Complainants are “Dr. Martens” International Trading GmbH of Gräfelfing, Germany, and “Dr. Maertens” Marketing GmbH of Seeshaupt, Germany (“Complainants”), represented by Beetz & Partner, Germany.
The Respondent is Aihe Net Ltd. a.k.a. net ltd aihe of Fuzhou, Fujian, China. 2. The Domain Names and Registrar
The disputed domain names and are registered with HiChina Zhicheng Technology Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2012. On March 5, 2012, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the disputed domain names. On March 6, 2012, HiChina Zhicheng Technology Ltd. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On March 7, 2012, the Center transmitted an email to the Parties in both Chinese and English language regarding the language of proceedings. On March 9, 2012, Complainants confirmed their request that English be the language of proceeding. Respondent did not comment on the language of proceedings by the specified due date.
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 14, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 3, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 5, 2012.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on April 24, 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
Complainants sell footwear, clothing, and accessories under its DR. MARTENS trademark which has been registered for these goods in multiple jurisdictions including Australia, Canada, the European Community, and the United States of America. Complainants’ goods and Complainants’ DR. MARTENS trademark have been featured in multiple third party publications and have been recognized by third party evaluators as a brand with an iconic reputation.
Respondent is based in China. The disputed domain name was created on January 4, 2012. 5. Parties’ Contentions A. Complainant
Complainants claim that the disputed domain names and are confusingly similar to the DR. MARTENS trademark because they combine the trademark with descriptive elements, specifically the elements “ukco” and “sale”. Complainants also claim that the exclusion of the letter “s” from their DR. MARTENS trademark in the disputed domain name is not a material difference which would avoid consumer confusion. Complainants maintain that they have not authorized Respondent to use the DR. MARTENS trademark and that Respondent does not have any rights or legitimate interests in or to the disputed domain names. Complainants allege that Respondent was aware of Complainants and Complainants’ trademark rights in DR. MARTENS when registering the disputed domain names because both domain names incorporate Complainants’ DR. MARTENS trademark. Regarding use of the disputed domain names, Complainants allege that Respondent has linked the websites featured at the disputed domain names with websites which offer products of third party competitors of Complainants, and alleges that this use has been in bad faith because it is creating consumer confusion and trading off the goodwill of Complainants’ DR. MARTENS trademark. The Complaint requests that the disputed domain names be transferred from Respondent to Complainants. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Language of Proceeding
The language of each of the registration agreements for the disputed domain names is Chinese. Complainants have requested that English be recognized as the language of the proceeding. Respondent has not commented regarding the language of the proceeding. The Center has communicated notice of the Complaint in both the English and Chinese languages and has invited Respondent to answer the Complaint in either language.
The Center has communicated with Respondent in the English and Chinese languages and has provided Respondent with the opportunity to file its response in either language. The content featured on the websites at the disputed domain names is displayed in the English language, and this demonstrates that Respondent has a working knowledge of this language. Taking the foregoing points into account along with Respondent’s default and lack of any communication in this proceeding, the Panel concludes that English should be the language of the proceedings. Translation of the complaint and other materials would cause unnecessary delay. B. Identical or Confusingly Similar
The record shows that Complainants own rights in DR. MARTENS which are recognized in the European Community, United States of America, Canada, and Australia. The disputed domain name features the DR. MARTENS trademark in its entirety, while the disputed domain name features the entire trademark except its final letter (i.e., “s”).
It is not a requirement of the Policy that a complainant’s trademark rights be recognized in a respondent’s county of residence. See, e.g., Advanced Magazine Publishers Inc. v. Computer Dazhong,WIPO Case No. D2003-0668 (“The Policy requires that the disputed domain name must be identical or confusingly similar to a mark in which the Complainant has rights. This requirement can be satisfied by proof that the Complainant is the owner or licensee of a registered mark anywhere in the world – not just in the country of the Respondent’s residence”). A majority of the results of an Internet search query for “Dr. Martens” are related to Complainant’s goods; it is therefore difficult to imagine a scenario where consumers would not be confused by the use of the DR. MARTENS trademark to compose a domain name.
The additional literal elements in the disputed domain names are not distinctive. Specifically, the combination of “drmartens” with the literal element “sale” to compose a domain name does not create a domain name which can be easily distinguished from the DR. MARTENS trademark. The use of the term “sale” in the disputed domain name does nothing to dispel the likelihood of consumer confusion. The term “sale” has been cited by prior UDRP panels of comparable disputes as non-distinctive. See, e.g., F. Hoffmann-La Roche AG v. NetMarketing cc,WIPO Case No. D2005-1216 (deeming “sale” to be a non-distinctive element that did not distinguish the disputed domain name from the complainant’s VALIUM trademark, noting that “sale” “is descriptive and provides no distinctiveness or source of origin elements whatsoever to the domain name at issue, which essentially incorporates the Complainant’s trademark VALIUM”). The Panel believes that the use of the term “sale”, which is defined as “the act of selling” or “a special disposal of goods, as at reduced prices”, with Complainants’ DR. MARTENS trademark to form a domain name increases the likelihood of consumer confusion because its composition suggests that the domain name is connected with Complainants.
Regarding the disputed domain name, this combines a literal element composed of a majority of Complainants’ DR. MARTENS trademark with the letters “ukco”. The Panel views the “drmarten” portion of this domain name as a misspelling of Complainants’ DR. MARTENS trademark. When evaluating misspellings, it is appropriate to review the disputed domain name(s) vis a vis the trademark(s) at issue to determine whether the misspellings create a new or different mark in which a respondent would have rights in for the purpose of the proceeding. See, e.g., adidas-Salomon AG v. Digi Real Estate Foundation, Patrick Williamson,WIPO Case No. D2006-0748. In this case, the Panel does not believe that the exclusion of the letter “s” from Complainants’ DR. MARTENS trademark creates a new or different mark to which Respondent is entitled. Respondent’s use of this misspelling of Complainants’ DR. MARTENS mark in combination with the literal elements “uk” and “co” does not form a domain name which is sufficiently distinct to avoid a likelihood of confusion. The literal element “uk” is recognized as a ccTLD domain name abbreviation for the United Kingdom of Great Britain and Northern Ireland, while the literal element “co” is recognized as a domain name abbreviation for “commercial”. Accordingly, use of the abbreviations “uk” and “co” in this domain name actually aggravates the likelihood of consumer confusion when used with “drmarten”, as consumers would likely believe that the disputed domain name serves as a commercial outlet for Complainants’ goods for the United Kingdom.
The Panel concludes that the disputed domain names are confusingly similar to Complainants’ DR. MARTENS trademark and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. C. Rights or Legitimate Interests
Complainants have established rights in the DR. MARTENS trademark which precede the creation of the disputed domain names. Additionally, the record shows that Complainants’ DR. MARTENS trademark has been highly publicized and used extensively.
There is no evidence in the record to indicate that Respondent is associated or affiliated with Complainants, or that Respondent has any other rights or legitimate interests in the terms used to compose the disputed domain names. Complainants have provided prima facie evidence of Respondent’s lack of rights or legitimate interests in the disputed domain names, and the burden of production therefore shifts to Respondent to come forward with evidence demonstrating the rights or legitimate interests it may have. However, Respondent has not submitted any evidence of rights or legitimate interests in the disputed domain name.
The Panel therefore finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied. D. Registered and Used in Bad Faith
The record shows that Complainants own trademark rights in DR. MARTENS which precede creation of the disputed domain names. Both the disputed domain names are predominantly composed of this trademark. A simple Internet search for “Dr. Martens” results in links predominantly related to Complainants and Complainants’ goods. It is clear that Respondent was likely aware of Complainants or should have known of Complainants when registering the disputed domain names.
The record shows that the content of the websites at the disputed domain names have featured Complainants’ DR. MARTENS trademark and has advertised goods identical to those provided by Complainants under the DR. MARTENS trademark. Additionally, the content has suggested a connection between the disputed domain names and Complainants, including copyright lines reading “© Dr Martens Boot Sale” and “Powered by Dr Martens UK” and page headers reading “Dr Martens Boots UK Shop” and “Dr Martens Shop Online”. Paragraph 4(b)(iv) of the Policy states that where a registrant, by using a domain name, intentionally attempts to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website, such use constitutes evidence of bad faith registration and use. There is no evidence in the record to indicate that Respondent chose the disputed domain names which are subject of the Complaint based upon a bona fide intent to offer goods or services distinctive from those provided by Complainants under the DR. MARTENS trademark. Moreover, the incorporation of Complainants’ trademark in the disputed domain names combined with the content featured on the domain names illustrates an intent to deceive consumers into believing that the disputed domain names are somehow associated with, affiliated with, and/or endorsed by Complainants. There is no evidence in the record to refute this conclusion.
Furthermore, the record also shows that the domain name has been used to provide links to third party websites which offer goods of third party competitors. Specifically, the record shows that this disputed domain name has featured links to third party websites offering goods identical to those provided by Complainants under the DR. MARTENS trademark including shoes, boots, and other goods. The incorporation of third party links relating to goods or services which compete with those provided under another party’s trademark supports a finding that the domain name registrant was aware of the other party’s mark at the time the domain name was registered. Lancôme Parfums et Beaute & Compagnie v. D Nigam, Privacy Protection Services / Pluto Domains Services Private Limited,WIPO Case No. D2009-0728. By registering domain name composed primarily of Complainants’ DR. MARTENS trademark and posting links to third party websites which offer goods of Complainants’ competitors, Respondent is diverting traffic from Complainants’ websites.
The Panel concludes that Respondent’s conduct falls within the scope of paragraph 4(b)(iv) of the Policy. 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 Complainants.
Kimberley Chen Nobles
Sole Panelist
Dated: May 22, 2012
Full & Egal Universal Law Academy