Complainant is “Dr. Martens” International Trading GmbH of Gräfelfing, Germany, and “Dr. Maertens” Marketing GmbH of Seeshaupt, Germany, represented by Beetz & Partner, Patent- und Rechtsanwälte, Germany.
Respondent is MCPS, Timothy Marten of California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc.. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2011. On October 13, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On October 13, 2011, GoD, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 21, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 22, 2011.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on December 1, 2011. 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
Complainant uses the trademark DR. MARTENS in the footwear industry and owns several registrations such as CTM 59147, registered with OHIM on April 1, 1996 for various goods in class 25 as well as for retail services in class 35. The DR. MARTENS trademark is on use since the 1950s. Complainant’s website is located under the domain name . On May 2, 2011 in another UDRP dispute between Complainant and Respondent (“Dr. Martens” International Trading GmbH, and “Dr. Maertens” Marketing GmbH v. MCPS, WIPO Case No. D2011-0393), the WIPO UDRP panel awarded the disputed domain names , and to Complainant. 5. Parties’ Contentions A. Complainant
Complainant argues that the disputed domain name is confusingly similar to the trademark DR. MARTENS owned by Complainant; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
To succeed, Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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 burden of proving these elements is on Complainant. A. Identical or Confusingly Similar
To prove this element, Complainant must have rights in a trademark or service mark, and the disputed domain name must be identical or confusingly similar to Complainant’s trademark or service mark.
Complainant uses and has registered the trademark DR. MARTENS, as mentioned in paragraph 4 above. The Panel is therefore satisfied that the Complainant has registered trademark rights in DR. MARTENS.
Respondent has used Complainant’s trademark almost in its entirety and added the word “sucks”. Several prior UDRP decisions have held that a domain name is confusingly similar to a trademark when a respondent uses complainant’s trademark and adds a neutral word that fails to distinguish the disputed domain name from the trademark (see, for example, the early WIPO UDRP cases Nokia Corporation v. N a.k.a IBCC, WIPO Case No. D2000-0102; Caterpillar Inc. v. Roam the Planet, Ltd.,WIPO Case No. D2000-0275; Viacom International Inc. v. Frank F. Jackson and Nancy Miller,WIPO Case No. D2003-0755).
In the present case, the word “sucks” could be considered to be a generic word that does not effectively distinguish the disputed domain name from Complainant’s DR. MARTENS trademark.
The Panel therefore finds that, in the circumstances of this case, the disputed domain name is confusingly similar to Complainant’s DR. MARTENS trademark. Consequently, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
The first matter to be addressed in the analysis of the possible rights or legitimate interests of a respondent who uses a third party’s trademark combined with the word “sucks” is whether such use might fall under a free speech exemption, in which case the registrant might be simply exercising its legitimate interests in making public criticism of a company, a product or a service. However, the free speech rights must also be confronted with the element contained in paragraph 4(c)(ii) of the Policy, according to which there are no legitimate interests when the respondent has the intent of tarnishing the trademark of such third party.
In this regard, there have been UDRP panels who denied complaints related to cases when the respondent was only exercising its free speech rights, such as in Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. D2008-0647: “The Panel has carefully reviewed Respondent’s website, including the printouts submitted by Complainant showing the prior version of the website and the more current version after Respondent changed the logo. The Panel does not agree that any aspect of the website constitutes “tarnishment” as that term is used in the Policy. Although it is true that Respondent’s criticism is meant to harm Complainant’s reputation and drive physicians away from Complainant’s services, that is not the kind of “tarnishment” prohibited by the Policy. Rather, as this Panel has previously held, tarnishment in the context of the UDRP refers to unseemly conduct such as linking unrelated pornographic, violent or drug-related images or information to an otherwise wholesome mark. See Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505 (citing Nicole Kidman v. John Zuccarini d/b/a Cupcake Party, WIPO Case No. D2000-1415 (WIPO Jan. 23, 2001)). Fair-use criticism, even if libelous, does not constitute tarnishment and is not prohibited by the Policy; rather, claims sounding in commercial libel must be brought in other legal venues. [...] For the foregoing reasons, the Panel finds that Complainant has failed to sustain its burden of proving that the Respondent lacks right or a legitimate interest in the Domain Name.”
However, in the present case regarding the disputed domain name Respondent is not exercising any free speech rights, since the disputed domain name is not being used to publicize any legitimate criticism against Complainant, but is simply directing Internet users to GoDaddy’s opening web page. There is no tarnishment either, as the web page does not contain any reference to Complainant or to the trademark DR. MARTENS. In fact, it is apparent that Respondent used the disputed domain name only to trade off of the reputation of Complainant. Thus, Respondent did not use the disputed domain name to make a bona fide offering of goods or services.
Accordingly, Complainant established a prima facie case that Respondent does not have legitimate interests in the disputed domain name. Since Respondent has not replied to the Complaint and, thus, has not presented any other evidence or elements to justify any rights or legitimate interests in connection with the disputed domain name, the Panel has found no indication that any of the circumstances described in paragraph 4(c)(i)-(iii) of the Policy could apply to the present matter.
Therefore, given the circumstances described above, the Panel finds that Respondent has no right or legitimate interests in respect to the disputed domain name, according to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Complainant submits that Respondent was aware of the existence of the trademark DR. MARTENS and therefore the disputed domain name was registered in bad faith.
In the Panel’s view, the fact that Complainant has a wide client basis for the shoes sold under the DR. MARTENS brand is an indication that Respondent indeed could not fail to have prior knowledge of Complainant’s trademark. Moreover, the use of the word “sucks” by Respondent appears to this Panel to be also an indication that Respondent is willing to create an association of its website with Complainant’s products.
The existence of bad faith by Respondent has also already been decided in a similar case between the same parties, i.e. in “Dr. Martens” International Trading GmbH, and “Dr. Maertens” Marketing GmbH v. MCPS, WIPO Case No. D2011-0393: “In this regard, previous UDRP panels have found that the “mere passive holding of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale” (Cruzeiro Licenciamentos Ltda. v. David Sallen, Sallen Enterprises and J.D.Sallen Enterprises,WIPO Case No. D2000-0715; and Vivendi Universal v. Mr. Jay David Sallen and GO247.COM, INC.,WIPO Case No. D2001-1121). In this case, the disputed domain names host a parking website, which this Panel find inter alia creates the impression of availability for sale, as contended by the Complainants and not rebutted by the Respondent. These claims are further asserted by the fact that the Respondent registered a series of identical domain names with different gTLDs and that such registrations were secured almost four years ago with no indication of any use different from the one currently disclosed. These circumstances therefore suggest opportunistic bad faith in registering the disputed domain names encompassing well-known trademarks and the records of the matter have no element that could lead the Panel to a different understanding.”
The Panel is therefore satisfied that Respondent has registered and used the disputed domain name in bad faith pursuant to paragraph 4(b)(iv) of the Policy. Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied. 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 be transferred to Complainant.
Gabriel F. Leonardos
Sole Panelist
Dated: December 15, 2011
Full & Egal Universal Law Academy