WIPO Domain Name Decision D2009-1253 for drmartenshoes.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. A Domain Privacy/Transure Enterprise Ltd Case No. D2009-1253 1. The Parties

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

The Respondent is A Domain Privacy/Transure Enterprise Ltd, Host Master, of Beaumaris, Australia and Tortola, British Virgin Islands, Overseas Territory of United Kingdom of Great Britain and Northern Ireland, respectively. 2. The Domain Name and Registrar

The disputed domain name is registered with A, Inc. 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2009. On September 23, 2009, the Center transmitted by email to A, Inc. a request for registrar verification in connection with the disputed domain name. On September 25, 2009, A, Inc. 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 Complainants on September 30, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed amendments to the Complaint on September 30, 2009 and October 5, 2009. The Center verified that the Complaint together with the amendments 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, and the proceedings commenced on October 6, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 26, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 28, 2009.

The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on November 2, 2009. 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 in the business of marketing and trading footwear, clothing and accessories. The Complainants use the DR. MARTENS trademark for commercializing footwear, clothing and accessories throughout the world.

The Complainants show to be the holders of the following trademarks:

- DR. MARTENS, registered in the European Union under number 000059147 on March 3, 1999 and applied for on April 1, 1996 for classes 14, 16, 18, 25, 35, 37;

- Doc Martens, registered in the European Union under number 000150144 on February 24, 1999 and applied for on April 1, 1996 for classes 14, 16, 18, 25, 35;

- DR. MARTENS, registered in Australia under number 500799 on December 5, 1988 for class 25;

- DR. MARTENS, registered in Australia under number 570247 on December 5, 1988 for class 25;

- DR. MARTENS, registered in Australia under number 652619 on February 8, 1995 for class 35;

- DR. MARTENS, registered in Australia under number 400023 on November 16, 1983 for class 25;

- DR. MARTENS, registered in Australia under number 916942 on June 20, 2002 for class 35;

- DR. MARTENS, registered in Canada under number TMA420485 on December 10, 1993 and applied for on December 17, 1990 for class 25;

- DR. MARTENS, registered in Canada under number TMA625884 on November 18, 2004 and applied for on June 25, 2005 in class 35;

- DR. MARTENS, registered in the United States of America under number 1454323 on August 25, 1987 and applied for on June 9, 1983 for class 25;

- DR. MARTENS, registered in the United States under number 1798791 on October 12, 1993 and applied for on March 14, 1990 for class 25;

- DR. MARTENS, registered in the United States under number 2838397 on May 4, 2004 and applied for on June 26, 2002 for class 35.

From the information as provided by the registrar, it appears that Transure Enterprise Ltd, the Respondent in the instant case, is the current holder of the disputed domain name , which was registered on or about November 18, 20081 with A, Inc.

The disputed domain name is used to host a parking 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 trademark owners.

On July 2, 2009, the Respondent offered to sell the domain name for USD 500,00.

On September 23, 2009, the Complainants filed a complaint and asked for the transfer of the disputed domain name . 5. Parties' Contentions A. Complainants

The Complainants consider the disputed domain name to be identical or confusingly similar to the trademarks and service marks in which it claims to have rights. The Complainants further claim that the Respondent has no rights or legitimate interests in respect of the disputed domain name. According to the Complainants, the Respondent has not used the disputed domain name in connection with a bona fide offering of services or a legitimate noncommercial use. Also, the Respondent has not been commonly known by the domain name, according to the Complainants. Finally, the Complainants consider that the disputed domain name was registered and is being used in bad faith. B. Respondent

The Respondent did not reply to the Complainants' contentions. 6. Discussion and Findings

Paragraph 15 of the Rules provides that the Panel is to decide the complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

The onus is on the complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the complainant must show that all three elements set out in paragraph 4 (a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are civil, the standard of proof is the balance of probabilities.

Thus for the Complainants to succeed they must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:

i. The 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 domain name; and

iii. The domain name has been registered and is being used in bad faith.

The Panel will therefore deal with each of these requirements in turn. A. Identical or Confusingly Similar

The Complainants must first establish that there is a trademark or service mark in which it has rights. Since the Complainants are the holders of the widely and well-known trademark DR. MARTENS, that is used for footwear, clothing and accessories, it is clearly established that there is a trademark in which the Complainant have rights.

The Panel considers the disputed domain name to be composed of the non-distinctive generic term “shoes” and the name “drmarten”, which is confusingly similar to the DR. MARTENS trademark. The Panel is of the opinion that the mere addition of non-distinctive text to a complainant's trademark with the omission of one letter constitutes confusing similarity, as set out in paragraph 4(a)(i) of the Policy (See Lime Wire LLC v. David Da Silva/C,WIPO Case No. D2007-1168, where the domain name was held to be confusingly similar to the LIME WIRE trademark, especially with addition of the word “download” because users typically download the complainant's software; International Business Machines Corporation v. Scott banner,WIPO Case No. D2008-0965, where the domain name was held to be confusingly similar to the IBM trademark because many Internet users would assume that the domain name identifies a website from which they can download software supplied by the complainant; Nintendo v. Marco Beijen, Beijen Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,WIPO Case No. D2001-1070, where the addition of the words “mail”, “post”, “fan” and “top50” to the word “pokemon” in the domain names was held to be of minimal impact on what the visitor of the website focuses on, namely the word “pokemon”; Nintendo of America, Inc. v. Gray West International,WIPO Case No. D2000-1219, where it was held that the addition of the word “games” in the domain name does nothing to reduce its confusing similarity with Nintendo's POKÉMON marks); Dr. Ing. h.c. F. Porsche AG v. Kentech, Inc. a.k.a. Helios Lab a.k.a. Orion Web a.k.a. Titan Net a.k.a. Panda Ventures a.k.a. Spiral Matrix and Domain Purchase, NOLDC, Inc.,WIPO Case No. D2005-0890, where the domain name was held to be confusingly similar to the trademark PORSCHE).

The addition of the non-distinctive term “shoes” does nothing in this case to reduce the confusing similarity of the disputed domain name with the Complainants' widely and well-known DR. MARTENS trademark. Indeed, if anything, the disputed domain name is very likely to make assume Internet users that the website that is linked to the disputed domain name would be hosted by the famous shoe manufacturer. Therefore, the Panel considers the disputed domain name to be confusingly similar to the Complainants' trademark DR. MARTENS.

Accordingly, the Complainants have made out the first of the three elements that it must establish. B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the complainant has the burden of establishing that the respondent has no rights or legitimate interests in respect of the domain names.

It is established case law that it is sufficient for the complainant to make a prima facie showing that the respondent has no right or legitimate interests in the domain name in order to shift the burden of proof to the respondent. (See: Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094 ); Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455 (); Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. 2004-0110 ().)

The Panel notes that the Respondent has not been commonly known by the disputed domain name and that the Respondent has not acquired trademark or service mark rights. The Respondent's use and registration of the disputed domain name was not authorized by the Complainants. There are no indications that a connection between the Complainants and the Respondent existed.

Moreover, the Panel is of the opinion that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

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. (See, e.g.: McLaughlin Gormley King Company v. BWI Domains c/o Domain Manager, FA 1230837 (National Arbitration Forum, December 4, 2008); Stunt Dynamics c/o John Zimmerman v. BWI Domains c/o Domain Manager, FA 1226425 (National Arbitration Forum, November 14, 2008); MacKenzie-Childs Aurora LLC v. BWI Domain Manager c/o Domain Manager, FA 1218043 (National Arbitration Forum, September 12, 2008)).

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.

Moreover, by registering the disputed domain name, the Respondent has made the use of the disputed domain name by the Complainants impossible.

As a result, the Complainants have made a prima facie showing that the Respondent has no right or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith

The complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith (See, e.g. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052).

For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

i. circumstances indicating that the respondent has registered or the respondent has acquired the 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

ii. the respondent has registered the domain name in order to prevent the owner of the trademark 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 domain name primarily for the purpose of disrupting the business of a competitor; or

iv. by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site 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 web site or location or of a product or service on its web site or location.

In the instant case, the Panel considers that the Respondent must have had knowledge of the Complainants' rights in the DR. MARTENS trademark when it registered the disputed domain name, since the Complainants' trademark is a widely and well-known trademark, and the Respondent has combined it in the domain name with a word (“shoes”) descriptive of the Complainants' products. The Respondent's awareness of Complainants' trademark rights at the time of registration suggests opportunistic bad faith registration (See: Nintendo v. Marco Beijen, Beijen Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, supra, where the word “pokémon” was held to be a well-known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix suggested knowledge of the complainant's rights in the trademarks).

In the Panel's assessment, since the Respondent must have had knowledge of the Complainants' rights in the DR. MARTENS trademark at the moment it registered the disputed Domain Name, and since the Respondent had no legitimate interests in the disputed domain name, it is established that the disputed domain name was registered in bad faith.

Moreover, the Respondent offered to sell the disputed domain name to the Complainant for USD 500,00, without documenting out-of-pocket costs directly related to the disputed domain name. In this Panel's view, it is very unlikely that the out-of-pocket costs directly related to the disputed domain name would have amounted to USD 500,00. As a result the Panel finds that the Respondent registered the disputed domain name primarily for the purpose of selling the disputed domain name registration for valuable consideration in excess of the out-of-pocket costs directly related to the disputed domain name. These circumstances support a finding of bad faith use and registration pursuant to paragraph 4(b)(i) of the Policy.

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 off the goodwill associated with the Complainants' trademark by accruing click-through fees for each redirected and confused Internet user. (See Axcan Pharma Inc. v. BWI Domain Manager c/o Domain Manager, FA 1217153 (National Arbitration Forum, September 17, 2008); McLaughlin Gormley King Company v. BWI Domains c/o Domain Manager, FA 1230837 (National Arbitration Forum, December 4, 2008).) These circumstances support a finding of bad faith use pursuant to paragraph 4(b)(iv) of the Policy. 7. Decision

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 name, be transferred to the Complainants.

Flip Jan Claude Petillion
Sole Panelist

Dated: November 16, 2009

1 The Panel notes that while the Complainants indicate that the disputed domain name was registered on November 18, 2009, the WhoIs data indicates a creation date for the domain name of November 19, 2009. In any event, it makes no difference to the outcome here.

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