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 Qing Ma of Luxi, Yunnan, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Jiangsu Bangning Science & technology Co. Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2012. On April 30, 2012, the Center transmitted by email to Jiangsu Bangning Science & technology Co. Ltd. a request for registrar verification in connection with the disputed domain name. On May 2, 2012, Jiangsu Bangning Science & technology Co. Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On May 2, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On the May 4, 2012, the Complainants confirmed its 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 May 8, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 30, 2012.
The Center appointed Dr. Hong Xue as the sole panelist in this matter on June 13, 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 the Complainants’ trademark for footwear, clothing and accessories and has been registered in China, Australia, the United States and other countries.
The Respondent registered the disputed domain name on December 15, 2011. 5. Parties’ Contentions A. Complainant
The Complainants contend that the disputed domain name is confusingly similar to the trademark DR. MARTENS, the registration and use of which by the Complainant long precedes the registration of the disputed domain name.
The Complainants contend that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainants contend that the disputed domain name was registered and is being used in bad faith.
The Complainants request that the disputed domain name be transferred to it. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings A. Language of Proceeding
The language of the registration agreement for the disputed domain name , as confirmed by the Registrar, is Chinese. The Complainants have requested that the language of the proceeding be English and has presented its reasons. The Respondent did not make any submissions in relation to the language of the proceeding even though the Center’s communications to this effect (as was the Notification of Complaint) were both in English and in Chinese.
According to paragraph 11(a) of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding 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 proceeding.
Among other circumstances, the respondent’s ability to clearly understand the language of the complaint, and the complainant’s being disadvantaged by being forced to translate, may in appropriate circumstances both support a panel’s determination that the language of the proceeding remains the language of the complaint, even if it is different from the language of the registration agreement (L’Oreal S.A. v. MUNHYUNJA,WIPO Case No. D2003-0585).
The Panel notes that the Respondent does not dispute the Complainants’ request that the language of the proceeding be in English and the Complainants would have to endure the difficulty in translating all the submissions into and taking part in the proceeding in the language of the registration agreement. Given these circumstances, the Panel determines under the Rules, paragraph 11(a) that English shall be the language of the proceeding. B. Identical or Confusingly Similar
Pursuant to the Policy, paragraph 4(a)(i), a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. In line with such requirement, a complainant must prove its trademark rights and the similarity between the disputed domain name and its trademark.
The Panel finds that before the registration of the disputed domain name the trademark DR. MARTENS had been registered and used on the Complainants’ products in a number of countries.
The disputed domain name is . Apart from the generic top-level domain suffix “.com”, the disputed domain name consists of “kopadrmartens”, which can easily be read as “kopa” and “drmartens”. The latter part of the disputed domain name, “drmartens”, is obviously confusingly similar to the Complainants’ registered trademark DR. MARTENS. The Complainants submit that the former part, “kopa”, could mean either the family name of a person or a Californian radio station. The Respondent, however, does not make any submission thereon.
The Panel holds that it would be appropriate to presume the meaning and usage of “kopa” in the Internet community where the Respondent resides. Since the Respondent resides in Yunnan, China, the Panel searched the term “kopa” in the Chinese Internet community via major search engines used in China (such as Baidu or Bing), and finds the term prominently and consistently referring to a so-called fashion brand “KOPA Femme”, which was launched in Los Angeles and is being marketed by more than 200 stores around the world. Given that the Complainants’ mark DR. MARTENS is primarily used on footwear, clothing and accessories, the combination of “kopa” as primarily used on female clothing with it does not preclude a finding of confusing similarity.
The Panel therefore finds that the disputed domain name is, as a whole, confusingly similar to the Complainants’ registered trademark DR. MARTENS. Accordingly, the Complainants have proven the first element required by paragraph 4(a) of the Policy. C. Rights or Legitimate Interests
The Complainants assert that the Respondent has no rights or legitimate interests in the disputed domain name and, as stated above, the Respondent did not provide any information to the Panel to assert any rights or legitimate interests it may have in the disputed domain name or its two parts, i.e. “drmartens” and “kopa”.
It is apparent from the Complaint that there is no connection between the Respondent and the Complainants or its trademark DR. MARTENS. Paragraph 4(c) of the Policy lists a number of circumstances which can be taken to demonstrate a respondent’s rights or legitimate interests in a domain name. However, there is no evidence before the Panel that any of the situations described in paragraph 4(c) of the Policy apply here. To the contrary, the lack of a Response leads the Panel to draw a negative inference.
Therefore, and also in light of the Panel’s findings below, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name . Accordingly, the Complainants have proven the second element required by paragraph 4(a) of the Policy. D. Registered and Used in Bad Faith
The Complainants contend that the website at the disputed domain name is used to sell competitors’ and “Dr .Martens” footwear without being authorized or approved by the trademarks’ owners or their licensees and the Respondent, therefore, registered and is using the disputed domain name in bad faith. The Respondent did not respond.
The Panel notes that the pertinent evidence submitted by the Complainants, i.e. Annex 7 of the Complaint, cannot prove that the website at the disputed domain name is used to sell the Complainants’ or its competitors’ footwear. Instead, when the Panel visited the web address “www.”, it did not resolve to any web location.
Since the disputed domain name is a combination of the words “drmartens” with “kopa”, another brand used on apparels, it seems that the Respondent was aware of the commonality of the two marks when registering the disputed domain name. The Panel therefore finds that the Respondent knowingly registered the disputed domain name that is confusingly similar to the Complainants’ trademark DR. MARTENS, which may prove that the disputed domain name was registered in bad faith.
Although the disputed domain name’s website is not accessible at the moment, the disputed domain name that is completely at the Respondent’s disposal may be used to market apparels online and likely to cause confusion with the Complainants’ mark. Given the disputed domain name’s similarity to the Complainants’ trademark DR. MARTENS and the Respondent’s bad faith in registering the disputed domain name, the Respondent’s holding of the disputed domain name is a substantive threat to the legitimate interest of the Complainants and shows its bad faith.
The Panel finds that this is adequate to conclude that the Respondent has registered and is using the disputed domain name in bad faith under the Policy, paragraph 4(b)(iv). Therefore, the Complainants have successfully proven the third element required by paragraph 4(a) of the Policy. 7. Decision
For all 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 the Complainants.
Dr. Hong Xue
Sole Panelist
Dated: June 27, 2012
Full & Egal Universal Law Academy