WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

“Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. noorinet

Case No. D2014-0083

1. The Parties

The Complainants are “Dr. Martens” International Trading GmbH of Gräfelfing, Germany and “Dr. Maertens” Marketing GmbH of Seeshaupt, Germany, represented by Beetz & Partner, Germany.

The Respondent is noorinet of Daegu City, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <drmartensshop.com> is registered with KINX Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2014. On January 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 24, 2014, 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 January 27, 2014, the Center transmitted an email to the parties in both Korean and English language regarding the language of the proceedings. On January 27, 2014, the Complainants requested that English be the language of the proceedings. The Respondent did not comment on the language of the proceedings. In response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed an amendment to the Complaint on February 3, 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 with the amendment in Korean and English, and the proceedings commenced on February 5, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 25, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 26, 2014.

The Center appointed Andrew J. Park as the sole panelist in this matter on March 11, 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 Complainants are companies registered in Germany. The business of the Complainants arose from the invention of an air-cushioned sole by Munich-based Dr. Maertens and Dr. Funck and has been operating for about 50 years. The Complainants’ products marketed under the trademark DR. MARTENS include footwear, clothing and accessories, and they are particularly known for their shoes and boots. The products are available through retailers throughout the world and online at the website “www.drmartens.com”. The trademark DR. MARTENS has been acknowledged as a popular fashion brand in various publications. The trademark DR. MARTENS has also been recognized by prior UDRP panels as a well-known mark (e.g., 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. PrivacyProtect.org/Tech Domain Services private Limited, WIPO Case No. D2010-1342).

The Complainants are joint owners of the following trademark registrations:

The Respondent is noorinet, a company located in Daegu City, Republic of Korea.No further information about the Respondent is known beyond what is disclosed in the WhoIs record of the disputed domain name. The disputed domain name was created on July 7, 2013. On the date of this Decision, the disputed domain name resolves to a parking page maintained by an entity apparently connected to the Registrar.

5. Parties’ Contentions

A. Complainant

The Complainants contend that:

1) The disputed domain name is confusingly similar to the Complainants’ trademark. The disputed domain name combines the characterizing element “drmartens” with the descriptive element “shop” which does not avoid the risk of confusion;

2) The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has been using the disputed domain name as a parked website for links to unauthorized footwear selling sites for “Dr. Martens” products but also for footwear of third parties being direct competitors of the Complainants. By choosing and using the disputed domain name, the Respondent is likely to mislead and deceive consumers into believing that it has a sponsorship, affiliation or approval with the original Dr. Martens trademark owners/licensees/ customers when this is not the case; and

3) The disputed domain name was registered and is being used in bad faith. The trademark DR. MARTENS is a well-known mark, which the Respondent must have been aware of. The Respondent intentionally attempted to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainants’ trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Panel to order the transfer of the disputed domain name to the Complainants. Those requirements are that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and (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.

The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of said Rules. In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.

6.1 Language of the Proceeding

Having considered the circumstances of the case, the Panel decides that English be adopted as the language of the proceedings under paragraph 10 of the Rules. In coming to this determination, the Panel has taken the following into account:

1) The Complaints have already been submitted in English and the Panel is fully capable of dealing with the Complaint in English;

2) The Respondent has not indicated any language preference; and

3) Since no response has been filed, there does not appear to be any procedural benefit that may be achieved by insisting on the default language of the proceedings and it is likely that delay to the proceedings would result should the Complainants be required to re-submit the Complaint in Korean.

6.2 Discussion

A. Identical or Confusingly Similar

The Complainants clearly have rights in the trademark DR. MARTENS by virtue of their trademark registrations and well-known, long-standing, worldwide use of the trademark. The disputed domain name incorporates the trademark DR. MARTENS in its entirety with exception of “.”. Apart from this, the only difference between the disputed domain name and the trademark DR. MARTENS is the descriptive suffix “shop”. The Panel agrees that the descriptive suffix does not assist in distinguishing the disputed domain name from the trademark DR. MARTENS.

The Panel therefore finds, pursuant to the Policy, paragraph 4(a)(i), that the disputed domain name is confusingly similar to the Complainants’ trademarks.

B. Rights or Legitimate Interests

There is no evidence in this case to support a finding that the Respondent has rights or legitimate interests in the disputed domain name.

The general consensus of UDRP panel opinion on the issue of whether a respondent has rights or legitimate interests is set out in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). On this approach, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, the complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.

In this case, the Complainants have established a strong prima facie case against the Respondent. The Respondent has failed to come forward with any allegations or evidence demonstrating rights or legitimate interests in the disputed domain name, and, further, there is no evidence in the case file that would demonstrate that the Respondent had such rights or legitimate interests.

The Panel finds that there was no bona fide offering of goods or services in connection with the Respondent’s use of the disputed domain name. There is no evidence that the Respondent has ever been or is commonly known by the name “Dr Martens”. The Complainants never authorized or licensed the Respondent to use its trademarks, either expressly or implicitly. See Audi AG v. Mike Gillespie, Gillespie Auto Group, WIPO Case No. D2007-1850. The Panel further notes that the passive holding of a domain name does not give rise to rights or legitimate interests. The Complainants alleges that the Respondent has been using the disputed domain name as a parked website for links to unauthorized footwear selling sites for “Dr. Martens” products but also for footwear of third parties being direct competitors of the Complainants. Thus, by choosing and using the disputed domain name, the Respondent is likely to mislead and deceive consumers into believing that it has a sponsorship, affiliation or approval with the original “Dr. Martens” trademark owners/licensees/ customers when this is not the case. According to the Complainant, this shows that the Respondent’s use of the disputed domain name is not fair use, because it confuses the Internet users as to the owner of the trademarks, and diverts the attraction the Complainants’ trademarks cause to its own commercial enterprises. See Volvo Trademark Holding AB v. e-motordealer Ltd, WIPO Case No. D2002‑0036.

The Panel therefore finds, pursuant to the Policy, paragraph 4(a)(ii), that the Respondent lacks rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith - any one of which is sufficient to support a finding of bad faith. In particular, paragraph 4(b)(iv) states that the following circumstance is evidence of bad faith registration and use:

“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The Complainants have submitted evidence that is not rebutted by the Respondent, which appears to show that the Respondent had attempted to attract for commercial gain Internet users to the website of the disputed domain name by creating a likelihood of confusion with the Complainants’ trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.

Commercial gain must have been the Respondent’s intention for registering the disputed domain name. Based on the evidence submitted, the Panel agrees with the prior UDRP panel decisions of Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Above.com Domain Privacy/Transure Enterprise Ltd, supra and “Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. PrivacyProtect.org/Tech Domain Services private Limited, supra, in holding that the trademark DR. MARTENS is well-known. Thus, in deciding to incorporate the trademark DR. MARTENS in the disputed domain name, the Respondent must have been aware of and intended to benefit from the fame in the same. The Panel finds that the only credible explanation for the registration of the disputed domain name is to take advantage of the similarity between the disputed domain name and the Complainants’ trademarks for commercial advantage. As mentioned above, the Respondent has no connection whatsoever to the trademark DR. MARTENS. The registration of a domain name by a respondent that is similar to a distinctive trademark, when the respondent has no relationship to that trademark, is sufficient evidence of bad faith (see Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403; Centurion Bank of Punjab Limited v. West Coast Consulting, LLC, WIPO Case No. D2005-1319). The Panel furthermore finds that the Respondent’s current use of the disputed domain name for passive holding is, in all the circumstances, indicative of bad faith.

For the above reasons, pursuant to paragraph 4(a)(iii) of the Policy, the Panel finds that the Complainants have shown that the disputed domain name has been registered and is being used in bad faith by the Respondent.

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 <drmartensshop.com> be transferred to the Complainants.

Andrew J. Park
Sole Panelist
Date: March 25, 2014