The Complainant is “Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH of Gräfelfin and Seeshaupt, Germany, represented by Beetz & Partner, Germany.
The Respondent is Li Ai of Jianshui, China. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Web Commerce Communications Limited dba WebN (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2012. On May 14, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 14, 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.
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 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 5, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 6, 2012.
The Center appointed Nicholas Weston as the sole panelist in this matter on June 12, 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 Panel finds that appropriate notice of this proceeding has been given to the Respondent and that the Center has discharged its responsibility under paragraph 2(a) of the Rules. The words “calculated to achieve actual notice” in paragraph 2 of the Rules do not demand proof of service. 4. Factual Background
The Complainant operates a business selling footwear, clothing and accessories globally. The Complainant holds registrations for the DR. MARTENS trademark and variations of it in numerous countries including the United States of America (“United States”), which it uses to designate footwear, clothing and accessories. A small sample of the registrations cited in evidence is set out below:
Serial No. Trademark Country Reg. No. Class Registration Date
1
DR. MARTENS
Australia
400023
25
November 16, 1983
2
DR. MARTENS
Australia
500799
25
December 5, 1988
3
DR. MARTENS
Canada
420485
25
December 10, 1993
4
DR. MARTENS
United States
1454323
25
August 25, 1987
5
DR. MARTENS
United States
1798791
25
October 12, 1993
6
DR. MARTENS
International
575311
25
July 18, 1991
The United States trademark registration has been in effect since 1987 and has been used internationally since the 1960’s. Dr. Martens is a well-known global brand.
The Complainant conducts business on the Internet using numerous domain names containing its mark DR. MARTENS including with a footwear, clothing and accessories business website resolving from these domain names. The Complainant also owns a number of domain names comprising or containing the term “drmartens”.
The Disputed Domain Name was registered on December 19, 2011, which resolves to a web page containing advertisements and links related to Dr. Martens brand footwear. 5. Parties’ Contentions A. Complainant
The Complainant cites its trademark registrations of the trademark DR. MARTENS in various countries as prima facie evidence of ownership.
The Complainant submits that the mark DR. MARTENS is well known (and submits a body of evidence going to worldwide consumer brand recognition). The Complainant submits that its rights in that mark predate the registration of the Disputed Domain Name . It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the DR. MARTENS trademark and that the similarity is not removed by the omission of the fullstop after the term “dr”, the omission of the letter “s” and the addition of the word “shop”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Respondent has no trademark rights in or license to use the Complainant’s trademark. The Complainant also contends that use, which intentionally trades on the fame of another can not constitute a bona fide offering of goods or services (citing Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. A Domain Privacy/Transure Enterprise Ltd,WIPO Case No. D2009-1253, “with the clear intention for commercial gain misleading to divert consumers and to tarnish the [DR. MARTENS] trade mark and service marks”).
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to paragraphs 4(a)(iii) and 4(b) of the Policy, using the Complainant’s DR. MARTENS mark in the Disputed Domain Name, and has intentionally attempted to attract for commercial gain Internet users to his/the Respondent’s website or other online location, by creating likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website (presumably referring to Philip Morris Inc. v. Alex Tsypkin,WIPO Case No. D2002-0946). The Complainant also cites the finding in Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070, which held for the Complainant owner of a “well-known mark of which the use by someone without any connection or legal relationship with the Complainant suggested opportunistic bad faith”. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the complainant has the burden of proving the following:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”. A. Identical or Confusingly Similar
The Panel finds that the Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark DR. MARTENS in the United States and in many other countries throughout the world. The Panel finds that the Complainant has rights in the mark DR. MARTENS in the United States, pursuant to United States Trademark Registration No. 1454323 registered on August 25, 1987. The Panel also finds the Complainant has rights in International trademark registration No. 575311 which also applies in the Respondent’s country, China. In any event, the propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358). The Panel finds that the Complainant has rights in the mark DR. MARTENS.
The Panel also finds that the mark DR. MARTENS is well known: see Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. A Domain Privacy/Transure Enterprise Ltd, WIPO Case No. D2009-1253 (“the widely and well-known trademark DR. MARTENS”); “Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. PrivacyP/Tech Domain Services private Limited, WIPO Case No. D2010-1342 (“given the fame and notoriety of the Complainants”); and “Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. Huaqing Tian, WIPO Case No. D2012-0447 (“the trade mark DR MARTENS is well-known”).
Turning to whether the Disputed Domain Name is identical or confusingly similar to the DR. MARTENS trademark, the Panel observes that the Disputed Domain Name comprises: (a) an exact reproduction of the Complainant’s trademark; (b) conjoined with the fullstop after the word “dr” omitted; (c) with the letter “s” omitted; (d) followed by the suffix “shop”; and (e) followed by the top level domain suffix “.com”.
It is well established that the top-level designation used as part of a domain name should be disregarded when considering identity or confusing similarity: (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.;WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; and Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374). The relevant comparison to be made in these circumstances is with the second level portion of the Disputed Domain Name; “drmartenshop”.
It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it may be found confusingly similar to that mark despite the addition of a word or, in this case, an obvious contraction of a descriptive word (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; and Wal Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033).
This Panel agrees with the numerous other UDRP panels that have followed the line of reasoning set out in Deutsche Telekom AG v. Timmy Comeau, WIPO Case No. D2003-0377, which held that the addition of the word “shop” is not sufficient to avoid confusion. Nor is the omission of the fullstop or the letter “s” sufficient to remove the similarity or avoid confusion.
In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698, the panel held that “[t]he use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the Complainant’s mark into thinking they are on their way to the Complainant’s Website”. The Panel finds that the Disputed Domain Name is therefore confusingly similar to the DR. MARTENS trademark.
Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a nonexhaustive list of ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name:
(i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Policy places the burden on the complainant to establish the absence of respondent’s rights or legitimate interests in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The evidential burden of production then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles,WIPO Case No. D2000-1306; and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), paragraph 2.1)
It is well established that a respondent has a right to register and use a domain name to attract Internet traffic based solely on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant (see, National Trust for Historic Preservation v. Barry Preston,WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc.,WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich,WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp.,WIPO Case No. D2001-0031; and EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047). However, this business model is legitimate only if the domain name was registered because of its attraction as a descriptive phrase comprising dictionary words, and not because of its value as a trademark and that web site is then used to post links that are relevant only to the common meaning of the phrase comprising dictionary words. (See, National Trust for Historic Preservation v. Barry Preston, supra.; The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340; WIPO Overview 2.0, paragraph 2.2)
However, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is misleadingly directing Internet users to a pay-per-click (“PPC”) landing web page dominated by an article describing the Complainant’s history and advertising or offering for sale products in connection and competition with the Complainant’s mark, thereby illegitimately “passing off the owner’s goodwill and reputation” for its own benefit. The Complainant also has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark.
On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Name.
This Panel finds that the Respondent is making an illegitimate commercial use of the Disputed Domain Name. By misleadingly diverting consumers, it can be inferred that the Respondent is opportunistically using the Complainant’s well-known mark in order to attract Internet users to its website and has been using the Disputed Domain Name to divert Internet traffic to its PPC web page.
The Panel finds for the Complainant on the second element of the Policy. C. Registered and Used in Bad Faith
The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.
“b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, (relevantly):
ii. you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
iii. you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv. by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
The examples of bad faith registration and use in Policy, paragraph 4(b) are not exhaustive of all circumstances from which such bad faith may be found (see: Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. (See M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230).
The evidence supports the Complainant’s contention that the Respondent registered and has used the Disputed Domain Name in bad faith. The onus is on the Respondent to make the appropriate enquiries. Paragraph 2 of the Policy clearly states: “It is your [domain-name holder’s] responsibility to determine whether your domain name registration infringes or violates someone else’s rights”. The apparent lack of any good faith attempt to ascertain whether or not the Respondent was registering and using someone else’s trademarks, such as by conducting trademarks searches or search engine searches, supports a finding of bad faith (see Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304; L’oreal v. Domain Park Limited,WIPO Case No. D2008-0072; BOUYGUES v. Chengzhang, Lu Ciagao,WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141).
The Panel finds that the trademark DR. MARTENS is so well known internationally for footwear that it is inconceivable that the Respondent might have registered a domain name similar to or incorporating the mark without knowing of it.
Further, a gap of ten years between registration of the Complainant’s trademark and the Respondent’s registration of the Disputed Domain Name (containing the trademark) can in certain circumstances be an indicator of bad faith. (See Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415). In this case, the Complainant held direct United States registration for the trademark DR. MARTENS, United States Registration No. 1454323 from 1987, predating its rights from the Respondent’s registration by approximately 24 years.
The diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions. (See L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; and Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814).
The Respondent’s use of the Disputed Domain Name is apparently for domain monetization unconnected with any bona fide supply of goods or services by the Respondent. The Panel surmises that the business model in this case, is for the Respondent to passively collect click through revenue generated solely from the Complainant’s goodwill and Internet users’ inaccurate guessing of the correct domain name associated with the Complainant’s Dr. Martens products. Exploitation of the reputation of a trademark to obtain click through commissions from the diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions. (See Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., supra; Lilly ICOS LLC v. The Counsel Group LLC,WIPO Case No. D2005-0042; and L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, supra).
In the absence of any evidence to the contrary, this Panel finds that the Respondent has taken the Complainant’s trademark DR. MARTENS and incorporated it in the Disputed Domain Name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users to a PPC parking web page for commercial gain.
Accordingly, the Panel finds that the Complainant has 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 the Complainant.
Nicholas Weston
Sole Panelist
Dated: June 25, 2012
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