The Complainants are "Dr. Martens" International Trading GmbH and "Dr. Maertens" Marketing GmbH, of Gräfelfing and Seeshaupt, respectively, Germany, represented by Beetz & Partner, Germany.
The Respondent is Argo Blue LLC of Pepper Pike, Ohio, United States of America; Domains By Proxy, LLC of Scottsdale, Arizona, United States of America. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , , , , , , , , , , , , , and > are registered with GoD, LLC (“the Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2012. On February 7, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 8, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 9, 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 February 14, 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 February 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 7, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 8, 2012.
The Center appointed Jane Lambert as the sole panelist in this matter on March 15, 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
Both Complainants are private companies incorporated with limited liability in the Federal Republic of Germany. The Respondent Domains By Proxy, LLC is a domain privacy company which holds the disputed domain names on bare trusts for one, Argo Blue LLC , a company that is believed to be located in the United States of America.
The Complainants supply footwear, garments and accessories under the “Dr. Martens”, “Doc Martens”, “Docs” and “DM” brands. They take their name from their founder, Dr. Klaus Maertens, who served as a doctor in the German army during the Second World War. While on leave, Dr. Maertens injured his foot in a skiing accident. Finding his army boots uncomfortable, Dr. Martaens designed a boot with soft leather uppers and rubber soles.
After the war Dr. Martaens and an old university friend started to manufacture footwear to that design using surplus leather and rubber immediately after the Second World War. Their products came to the attention of a footwear company in Northampton which took a license to manufacture their footwear in the United Kingdom. The Complainants’ boots became very popular with young, male industrial workers. Despite their German origins the Complainants’ boots are seen as a British institution not just in the United Kingdom but also around the world including their home country. Significantly, the domain name of one of their German online retailers is .
The Complainants have registered the signs DR. MARTENS and DOC MARTENS as Community Trade Marks for footwear in class 25 and retail services in class 35 in the European Union, United States, Canada and many other countries.
Save for its name, location and the fact that it uses a domain privacy service, nothing is known of the Respondent. Certainly nothing is known of its business activities or any brands under which it trades. It did not respond to letters before claim from the Complainants’ letters and it has taken no part in these proceedings.
An unusual but not unique feature of this case is that the Respondent does not appear to be using any of the disputed domain names for a website. The Complaint exhibits error pages for each of those domains recording that the requested URL could not be retrieved. The Panel also tried to visit some of those sites on March 22, 2012 with the same result. In most cases of this kind the respondent parks the domain name on a page containing sponsored links and searches as was the case in “Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. PrivacyP/Tech Domain Services private Limited,WIPO Case No. D2010-1342, which is one of the cases upon which the Complainants rely. Occasionally, the respondent offers the disputed domain for sale for an exorbitant sum or at least a hefty mark-up as happened in Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. A Domain Privacy/Transure Enterprise Ltd,WIPO Case No. D2009-1253, another of the Complainants’ authorities. The Respondent in this case has done neither of those things.
According to the Registrar’s verification response, the disputed domain name were registered in 2011. 5. Parties’ Contentions A. Complainants
The Complainants claim the transfer of the disputed domain names on the following grounds:
1. The disputed domain names are identical or confusingly similar to trade marks in which they have rights;
2. The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
3. The domain names were registered and are being used in bad faith.
The evidence in support of the first ground is as that the Complainants registered
- DR. MARTENS for footwear and clothing in class 25 and retail services in class 35 as a Community Trade Mark under egistration number CTM 59147 on 1 April 1996; and
- DOC MARTENS for footwear and clothing in class 25 and retail services In class 35 as a Community Trade Mark under registration number CTM 150144 on 24 February 1999.
They have corresponding United States and Canadian registrations for those marks.
The disputed domain names incorporate one or other of those Community trade marks and combine the mark with descriptive words like “men” and “women” as in the disputed domain names and or product names like “Jemma” or “Black Grisly” as in the disputed domain names and . The Complainants alleged that those combinations are calculated to induce Internet users to believe that the disputed domain names belong to the Complainants and that they are to be used for sites that market or contain information on the Complainants’ footwear in general, footwear for men or women or specific products of the Complainants.
In respect of the second ground, the Complainants plead in the first bullet point of paragraph 11B of their Complaint:
“The Respondent is not currently using the contested domain names.”
They say that by choosing such well known trade marks as DR. MARTENS and DOC MARTENS and combining them with prominent style names like “1460” the Respondent is likely to mislead and deceive consumers into believing that it has a sponsorship, affiliation or approval with the original DR. MARTENS and DOC MARTENS trade mark owners, licensees or customers. Citing “Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. PrivacyP/Tech Domain Services private Limited,WIPO Case No. D2010-0134 and Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. A Domain Privacy/Transure Enterprise Ltd,WIPO Case No. D2009-1253, they accuse the Respondent of passing off. They add that the Respondent is “making an illegitimate commercial and unfair use of the contested domain names with the clear intention for commercial gain misleading to divert consumers and to tarnish the trademark and service marks ‘Dr Martens’ and ‘Doc Martens’.” They conclude that “from the facts provided above nothing seems to indicate that the Respondent has any rights or interests in respect of the contested domain name nor any legitimate interest.”
As to the third ground, the Complainants say first that the Respondent has intentionally attempted to attract for commercial gain users to its site or other online locations by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location. They invite the Panel to infer that the Respondent “likely intends to link the contested domain names with unauthorized websites which are selling competitors’ and ‘Dr. Martens/Doc Martens’ footwear without being authorized or approved by the trademarks’ owners or their licensees.” The Complainants say that the Respondent must have had knowledge of the Respondent’s rights when it registered the disputed domain names as the Complainants’ marks are “widely and well known trade marks” and that such awareness ”at the time of registration suggest opportunistic bad faith registration”. In support of that contention they refer to Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,WIPO Case No. D2001-1070 and BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007. Finally they say that since the Respondent must have knowledge of the Complainants’ rights in the DR. MARTENS/DOC MARTENS trade marks at the moment it registered the disputed domain names, and since the Respondent had no legitimate interest in the disputed domain names “it is established that the disputed domain names are registered in bad faith.” In support of that proposition they cite Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. A Domain Privacy/Transure Enterprise Ltd, WIPO Case No. D2009-1253. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order to succeed in their claim, the Complainants have to prove that each of the following elements is present:
(i) the disputed domain names must be 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 names; and
(iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
Each of the disputed domain names combines the Complainants’ registered trade mark DR. MARTENS or DOC MARTENS with one or more other words or numerals. Most of those other words or numerals refer to one of the Complainants’ products. Some words such as “shoes” or “fishermansandal” refer to the Complainant’s merchandise in general or a range of merchandise. “Mens” and “womens” refer to footwear for men or, as the case may be, women. The following table shows the construction of the disputed domain names and the significance of the word with which the trade mark is combined.
Domain Name Trade Mark Other Word Significance
DR. MARTENS
Regina
Women’s boot
DOC MARTENS
shoes
Merchandise
DOC MARTENS
8761
Product code
>
DR. MARTENS
Black grizzly
Product range
DR. MARTENS
Black Nappa
Range of boots
DR. MARTENS
Club
Product name
DR. MARTENS
Jemma
Women’s boot
DR. MARTENS
Original
Product range
DR. MARTENS
Original 1460
Product code
DR. MARTENS
Phina
Women’s boot
DR. MARTENS
Pier
Boot
DR. MARTENS
Regina
Women’s boot
DR. MARTENS
zack
Product range
DR. MARTENS
3eye
Product name
DR. MARTENS
14608 Eye
Product name
DR. MARTENS
3989 wing tip
Type of shoe
DR. MARTENS
8092 fisherman sandal
Product code
DR. MARTENS
8761
Product code
DR. MARTENS
Triumph1914
Boot
DOC MARTENS
Mens
Merchandise
wo
DOC MARTENS
Womens
Merchandise
DR. MARTENS
Womens
Merchandise
The mere incorporation of the Complainant’s trade marks into the disputed domain names makes the disputed domain names confusingly similar to trade marks in which the Complainants have rights. The combination of those marks with words referring to the Complainants’ merchandise, product ranges or individual products reinforces such confusion. The Panel is satisfied that the first element is present. B. Rights or Legitimate Interests
It is not entirely inconceivable that there could be a justification for the registration of 22 domain names that are confusingly similar to the Complainants’ mark but, if there is, it should be up to the Respondent to assert it. Paragraph 4(c) of the Policy invites respondents to demonstrate that they have rights or legitimate interests in domain names and lists a number of circumstances in which they can do so. The Respondent has not taken advantage of that opportunity and has not rebutted the Complainants’ prima facie case that it lacks rights or legitimate interests in all of the disputed domain names. In the absence of any evidence to the contrary the Panel holds that the second element is present. C. Registered and Used in Bad Faith
The Complainants’ final hurdle is to prove that the disputed domain names were registered in bad faith and that they are being used in bad faith. This is a double probanda as is illustrated aptly by Eddy’s (Nottingham) Limited, trading as Superfi v. Mr. Kingsley Smith,WIPO Case No. D2000-0789. In that case an employee of the complainant had registered a domain name that was identical to the complainant’s trade mark with the complainant’s consent in order to develop a website for the complainant. Later the parties fell out and respondent ceased to use the website to promote the complainant’s business. The complainant’s claim for transfer of the domain name failed because the complainant could not prove that the domain name had been registered in bad faith though it could, of course, prove that the domain name was being used in bad faith.
In most cases registration and use in bad faith are taken together and proved indirectly by showing the existence of one or more of the circumstances of paragraph 4(b) of the Policy. The problem in this case is that the Complainants have not even attempted to prove use in bad faith. On the contrary they have pleaded expressly that there is no use and have even gone so far as to exhibit to their statement of case screen shots that indicate that each of the disputed domain names is irretrievable. They seem to believe that all they have to prove is that their marks have a reputation and that the respondent has registered confusingly similar domain names without their consent
The Panel’s initial inclination was to dismiss this complaint. The words of paragraph 4(a)(iii) of the Policy could hardly be plainer. They require proof of registration in bad faith and use in bad faith and they are there for a reason. The Policy was never intended to resolve all domain name disputes, nor even all cyber-squatting ones. It is a documents only procedure without any means of resolving conflicts of fact. Evidence is not taken on oath. There is not even a requirement for complaints and responses to be verified by statements of truth. The Policy is intended to deal with clear cases of speculative registration of domain names for the purpose of ransom or other illicit benefit. The double probanda was inserted to filter out cases that are better left to the courts. They are equipped to resolve conflicts of fact because they can take evidence on oath and test it under cross-examination. If a respondent is not actually doing anything wrong at the moment, or at least nothing that clearly amounts to cyber-squatting, by what authority can he be deprived of business assets for which he has paid good money?
Another reason why the Panel was inclined to throw out this case was to send out a very clear message to trade mark proprietors, particularly proprietors of marks with a reputation, that there are no exceptions to the rule that a complainant must prove all three elements of paragraph 4(a) of the Policy, including the double probanda. An accusation of bad faith, whether for the purpose of paragraph 4(a)(iii) of the Policy or reverse domain name hijacking under paragraph 15(e) of the Rules, is not to be made lightly. It is not be inferred simply because a domain name that incorporates a trade mark with a reputation is registered without the proprietor’s consent. There are all sorts of good reasons for doing that. Members of a vintage Rolls Royce touring club or Manchester City supporters in a particular neighborhood would be amazed if they were told that they needed permission from the manufacturer of their pride and joy or the football club that they follow in order to register a domain name that reflects the purpose and nature of their association notwithstanding that their domain name might well incorporate the manufacturer or MCFC corporate name or trade mark.
A case that is often cited in support of the proposition that anyone having the temerity to register a domain name that incorporates a well known corporate name or trade mark without the proprietor’s permission is Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The facts of that case had many similarities to this one:
- the disputed domain name did not resolve to a web site or other on-line presence;
- there was no evidence that a web site or other on-line presence was in the process of being established which would have used the domain name;
- there was no evidence of advertising, promotion or display to the public of the domain name and, finally; and
- there was no evidence that the respondent had offered to sell, rent or otherwise transfer the domain name to the complainant, a competitor of the Complainant, or any other person.
In short, there was no positive action being undertaken by the respondent in relation to the domain name in that case just as there is none in this. In that case as in this the panel had to consider whether the complainant had proved that the domain name had been registered in bad faith and used in bad faith. As in this case there was plenty of evidence of registration in bad faith but none of use of any kind whatsoever.
Acknowledging that there was no evidence of actual use of the domain name, the panel said at paragraph 7.9 that that did not resolve the question of whether the domain name was being used in bad faith by the respondent. The panel continued:
“the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name "being used in bad faith" is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”
Even though this passage has been quoted many times and endorsed by many distinguished panelists, this Panel has never been comfortable with it. It appears to substitute the concept of acting in bad faith for the very clear words of paragraph 4(a)(iii) of the Policy that require registration in bad faith and use in bad faith. The notion that “use” can somehow connote “inaction” on occasions has led to oxymorons such as “passive use” that could well have emanated from George Orwell’s Ministry of Truth.
It is clear, however, from a careful reading of the Telstra case that the panel did not ignore the double probanda. On the contrary, in paragraphs 7.3 to 7.6 the panel restated the need to prove both registration in bad faith and use in bad faith. The real lesson from Telstra however is that though registration in bad faith and use in bad faith are separate probanda the same evidence can be used for both. In most cases, the evidential burden is discharged by proving one or more of the circumstances in paragraph 4(b) of the Policy. Where that is not possible the complainant has to satisfy the panel that the circumstances of the case are eiusdem generis those in that paragraph.
In the last sentence of paragraph 7.10 of Telstra the panel noted that the circumstances identified in paragraph 4(b) of the Policy are "without limitation" - that is, paragraph 4(b) of the Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith. In the next paragraph the panel asked what those circumstances could be and concluded that the question could not be answered in the abstract but only in respect of the particular facts of a specific case.
The circumstances that led the panel to conclude that there had been registration in bad faith and use in bad faith were as follows:
“(i) the Complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use in Australia and in other countries,
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,
(iii) the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name,
(iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and
(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.”
Now it is important to stress that a panel is not a legislature and its decision is not to be construed and applied in the same way as a statute. The existence of one or more of those circumstances in a different case would not necessarily propel the panel in the subsequent case to the same result.
Applying Telstra the Panel has considered the circumstances of this case to determine whether they are eiusdem generis those of paragraph 4(b) of the Policy.
(1) The Respondent has registered not just one but 22 domain names each of which combines one of the Complainants’ trade marks with the name of one its products or a range of merchandise. The obvious question to ask is “Why?” What possible honest use can the Respondent have for such a portfolio?
(2) If the Respondent does have an honest use for those disputed domain names paragraph 4(c) of the Policy gave it an opportunity to explain itself but it failed to avail itself of that opportunity. Not only that but it failed to respond to the Complainants’ letters before claim. Again, the Panel has to ask why.
(3) It took advantage of a privacy service. There is, of course, nothing wrong with that but it makes it almost impossible for anyone else to enquire whether there might be any circumstances that would bring it with paragraph 4(c) of the Policy.
Now there may be a reasonable explanation for the Respondent’s conduct but the Panel has to decide this case on the balance of probabilities. The likelihood is that the disputed domain names have been registered and are being used for the purpose of obtaining a benefit to which the Respondent is not entitled and that, of course, would amount to registration in bad faith and use in bad faith.
Thus, the Panel concludes that the third element is present. 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 names , , , , , , , , , , , , , , , , , , , , and be transferred to the first named Complainant1.
Jane Lambert
Sole Panelist
Dated: March 24, 2012
1 To the extent necessary for any implementation purposes, the choice of which Complainant should be submitted directly by the Complainants to the concerned registrar.
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