The Complainants are “Dr. Martens” International Trading GmbH of Gräfelfing, Germany and “Dr. Maertens” Marketing GmbH of Seeshaupt, Germany, represented by Beetz & Partner, Germany.
The Respondent is David Adeoye of Bowie, Maryland, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with 1&1 Internet AG. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 29, 2012. On February 29, 2012, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the Domain Name. On March 1, 2012, 1&1 Internet AG transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on March 6, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 26, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 27, 2012.
The Center appointed Alan L. Limbury as the sole panelist in this matter on March 30, 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 is a famous international brand of footwear, clothing and accessories, particularly renowned for its distinctive shoes and boots, first sold in the late 1950’s. The Complainants own numerous registrations for the trademarks DR MARTENS and DOC MARTENS in respect of footwear in class 25, including Community trademark No. 150144 DOC MARTENS, registered on February 24, 1999, and United States trademark No. 2397734 DOC MARTENS, registered on October 24, 2000.
The Domain Name was created on September 23, 2011. Prior to this Complaint, it resolved to a website offering “Doc Marten” footwear as well as third parties’ goods. 5. Parties’ Contentions A. Complainant
The Complainant says the Domain Name is phonetically similar to its trademarks, which are identical with “docmarten”. The omission of the “s” does not exclude the similarity and the addition of “boots” does not avoid a high risk of confusion.
The Respondent has no rights or legitimate interests in the Domain Name. His offering of “Doc Marten” footwear and the goods of others is without the authority of the Complainants, falsely represents an affiliation with the Complainants and amounts to passing off and an illegitimate commercial and unfair use of the Domain Name.
The Domain Name was registered and is being used in bad faith. The Respondent must have known of the Complainants’ marks when he registered the Domain Name since the marks are widely and well known. By choosing the Domain Name, the Respondent attempted to attract for commercial gain Internet users to his website by creating likelihood of confusion with the Complainants’ trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and/or of a product or service on the Respondent’s website. The Respondent is likely linking the Domain Name with unauthorized websites selling competitors’ and the Complainants’ footwear without the approval of the Complainants or their licensees. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings
To qualify for cancellation or transfer of the Domain Name, the Complainants must prove each element of paragraph 4(a) of the Policy, namely:
(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
(ii) the Domain Name has been registered and is being used in bad faith.
A respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc,WIPO Case No. D2000-0441. See also Microsoft Corporation v. Freak Films Oy,WIPO Case No. D2003-0109; SSL International plc v. Mark Freeman,WIPO Case No. D2000-1080 and AltaVista Company v. Grandtotal Finances Limited et. al.,WIPO Case No. D2000-0848. A. Identical or Confusingly Similar
The Domain Name is clearly confusingly similar to the Complainants’ registered trademark DOC MARTENS, the absence of the letter “s” and the presence of the word “boots” being insufficient to distinguish the Domain Name from that trademark and the generic Top Level Domain “.com” being inconsequential: Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525.
The Complainants have established this element of their case. B. Rights or Legitimate Interests
The Panel finds that the DOC MARTENS mark is distinctive and well known. The Complainants’ assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interest in the Domain Name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show by concrete evidence that he does have rights or legitimate interests in that name: Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 and the cases there cited. The Respondent has made no attempt to do so.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainants have established this element of their case. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the Domain Name in bad faith for purposes of paragraph 4(a)(iii) of the Policy. The Complainants rely, inter alia, on paragraph 4(b)(iv):
“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location”.
Annex 6 to the Complaint shows that on November 29, 2011, the Respondent’s website was presented as if it were the official website of the owner of the DOC MARTENS mark. This establishes to the satisfaction of the Panel both that the Respondent must have had the Complainants’ mark in mind when he registered the Domain Name and use of the Domain Name for the purpose described in the Policy, paragraph 4(b)(iv). Accordingly, the Panel finds that the Domain Name was registered and is being used in bad faith.
The Complainants have established this element of their case. 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 Domain Name be transferred to the Complainants.
Alan L. Limbury
Sole Panelist
Dated: April 8, 2012
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