The Complainants are “Dr. Martens” International Trading GmbH of Gräfelfing, Germany, and “Dr. Maertens” Marketing GmbH of Seeshaupt, Germany (the “Complainants”), represented by Beetz & Partner, Germany.
The Respondent is Sun Feifei of Zhongshan, Guangdong, China. 2. The Domain Name and Registrar
The disputed domain name (“the 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 April 12, 2012. On April 12, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 17, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On April 17, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On April 17, 2012, the Complainants confirmed their request that English be the language of proceeding. The 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 April 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 14, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 15, 2012.
The Center appointed Karen Fong as the sole panelist in this matter on May 31, 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.
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the domain name, the language of the proceedings shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceedings. According to the information received from the Registrar, the language of the Registration Agreement in relation to the Domain Name is Chinese.
In response to the Center’s email, regarding the language of the proceeding of the Domain Name, the Complainants submitted a request that English be the language of the proceeding on April 17, 2012 for the following reasons: the Registrar being an ICANN registrar usually has knowledge of the English language; the content of the website connected to the Domain Name (“the Website”) is in English and the documentation with the Complaint is in English. The Respondent did not comment on the language of the proceeding by the specified due date.
The Panel accepts the Complainants’ submissions in the Complaint regarding the language of the proceeding and is satisfied that the Respondent appears to be familiar with the English language. The Complainants may be unduly disadvantaged by having to conduct the proceedings in Chinese. Furthermore, the Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding. 4. Factual Background
The Complainants are the owners of the famous international brand DR. MARTENS for footwear, clothing and accessories, particularly renowned for its distinctive shoes and boots, first sold in the late 1950’s. “Dr. Martens” footwear, clothing and accessories are available for sale at retailers throughout the world, and relevantly through many retailers in Australia, as well as online at the “Dr. Martens” website, located at the domain name .
The DR. MARTENS trade mark is registered in many parts of the world including Australia, the European Union, the United States of America, Canada and China. Details of some of these trade mark registrations are as follows:
International Trademark No. 575311 DR. MARTENS of July 18, 1991, registered also in China for footwear in class 25;
Australian Trademark No. 652619 DR. MARTENS of February 8, 1995 for retail services in class 35;
Australian Trademark No. 400023 DR. MARTENS of November 16, 1983 for footwear and clothing in class 25;
Australian Trademark No. 916942 DR. MARTENS of June 20, 2002 for retail services in the field of footwear, clothing etc. in class 35.
The Domain Name was registered on December 18, 2011. The Website was a parking page which featured links to advertisements for the sale of footwear and of “Dr. Martens” footwear on websites which are not authorized or approved by the Complainants as well as on websites which refer to competitors of the Complainants. The Website does not appear to be active at the date of this decision. 5. Parties’ Contentions A. Complainants
The Complainants contends that the Domain Name is identical or confusingly similar to the DR. MARTENS trade mark, the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and is being used in bad faith. The Complainants request transfer of the Domain Name. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark 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
(iii) The Domain Name was registered and is being used in bad faith. B. Identical or Confusingly Similar
The Panel is satisfied that the Complainants have established that they have rights to the trade mark DR. MARTENS and that DR. MARTENS is a famous trade mark.
The threshold test for confusingly similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case the Complainants’ registered trade mark DR. MARTENS is the dominant portion of the Domain Name. The addition of the descriptive term, “bootstore”, does nothing to minimise the risk of confusion. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the generic domain suffix “.com”. The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainants have rights. C. Rights or Legitimate Interests
The Complainants allege that the Respondent is not licensed or in any way affiliated with it and it has at no time given its approval or authorization for the Respondent to use the DR. MARTENS trade mark as part of the Domain Name.
The Panel finds that the Complainants have made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. D. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Complainants’ DR. MARTENS trade mark when it registered the Domain Name. The fact that the Domain Name incorporates the Complainants’ well-known trade mark in its entirety together with words descriptive of the Complainants’ products is in the Panel’s view evidence that the registration of the Domain Name was in bad faith.
With respect to the use of the Domain Name, the Panel observes that the Respondent in using the Website to link to unauthorized websites which are selling competitors’ and “Dr. Martens” footwear without being authorized or approved by the Complainants or their licensees shows a clear intention to attract for commercial gain by confusing and misleading Internet users into believing that the Respondent’s Websites are and the products sold on them are authorised or endorsed by the Complainants. The above is clearly bad faith under paragraph 4(b)(iv) of the Policy.
The Panel also concludes that the actual use of the Domain Name is in bad faith 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.
Karen Fong
Sole Panelist
Dated: June 13, 2012
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