WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Ni How / Above.com Domain Privacy

Case No. D2012-1911

1. The Parties

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

The Respondent is Ni How of Nanjing, China, with Above.com Domain Privacy of Beaumaris, Victoria, Australia, as a privacy domain name registration service.

2. The Domain Name and Registrar

The disputed domain name <wwwdrmartens.com> is registered with Above.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on September 26, 2012. On September 27, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 28 2012, 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 21, 2012 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 amended Complaint on October 22, 2012.

The Center verified that the Complaint together with the amended 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, and the proceedings commenced on October 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 13, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 14, 2012.

The Center appointed Hariram Jayaram as the sole panelist in this matter on November 23, 2012. 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 International Trading GmbH and Dr. Maertens Marketing GmbH are both companies registered under the laws of Germany. The Complainants are the owners of the following trade marks:

- Community Trade Mark No. 59147 DR. MARTENS of 1 April 1996, registered for various goods, mainly for footwear and clothing in class 2, as well as retail services in class 35

- Australian Trademark No. 500799 DR. MARTENS of 5 December 1988 for footwear and clothing in class 25

- Australian Trademark No. 570247 DR. MARTENS of 5 December 1988 for footwear and clothing in class 25

- Australian Trademark No. 652619 DR. MARTENS of 8 February 1995 for retail services in class 35

- Australian Trademark No. 400023 DR. MARTENS of 16 November 1983 for footwear and clothing in class 25

- Australian Trademark No. 916942 DR. MARTENS of 20 June 2002 for retail services in the field of footwear, clothing etc. in class 35

- Canadian Trademark No. 420485 DR. MARTENS of 17 December 1990, mainly for footwear and clothing in class 25

- Canadian Trademark No. 625884 DR. MARTENS of 25 June 2002 mainly for retail services in the field of footwear and clothing in class 35

The following US trade marks are registered by Dr. Martens International Trading GmbH:

- US Trademark No. 1454323 DR. MARTENS of 9 June 1983 for footwear in class 25

- US Trademark No. 1798791 DR. MARTENS of 14 March 1990 for footwear in class 25

- US Trademark No. 2838397 DR. MARTENS of 26 June 2002 for retail services in the field of footwear and clothing in class 35

The disputed domain name was registered on April 24, 2012.

5. Parties’ Contentions

A. Complainant

DR. MARTENS is a famous international brand for footwear, clothing and accessories, particularly renowned for its distinctive shoes and boots, first sold in the late 1950’s. Dr. Martens footwear, clothing and accessories are available for sale at retailers throughout the world as well as online at the DR. MARTENS website, located at the domain name <drmartens.com>(the “DR. MARTENS website”). The disputed domain name “wwwdrmartens.com” is phonetically identical to the Complainants’ trade marks. The various trade marks DR. MARTENS are identical with “drmartens”. The omission of the “point” between the parts “dr” and “martens” within the disputed domain name will not be sufficient in order to avoid likelihood of confusion. Consumers will only pay their attention to the characterizing element “drmartens”.

The respondent is using the disputed domain name <drmartens.com> to host a parked website which features links to advertisements for the sale of footwear and of Dr. Martens footwear on websites which are not authorized or approved by the trade mark owners as well as on websites which refer to competitors of the Complainants. By using the domain name, the Respondent is likely to mislead and deceive consumers into believing that he has a sponsorship, affiliation or approval with the original DR. MARTENS trade mark owners/licensees/customers when this is not the case. The Respondent is clearly making false representations that he and/or his website have a sponsorship, approval or association with the original DR. MARTENS trade mark owners/licensees/customers which is not the case. The Respondent is hereby passing off the trade mark owners’ goodwill and reputation in the DR. MARTENS trade marks and the DR. MARTENS name. The Respondent is making an illegitimate commercial and unfair use of the disputed domain name <drmartens.com> with the clear intention for commercial gain misleading to divert consumers and to tarnish the trademark and service marks DR. MARTENS. From the facts provided above, nothing seems to indicate that the Respondent has any rights or interests in respect of the domain name “wwwdrmartens.com” nor any legitimate interest.

By using the disputed domain name, the Respondent intentionally attempted to attract for commercial gain interested users to his/the Respondent’s website or other online location, by creating likelihood of confusion with the Complainants’ trade marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and/or location and/or of a product or services on the Respondent’s website or location. The Respondent is linking the disputed domain name with unauthorized websites which are selling competitors’ and Dr. Martens footwear without being authorized or approved by the trade marks’ owners or their licensees. In the instant case, the Respondent must have had knowledge of the Complainants’ rights in the DR. MARTENS trade marks when he registered the disputed domain name, since the Complainants’ trade marks are well-known trade marks. The Respondent’s awareness of the Complainants’ trade mark rights at the time of registration suggests opportunistic bad faith registration. Since the Respondent must have knowledge of the Complainants’ rights in the DR. MARTENS trade marks at the moment he registered the disputed domain name, and since the Respondent has no legitimate interests in the disputed domain name, it is established that the disputed domain name was registered in bad faith. Besides, the disputed domain name is linked to an active website featuring links to third parties, some of whom sell products in direct competition with the Complainants. This is a clear indication that the Respondent is intentionally attempting to attract Internet users for commercial gain. By doing so, the Respondent is creating a likelihood of confusion with the Complainants’ trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. It is more than likely that the Respondent is profiting from the goodwill associated with the Complainants’ trade mark by accruing click-through fees for each redirected and confused Internet user. These circumstances support a finding of bad faith use.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainants to prove each of the following three elements to obtain an order for the domain name to be cancelled or transferred to the Complainants:

(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trade mark 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 rely entirely on the Complainants’ statements and documents to come to a decision because of the failure on the part of the Respondent to file a Response.

A. Identical or Confusingly Similar

The Complainants are the registered owners of the DR. MARTENS trade mark in many countries. The Complainants have made substantial use of the trade mark particularly in relation to footwear. Apart from the “.com” gTLD, the disputed domain name incorporates the Complainants’ DR. MARTENS trade mark in its entirety without the “point” between the words “dr” and “martens” and preceded by the letters “www”.

In Reuters Limited v Global Net 2000, Inc, WIPO Case No. D2000-0441, the panel held:

“In relation to domain name (1), the relevant part of this domain name is "wwwreuters". Part of this name, "reuters", is identical to the Complainant’s trademark REUTERS. The other part of this name, "www", is the well know acronym for "world wide [web]", and is an extremely common, although not universal, prefix (when succeeded by a period) to the domain name in a URL for a web page on the Internet. The letters "www" thus have no distinguishing capacity in the context of domain names. In fact, in the context of domain names, the letters "www" have the effect of focusing particular attention on the word succeeding them, in this case the word "reuters". This is because a casual reader of the domain name may wrongly think that there is a period between the "www" and the succeeding word, and so wrongly assume that the domain name is in fact comprised only of the succeeding word. In addition, this Administrative Panel acknowledges that the practical effect of preceding a trademark with the letters "www" in a domain name is so-called "typo-piracy" … - that is, attracting to a different web site the Internet user who mistakenly fails to insert a period after the letters "www" when typing the URL of the intended web site. Because of both the visual similarity and the potential for typo-piracy, this Administrative Panel finds that the domain name "wwwreuters.com" is confusingly similar to the Complainant’s trademark REUTERS.”

The Panel agrees with the decision above. The Panel finds that the minor differences between the Complainants’ trade mark and the disputed domain name do not alter the fact that the disputed domain name is confusingly similar to the Complainants’ trade mark. The Respondent has only omitted the point between the words “dr” and “martens” and added the letters “www” which is commonly repeated by users when typing or searching for web addresses.

The Panel finds that the Complainants have satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy enables a respondent to aver that the disputed domain name has been used in connection with a bona fide offering of goods or services. In the alternative the respondent may also argue that it is making a legitimate noncommercial use of the disputed domain name and has no intention to mislead or divert consumers.

The facts before the Panel are that the disputed domain name resolves to a website which offers links to advertisements for the sale of footwear and of DR. MARTENS footwear on websites which are not authorized or approved by the Complainants as well as links to websites which refer to competitors of the Complainants. The evidence is also clear that the Complainants have no relationship with the Respondent and has not given permission to him to use the DR. MARTENS mark. The Panel finds that the Respondent is not be able to rely on paragraph 4(c) of the Policy.

In Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Above.com Domain Privacy/Transure Enterprise Ltd, WIPO Case No. D2009-1253, the panel held:

“The Respondent’s only use of the disputed domain name has been to divert traffic to third party websites, some of whom sell shoes of the Complainants’ competitors. Moreover, the Respondent presumably receives referral fees of some sort for the placement of these advertisements on the corresponding website. Such does not constitute a bona fide use or a legitimate noncommercial use, as contemplated by the Policy.

Diverting Internet traffic to third party websites of direct competitors of the Complainants can even be considered to be misleading and damaging to the Complainants’ trademarks. In the present case, the Panel considers that the Respondent has misleadingly diverted consumers and damaged the trademarks at issue.”

In view of the above, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and the Complainants have satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainants have submitted that the disputed domain name is registered and being used in bad faith. The Complainants have averred that the Respondent must have had knowledge of the Complainants’ rights in the DR. MARTENS trade marks when he registered the disputed domain name considering the fact that the Complainants’ trade marks are well-known trade marks.

In BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007, the panel held:

“The Complainant’s trademarks are indeed distinctive and known by the public in the United States and worldwide. Furthermore, given the widespread and long-standing advertising and marketing of goods and services under “BELLSOUTH” trademarks online and in the media, the Panel considers that the Respondent had knowledge of the trademarks owned by the Complainant when registering the disputed domain name. This awareness of the Complainant’s trademarks is confirmed by the fact that the disputed domain <bellsouthvoip.com> contains in its entirety the Complainant’s trademark “BELLSOUTH” with the addition of the suffix “voip” which is closely related to the services provided by the Complainant.”

The Respondent is using the disputed domain name to provide a website with links to the websites of the Complainant’s competitors. Such a practice has been described as “epitome of bad faith” in Weather Shield, Mfg., Inc. v. Domain Magic, LLC, WIPO Case No. D2007-0052. The Respondent’s website also offers advertisements for the sale of footwear and of Dr. Martens footwear on websites which are not authorized or approved by the Complainants and could be infringing the Complainants’ intellectual property rights.

Taking into account all the factors observed in this instant case and the evidence submitted by the Complainants, the Panel finds that the Complainants have established the bad faith of the Respondent in registering and using the disputed domain name. The Panel finds that the Complainants have satisfied the requirements of paragraph 4(a)(iii) 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 <wwwdrmartens.com> be transferred to the Complainant.

Hariram Jayaram
Sole Panelist
Date: December 6, 2012