Complainants are “Dr. Martens” International Trading GmbH of Gräfelfing, Germany, and “Dr. Maertens” Marketing GmbH of Seeshaupt, Germany (“Complainants”), represented by Beetz & Partner, Germany.
Respondent is Xixi Xu of Qianyang, Hunan, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Jiangsu Bangning Science & technology Co. Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 7, 2012. On March 7, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 8, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
On March 19, 2012, the Center transmitted an email to the Parties in both the Chinese and English languages regarding the language of the proceeding. On March 19, 2012, Complainants confirmed their request that English be the language of the proceeding. Respondent did not submit its comments.
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 March 28, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 17, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 18, 2012.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on May 9, 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 the 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 December 28, 2011. 5. Parties’ Contentions A. Complainant
Complainants claim that the disputed domain name is confusingly similar to the DR MARTENS trademark because it combines the trademark with the literal element “hotsale”, which Complainants claim is descriptive of Complainants’ products. 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 name. Complainants allege that Respondent was aware of Complainants and Complainants’ trademark rights in DR MARTENS when registering the disputed domain name because the domain name incorporates Complainants’ DR MARTENS trademark. Regarding use of the disputed domain names, Complainants allege that Respondent has linked the website featured at the disputed domain name 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. Complainants request that the disputed domain name be transferred from Respondent to Complainants. B. Respondent
Respondent did not reply to Complainants’ contentions. 6. Discussion and Findings A. Language of Proceeding
The language of the registration agreement for the disputed domain name 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 content featured on the websites at the disputed domain name was 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, the United States, Canada, and Australia. The disputed domain name combines this trademark with the literal elements “hot” and “sale”.
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 Complainants’ goods; it is therefore difficult to imagine a scenario where consumers would not be confused by the use of the trademark to compose a domain name.
The Panel notes that the incorporation of a trademark in its entirety into a domain name has been held to be sufficient to find a likelihood of confusion (see, e.g., Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505). The Panel agrees that the use of the terms “hot” and “sale” in the disputed domain name do not create a domain name which is sufficiently different from the DR MARTENS trademark in which Complainants have rights. These terms have been deemed non-distinctive in prior decisions. See, e.g., Links (London) Limited d/b/a Links of London v. “Barack Hussein Obama Jr”,WIPO Case No. D2011-0878 (citing additional terms used in multiple domain names featuring the complainant’s LINKS and LINKS OF LONDON trademarks as descriptive and non distinctive; one of the disputed domain names at issue was ). There is nothing in the present record which establishes that the use of “hot” and “sale” in this case is adding distinction to the disputed domain name.
The Panel concludes that the disputed domain name is 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 name. 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 name. Complainants have provided prima facie evidence of Respondent’s lack of rights or legitimate interests in the disputed domain name, 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 name. The disputed domain name is 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 name.
Complainants allege that the disputed domain name has been used to direct web traffic to websites selling products of Complainants’ third party competitors. The webpage submitted with the Complaint consists of a search engine results page. While there is no evidence supporting Complainants’ contentions, there is also no evidence in the record which indicates that Respondent has used the disputed domain name to promote a bona fide intent to offer goods or services which are distinguishable from those offered under Complainant’s trademark. As established in Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003), the passive holding of a domain name following its bad faith registration may satisfy the requirements of paragraph 4(a)(iii) if the circumstances of the Respondent’s behavior are indicative of bad faith.
In this case, Respondent has registered a domain name composed of a trademark and non-distinctive terms. The Panel is of the opinion that bad faith is present regardless of whether the use of the domain name has been active or passive. As noted above, a simple Internet search for “Dr Martens” reveals extensive use and promotion of the mark by Complainants’ for Complainants’ goods. Further, a simple Internet search for “Dr Martens” illustrates extensive use of Complainants’ trademark and indicates that registration and use of the disputed domain name has the potential to divert consumers from Complainants’ business activities and Complainants’ legitimate channels of trade.
Accordingly, the Panel finds that Complainants have satisfied the requirements of paragraph 4(a)(iii) 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 name be transferred to Complainants.
Kimberley Chen Nobles
Sole Panelist
Dated: June 6, 2012
Full & Egal Universal Law Academy