WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
“Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. McDonald Cooper Properties Pty Ltd., Andrew Cooper
Case No. DAU2016-0008
1. The Parties
The Complainant is “Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH of Graefelfing, Germany, represented by Beetz & Partner, Germany.
The Respondent is McDonald Cooper Properties Pty Ltd., Andrew Cooper of Carindale, Australia.
2. The Domain Names and Registrar
The disputed domain names <docmartens.com.au>, <drmarten.com.au> and <dr-martens.com.au> are registered with TPP Wholesale Pty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 29, 2016. On February 29, 2016, the Center transmitted by email to TPP Wholesale Pty Ltd a request for registrar verification in connection with the disputed domain names. On March 8, 2016, TPP Wholesale Pty Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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, and the proceedings commenced on March 14, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was April 3, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 4, 2016.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on April 11, 2016. 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
In this decision, except where the context otherwise requires, the disputed domain names <docmartens.com.au>, <dr-martens.com.au> and <drmarten.com.au> will be referred to collectively as the disputed domain names.
The disputed domain name <docmartens.com.au> was created on December 15, 2014. The disputed domain name <dr-martens.com.au> was created on August 14, 2014 and the disputed domain name <drmarten.com.au> was created on August 14, 2014.
It has been recognized in several prior cases under the Uniform Domain Name Dispute Resolution Policy (“UDRP”) that the Complainant is an internationally well-known producer and seller of footwear and other articles of clothing (see cases cited below). It is the owner of trademark registrations comprising the trademarks DOC MARTENS and DR. MARTENS registered in many countries throughout the world including Australia. The earliest of the Australian registrations dates from December 1988.
The Complainant markets its products throughout the world through retail outlets and online via its website “www.drmartens.com”. The Complainant’s products under the DOC MARTENS trademarks have been available and well-known in Australia since well prior to the date of creation of the respective disputed domain names.
The Complainant has been successful in at least seven prior UDRP cases, namely: “Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. Above.com Domain Privacy/Transure Enterprise Ltd, WIPO Case No. D2009-1253; “Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. Zhao Qiong, WIPO Case No. D2012-0641; “Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. zhang chunyu / Whois Agent, Domain Whois Protection Service, WIPO Case No. D2013-2000; “Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. Chen Fangwei, WIPO Case No. DPW2014-0001; “Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. wangxiaochuan / Whois Agent, WIPO Case No. D2014-0894; “Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. yang tao/YinSi BaoHu Yi KaiQi (Whois Privacy Protection Service), WIPO Case No. D2014-1764; and “Dr. Martens” International Trading GmbH “Dr. Maertens” Marketing GmbH v. cui jian, jian cui, WIPO Case No. D2015-0277.
The first Respondent is an Australian corporation; the second Respondent, Andrew Cooper, is the registrant contact for each of the disputed domain names and appears to be a director or officer of the first Respondent. The second Respondent was also a Respondent in Arcadia Group Brands Limited trading as Topshop, Top Shop/Top Man Limited trading as Topshop v. Andrew Cooper, Topshop Holdings Pty Ltd,, WIPO Case No. DAU2015-0026. The first Respondent is also the owner of the Australian registered business name “Doc Martens” registered on December 16, 2014.
On April 20, 2016 the Panel caused to be issued the Procedural Order set out in Annex 1 to this decision. This Order directed the Complainant to confirm its contentions regarding the uses made of the disputed domain names and explain why the provided evidence supports its contentions. In reply to that Order the Complainant, on April 25, 2016, affirmed its previous contentions relating to use of the disputed domain names.
Annexed to the Complainant’s reply as Annex 9, were further pages from a Google search using the search term “docmartens.com.au”. That search produced about 1,100 hits including several leading to websites offering the Complainant’s Doc Martens footwear, including the website formerly at the disputed domain name <docmartens.com.au> (the first disputed domain name). The reply also included as Annex 10, screen shots taken from the website formerly at the first disputed domain name showing the sale of the Complainant’s products and copies of Order Confirmations dated July 17, 2015, apparently provided to customers who had placed orders at that website. Annex 10 also included a copy of a letter of demand addressed to the Respondent dated December 9, 2015 alleging trademark infringement, passing off and breach of the Australian Consumer Law. According to the Complainant the Respondent did not answer that letter.
On April 26, 2016 the Complainant submitted a further reply to the Procedural Order, attaching as Annex 11 further printouts taken from the Respondent’s website at the first disputed domain name in June 2015, also showing the sale of the Complainant’s products.
The first disputed domain name currently resolves to a blank page. The disputed domain names <dr-martens.com.au> and <drmarten.com.au> currently resolve to error pages.
5. Parties’ Contentions
The Complainant’s contentions may be summarized as follows:
(i) The Complainant’s DR. MARTENS trademark is a famous international brand for footwear, clothing and accessories available for sale throughout the world, including many retailers in Australia, as well as online.
(ii) The respective disputed domain names are phonetically and visually identical or are deceptively similar to the Complainant’s trademarks DOC MARTENS and DR. MARTENS. In respect of the disputed domain name <drmarten.com.au>, the Complainant submits that the omission of the letter “s” is not sufficient to avoid likelihood of confusion.
(iii) The Respondent has been using the disputed domain names for a parked website providing links to unauthorized footwear selling sites selling Dr. Martens products but also those of direct competitors of the Complainant. In support of this contention the Complainant provides printouts purporting to be of website links from the website at the first disputed domain name. (In relation to this see the comments below).
(iv) The Respondent’s choice and use of the disputed domain names is likely to mislead and deceive consumers into believing that the Respondent has a sponsorship, affiliation or approval from the Complainant and takes unfair advantage of, and is detrimental to, the Complainant’s rights.
(v) The Respondent has knowingly registered the disputed domain names with the intention of deceiving and misleading Internet users by creating a likelihood of confusion with the Complainant’s website, or a product or service of the Complainant and is making illegitimate commercial use of the disputed domain names for commercial gain and to tarnish the Complainant’s trademarks.
(vi) The Respondent must have had knowledge of the Complainant’s rights in the Complainant’s trademarks when registering the disputed domain names and that such registration was opportunistic and in bad faith.
(vii) The Complainant cites the seven prior decisions in its favor under the UDRP in support of its contentions.
(viii) Even if the Respondent has been selling “Dr. Martens” footwear, he is not entitled to incorporate the Complainant’s registered and well-protected trademarks into his domain names without being authorized hereto.
(ix) It is likely that the Respondent is profiting from the goodwill associated with the Complainant’s trademarks by accruing click-through fees where it has misdirected and confused Internet users.
The Respondent did not file a Response.
6. Discussion and Findings
A. Identical or Confusingly Similar
Each of the disputed domain names <docmartens.com.au> and <dr-martens.com.au> wholly contains and corresponds to a registered trademark in which the Complainant has rights, including in Australia, and which pre-date by several years the creation of the respective disputed domain names. In the case of the disputed domain name <drmarten.com.au> the omission of the letter “s” is insignificant and not such as to distinguish the disputed domain name from the Complainant’s corresponding trademark.
It is well settled that in assessing the similarity of a domain name and a trademark the Top level Domain is usually disregarded (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2).
The Panel therefore finds that each of the disputed domain names is substantially identical or confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The critical question in this matter is whether or not the Respondent had any legitimate interest in registering and using the disputed domain names. The Complainant has made allegations in relation to the legitimacy of the Respondent’s use and the registration of the disputed domain names. The Respondent has failed to respond to those allegations. It is well established by prior jurisprudence under the Policy that the facts determining the existence of such rights or legitimate interests are often uniquely in the possession of the Respondent. Accordingly, although the onus to establish each of the circumstances set out in paragraph 4(a) of the Policy rests with the complainant, in relation to paragraph 4(a)(ii) it is sufficient for the complainant to establish a prima facie case and upon establishment of that case the burden of production shifts to the respondent. In this case the Respondent has not replied to the Complainant’s submissions. Nevertheless it is the responsibility of the Panel to determine whether or not a prima facie case has been made out. The only material before the Panel which is pertinent to that determination is that which has been provided by the Complainant in the Complaint and the supplementary filings in response to the Procedural Order.
To the extent that the Complainant seeks to rely on Google and Bing search results using the disputed domain names as search terms, the Panel considers those results are of little evidential value. Inevitably searches using those names as search terms will reveal results in which the components of those terms are contained, including of course the Complainant’s own websites. However, in response to the Procedural Order the Complainant has submitted, in Annexes 10 and 11, printouts of the Respondent’s website at the first disputed domain name taken in June 2015. The Complainant has also provided a copy of a letter of demand sent to the Respondent by the Complainant’s solicitors on December 9, 2014.
There is no doubt that the Complainant’s DOC MARTENS and DR. MARTENS trademarks are extremely well-known in many countries of the world. That has been recognized in the several prior decisions under the UDRP which are referred to in paragraph 4 above. That is certainly the case in Australia and it is readily apparent that the Respondent was aware of the Complainant’s trademarks and their reputation in Australia at the time of registering of the disputed domain names. The question remains however, as to whether there is any legitimate reason why it should register them.
It is apparent from the screenshots submitted by the Complainant in Annexes 10 and 11 in response to the Procedural Order that the goods which were formerly offered at the Respondent’s website under the first disputed domain name were offered as the goods of the Complainant obtained by parallel import. In the Complainant’s submission of April 26, 2016 the Complainant states that “according to the Complainant’s information the goods offered were counterfeits”. However, the Complainant has offered no evidence to support that allegation save only that its attempts to obtain examples through trap orders were unsuccessful. The Complainant’s allegation in this respect appears to be merely conjectural and not sufficient to displace the view which the Panel has formed as to the nature of the goods as explained further below.
There is no doubt that at the time the screenshots were taken, the first disputed domain name resolved to a commercial website operated for financial gain. The nature of the Respondent’s business and the goods which it offers is explained in the pages taken from the website and shown in Annex 11 of the Complainant’s filings. Under the “About Us” tab the following statements appear:
We’re Dr. Martens enthusiasts that have always found it difficult to source in Australia the Dr. Martens styles that are popular in England. So we decided to do something about it. In 2015 we founded DocMartens.com.au and opened up sourcing channels directly from suppliers in England and United States where we ship directly into Australia. While we have our own tastes and preferences in this iconic brand our aim is to offer the widest range of Dr. Martens available to Australian consumers so that the choice becomes yours not ours.
Please enjoy browsing our site and the massive selection we provide. Please also note that our prices can fluctuate on a daily basis because of rapid movements in stock availability and wholesale price changes from our suppliers. (Note: We are an independent retailer and are not owned or affiliated with the manufacturers of Dr. Martens or AirWeir Intl Ltd.)
While our enduring interest has always been in the iconic Dr. Marten shoes including all the various derivatives now offered, we also stock a wide range of men’s and women’s clothing, bags and wallets and other accessories.
DocMaratens.com.au is a business division of dstore.com Limited, a Hong Kong based online retailer with deep connections to Australia going back to 1999. While our HQ is in Hong Kong, we have Australian contractors handling customer service, buying, returns and website merchandising. We also maintain a warehouse in North Carolina USA which handles our cross-docking and dispatches directly to our customers in Australia. “
In the “Frequently Asked Questions” the following appears.
“Are all your products genuine brands?
Absolutely! We guarantee the legitimacy and authenticity of every item sold on docmartens.com.au. Most items are sourced from either the originating brand owner or authorised resellers in the USA. We also source a smaller number of brands through our Hong Kong office, again only from authorised resellers.”
In the Panel’s view there are strong indications from the screenshots provided that the Respondent was offering grey goods, i.e., they were offering for sale the genuine goods of the Complainant obtained by parallel importation from suppliers in the United States and possibly elsewhere.
As to this however, the Complainant asserts that even if the goods are genuine originals the Respondent was not authorized to use the Complainant’s registered and well-known trademarks within the disputed domain names. As to this the Panel notes first of all that in Australia at least the resale of parallel imported goods does not constitute trademark infringement. Section 123(1) of the Australian Trade Marks Act provides that:
“…a person who uses a registered trade mark in relation to goods which are similar to goods in respect of which the trade mark is registered does not infringe the trade mark if the trade mark has been applied to, or in relation to, the goods by, or with the consent of, the registered owner of the trademark”.
Accordingly the Respondent’s use of the Complainant’s trademarks in relation to the Complainant’s goods was not necessarily trademark infringement. That, however, does not answer the Complainant’s submission that the Respondent was not entitled, without authorization, to incorporate the trademarks into the disputed domain names.
The question of whether or not a reseller of goods can legitimately incorporate into a domain name the trademark of the producer of the goods to be sold on a website to which the domain name resolves has been considered in many prior decisions under the Policy. It has been recognized that this is a difficult issue, however, and since the decision of the panel in Oki Data Americas, Inc, v. ADS, Inc, WIPO Case No. D2001-0903, it has been widely accepted that where the criteria applied in that case are satisfied a respondent will generally be held to have a legitimate interest in the use of the producer’s trademark in the disputed domain name. As WIPO Overview 2.0., paragraph 2.3, which digests the Oki Data criteria, states:
“Consensus View: Normally a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s actively and prominently disclosing the registrant’s relationship with the trademark holder”.
These principles have also been applied in cases under the .auDRP, see for example, GM Holden Ltd v. Bradley John Lawless, WIPO Case No.DAU2010-0010.
In the opinion of the Panel the Complainant has made out a prima facie showing that the Respondent fails to satisfy the Oki Data criteria in its use of any of the disputed domain names for the following reasons:
- None of the disputed domain names is currently in use, as none resolves to an active webpage. In the past the first disputed domain name <docmartens.com.au> has been used in the manner discussed above. There is no evidence of any use of the other two disputed domain names.
- As discussed above, the first disputed domain name appears to have been used principally to offer for sale genuine DOC MARTENS goods though the statement made under “About Us” tab of the webpage is somewhat ambiguous in that it states:
“We also stock a wide range of men’s and women’s clothing, bags and wallets and other accessories”
- Although the Respondent’s website gives information about the Respondent and its source of supply, it does so only after following links under the “About Us” tab and a further careful reading of what is disclosed. That, in the opinion of the Panel falls short of the requirement for an active and prominent disclosure of the Respondent’s relationship with the trademark holder.
Accordingly, the Panel finds that the Complainant has made a prima facie showing that the Respondent lacks a right or legitimate interest in the disputed domain names. The Respondent has failed to rebut that prima facie showing and the Panel finds that the Complainant has established the second criteria under the Policy.
C. Registered or Subsequently Used in Bad Faith
Unlike the UDRP the .auDRP does not require a showing that a disputed domain name has been both registered and subsequently used in bad faith. It is sufficient under the .auDRP to establish one or other of those criteria.
The disputed domain names each comprise solely a trademark in which the Complainant has well established and widely recognized rights, or in the case of the disputed domain name <docmarten.com.au> a trivial variation of the trademark. In a number of cases involving the use by a retailer of a supplier’s trademark where the Complaint has been denied, the disputed domain name has included an element in addition to the trademark which could tend to suggest some special aspect of the site. See, for example, GM Holden Ltd v. Publishing Australia Pty Ltd, WIPO Case No. DAU2011-0002. Here, the Internet user is presented with domain names comprising only the Complainant’s trademark (or a minor variation thereof) with no further modifying element such as “For Sale”, “Buy”, “Discount”. In the Panel’s opinion the reasonable expectation of an Internet user seeing one of the disputed domain names is likely, as a first assumption at least, to think that the disputed domain name would lead to the Complainant’s website in the “.au” domain space or to the website of an Australian subsidiary or affiliate of the Complainant. It may be that, whilst the first disputed domain name was in use, an Internet user accessing that site would, after the exercise of some diligence, realize that the site was not one belonging to the Complainant or operated under its sponsorship, affiliation or approval but by then, the initial confusion has occurred. There is nothing in any of the disputed domain names themselves which would be likely to cause an Internet user to wonder whether the disputed domain name was not that of the Complainant.
In the Panel’s opinion, it is reasonable to assume that when registering the disputed domain names the Respondent had in mind to benefit from the likelihood of the assumption that the site to which each disputed domain name directed would be the website of the Complainant or its Australian affiliate. Absent any contrary evidence or explanation from the Respondent the Panel concludes that the Respondent registered the disputed domain names with that intent. The Respondent’s use of the first disputed domain name and, for the reasons discussed in Section B above, its failure to clearly differentiate itself from the Complainant amounts, in the Panel’s opinion, to further evidence of bad faith intent in the registration of the disputed domain names.
In the Panel’s opinion therefore, the disputed domain names were registered in bad faith.
Under the .auDRP, in the light of that finding, it is unnecessary to further consider whether the disputed domain names have been used in bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <docmartens.com.au>, drmarten.com.au> and <dr-martens.com.au> be transferred to the Complainant.
Desmond J. Ryan AM
Date: May 5, 2016
Re: Case No. DAU2016-0008
<docmartens.com.au> et al.
Panel Procedural Order No. 1
The Panel has noted that in Part (V)(B) of the Complaint the Complainant asserts that the Respondent has used the disputed domain names as “parked websites for links to unauthorised footwear selling sites”.
As evidence for the above, the Complainant refers to Annex 6 of the Complaint, which is said to contain screenshots of website links of January 12, 2016 and February 15, 2016 for the respective disputed domain names.
However, an inspection of the printouts attached as Annex 6 appears to show that they are in fact not printouts from the websites at the respective disputed domain names, but rather are search results from Google and Bing searches using search terms corresponding to the respective domain names, i.e. they do not appear to show that the disputed domain names lead to the alleged links but rather that the words within them produce results as Google or Bing search terms.
The Panel notes that the disputed domain names do not currently lead to active websites.
In order to ensure that there is no misunderstanding as to the Complainant's contentions the Complainant is requested to:
(i) confirm that it contends that the Respondent is using the disputed domain names to provide links to websites competing with the Complainant;
(ii) if so, explain in what way it believes the printouts in Annex 6 support that contention.
The Complainant has through April 23, 2016 to comply with this order.
The due date for decision is extended through April 29, 2016.
Desmond J. Ryan
April 20, 2016