can be made that the Respondent was aware of the Complainants’ trade mark and related domain name <drmartens.com> when it registered the disputed domain name. In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcends national borders. As such, a cursory Internet search would have disclosed the DR. MARTENS trade mark and its extensive use by the Complainants. Registration of a domain name that incorporates a complainant’s well-known trade mark suggests opportunistic bad faith.

According to the evidence submitted by the Complainants, the disputed domain name resolves to a website with a directory of click-through links that connect to sites purporting to offer Dr. Martens shoes and products by the Complainants’ competitors. The consensus view of previous UDRP panels is that a domain name registrant is normally deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content ─ for example, in the case of advertising links appearing on an “automatically” generated basis. The Panel notes the presumption that the Respondent or a third party stands to profit or make a “commercial gain” from advertising revenue by such an arrangement trading on third-party trade marks. In the Panel’s opinion, such links clearly seek to capitalise on the trade mark value of the Complainant’s DR. MARTENS trade mark, resulting in misleading diversion. The Panel is therefore prepared to draw the inference that the Respondent has intentionally attempted to attract for commercial gain Internet users to its websites by creating a likelihood of confusion with the Complainants’ trade mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s website. As such, the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case.

Furthermore, based on the results of a reverse WhoIs search independently conducted by the Panel using the Respondent’s email address, the Panel notes that the Respondent has registered several other domain names which contain well-known third party brand names, such as <chevrolet.site>, <bananarepublic.site>, <longines.site>, <colgate.website>, <clinique.website>, <desigual.website>, <dunhill.website>, <hewlett-packard.website>, <kellogg.website>, <lorealparis.website>, <omegawatches.website>, <prudential.website> and <toshiba.website>. This pattern of conduct suggests that the Respondent is engaged in cybersquatting activities, and has in all likelihood registered the disputed domain name in order to prevent the Complainants from reflecting their trade mark in a corresponding domain name. The circumstances under paragraph 4(b)(ii) of the Policy clearly apply.

The Respondent has not denied the Complainants’ allegations of bad faith. In view of the above finding that the Respondent does not have rights or legitimate interests in the disputed domain name, and taking into account all the circumstances, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.

Accordingly, the Complainants have satisfied the requirements of the third element under paragraph 4(a) of the Policy.

7. Decision

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 <drmartens.website> be transferred to the Complainants.

Sok Ling MOI
Sole Panelist
Date: August 26, 2017