Complainant is "Dr. Martens" International Trading GmbH, "Dr. Maertens" Marketing GmbH of Germany, represented by Beetz & Partner of Germany.
Respondent is Rampe Purda of Finland / Privacy--P of Shanghai, the People’s Republic of China. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING ( SHANGHAI) CO., LTD dba HebeiD. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2010. On November 17, 2010, the Center transmitted by email to Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING ( SHANGHAI) CO., LTD dba HebeiD. a request for registrar verification in connection with the disputed domain name. On November 19, 2010, Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING ( SHANGHAI) CO., LTD dba HebeiD. 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 Complainant on November 22, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on November 24, 2010.
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 Respondent of the Complaint, and the proceedings commenced on November 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 19, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 20, 2010.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on December 29, 2010. 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. Language of the proceeding
The Rules, paragraph 11 state that, 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.
The Center sent instructions to Complainant and Respondent concerning the language of the proceeding on November 22, 2010. The Center established that the Complaint had been submitted in English. According to the information the Center received form the concerned registrar, the language of the Registration Agreement for the Domain Name is Finnish.
Following the instructions of the Center, Complainant has submitted a request for English to be the language of the administrative proceedings on November 25, 2010. The Respondent did not respond. On November 29, 2010, the Center notified the parties that it had decided to accept the Complaint as filed in English and that the Panel would be able to choose to write a decision in either language. The Panel decides that the decision will be written in English. 4. Factual Background
Complainant’s company produces inter alia footwear.
Complainant is, inter alia, the proprietor of a DR. MARTENS Community wordmark, registered under number 59147 on April 1, 1996 for, inter alia, footwear.
The Domain Name has been registered on October 28, 2005. The Domain Name directs to a Google results page which features links to inter alia websites which refer to competitors of Complainant. 5. Parties’ Contentions A. Complainant
Complainant contends that the use of "drmartins" in the Domain Name is "almost identical" to its DR. MARTENS trademark and that the addition "boots" is merely descriptive.
Complainant claims that Respondent has no rights or legitimate interests in the Domain Name. According to Complainant, the use of the Domain Name for a parked website which features links to inter alia websites which refer to competitors of Complainant, constitutes a illegitimate commercial and unfair use of the Domain Name.
Complainant asserts that the Domain Name has been registered and is being used in bad faith, because Respondent intentionally attempts to attract for commercial gain Internet users to its website or other online location, by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and/or online location. According to Complainant, Respondent was aware of Complainant’s trademark and by its registration and use of the Domain Name, Respondent misappropriates Complainant's goodwill. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Respondent Identity
According to an online Whois-database for the Domain Name, the Respondent is privacy protected. The Complaint was initially brought against Privacy--P. After the registrar had disclosed the registrant, the Center allowed the Complainant to amend the Complaint, upon which Rampe Purda was stated as Respondent.
Any final determination as to the proper identity of the respondent(s) is at the sole discretion of the Panel. The Panel decides that for practical purposes here the proper Respondents in these proceedings could include both Rampe Purda (the underlying registrant) and Privacy--P (the privacy service).
In principle, Rampe Purda could also be correct as sole Respondent. However, as is evidenced by many decisions (see The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC,WIPO Case No. D2009-0057; Research In Motion Limited v. PrivacyP/Pluto Domain Services Private Limited,WIPO Case No. D2009-0324; Christian Schmid/RapidShare AG v. PrivacyAnywhere Software, LLC, Mikhail Berdnikov Protected Domain Services Customer ID: DSR-2262893, Protected Domain Services Customer ID: DSR-2092987 Protected Domain Services Customer ID: DSR-2239262, Winsoul, Inc., Aleksey Atushev,WIPO Case No. D2010-0894), privacy services such as Privacy--P are often used by cyber squatters to hide their identity. In order to maintain the effectiveness of the UDRP procedure, several panels have taken a pragmatic approach by rendering their decision in respect of both the privacy service and the underlying registrant, and indeed also upholding Complainant elections to bring a Complaint against both. (see Research In Motion Limited v. Privacy Locked LLC,WIPO Case No. D2009-0320 and cases referred herein). In that manner there is reasonable certainty that the registrar, in case of a decision to transfer the domain name, would be unlikely to refuse to transfer the domain name to the Complainant on the ground that the privacy service (and not the disclosed underlying registrant) is the registrant of record in the WhoIs. This Panel concurs with that view and therefore identifies Rampe Purda and Privacy--P both as Respondent. B. Identical or Confusingly Similar
Complainant has shown that it has rights in the DR. MARTENS trademark.
The element ‘DR. MARTINS’ is to be considered the dominant part of the Domain Name, while the word ‘boots’ is generic. The use of descriptive or generic words in addition to a trademark in a domain name cannot prevent the domain name from creating a likelihood of confusion. The descriptive and generic elements do not take away the overall impression the dominant part of the domain name, being the Trademark, makes on the public (see Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409; F. Hoffman-La Roche AG v. Rudiger Meissner,WIPO Case No. D2009-1127 and Dr. Ing. h.c. F. Porsche v. Bv berry smits trading co,WIPO Case No. DNL2009-0049). Furthermore, the mere replacement of the "e" by an "i" does not change this.
Therefore, the Panel concludes that the Domain Name is confusingly similar to Complainant’s trademark. C. Rights or Legitimate Interests
Once a Complainant establishes a prima facie case against a respondent in relation to this element, the burden is on the Respondent to provide concrete evidence of its right or legitimate interests under paragraph 4(c) of the Policy: Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, WIPO Case No. D2004-0753.
Complainant claims that Respondent has no right to or legitimate interest in the Domain Name. The Panel understands this to mean that Complainant has not authorized Respondent to use the Domain Name.
Furthermore, there is no evidence that Respondent was known by the Domain Name.
The Panel finds that Complainant’s trademark is not generic or descriptive. Furthermore, the Panel has found that when the URL (Domain Name) is typed in the browser, this leads to a Google results page with links to websites which are “triggered” by the "Dr. Martins" element. These include websites which refer to competitors of Complainant. This is a form of direct navigation, which is a method of arriving at specific websites (in this case a Google or Bing search results page) directly through the website address bar. The use of the Domain Name in this case is therefore comparable to connecting it to a parking page.
It is well established that parking pages trading on the goodwill of a trademark (as may be evidenced by direct or indirect links to competitors, websites or goods) do not constitute a bona fide offering of goods or services, nor do they constitute a legitimate noncommercial or fair use (see mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141; Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304; Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415; Champagne Lanson v. Development Services/MailP, Inc.,WIPO Case No. D2006-0006; The Knot, Inc. v. In Knot we Trust LTD,WIPO Case No. D2006-0340; Ustream.TV, Inc. v. Vertical Axis, Inc,WIPO Case No. D2008-0598).
The Panel considers that, therefore, Complainant has provided prima facie evidence of absence of rights and legitimate interests on the part of Respondent, to whom the onus therefore shifts to establish, by concrete evidence, its rights or legitimate interests in the Domain Name.
As Respondent has failed to file a Response, it has not provided any evidence on its behalf.
Based on the above, the Panel concludes that Respondent has no right or legitimate interest in the Domain Name. D. Registered and Used in Bad Faith
The registration of the DR. MARTENS trademark on which Complainant relies predates the Domain Name registration by several years. The Panel deems it likely that Respondent was aware of Complainant’s trademark when registering the Domain Name.
On the basis of the evidence provided, the Panel is satisfied that the trademark of Complainant has a strong reputation in Europe, including Finland. In addition, a simple trademark register search would have informed Respondent of the existence of Complainant’s trademark, while a Google search on ‘drmartinsboots', as carried out by the Panel, leads to various results referring to "Dr. Martens". Therefore, even if Respondent had not actually been aware of Complainant’s rights, a small effort on its part would have revealed those rights. If Respondent has not made that effort, this comes for its accord, since that would imply that Respondent has been willfully blind to such rights.
By connecting the Domain Name to the Google search engine, the Domain Name effectively triggers a search on webpages which features the trademark or have the trademark a metatag or Adword. These include websites of competitors. Therefore, Respondent has registered and uses the Domain Name to attempt to attract Internet users to its website, by creating a likelihood of confusion with Complainant’s trademark as to the source, affiliation, or endorsement of Respondent’s website.
Under these circumstances, the Panel concludes that the Domain Name has been registered and is being used in bad faith. 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 Complainant.
Wolter Wefers Bettink
Sole Panelist
Dated: January 12, 2011
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