The Complainants are "Dr. Martens" International Trading GmbH of Gräfelfin, Germany, and "Dr. Maertens" Marketing GmbH of Seeshaupt, Germany, represented by Beetz & Partner, Germany.
The Respondent is Private Whois Service, Suspended Domain of Nassau, Bahamas / Fundacion Private Whois of Panama, Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with I Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2012. On July 3, 2012, the Center transmitted by email to I Corp. a request for registrar verification in connection with the disputed domain name. On July 6 and July 10, 2012, I Corp. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 12, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on July 13, 2012.
The Center verified that the Complaint together with the amendment to 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 July 17, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 6, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 7, 2012.
The Center appointed Jonas Gulliksson as the sole panelist in this matter on August 14, 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
The Complainants are the holders of inter alia the following registered trademarks:
- CTM 59147 DR. MARTENS in class 25 and 35, April 1, 1996.
- Canadian trademark No. 420485 DR. MARTENS in class 25, December 17, 1990.
- Canadian trademark No. 625884 DR. MARTENS in class 35, June 25, 2002.
- USPTO No. 1454323 DR. MARTENS in class 25, June 9, 1983.
- USPTO No. 1798791 DR. MARTENS in class 25, March 14, 1990.
- USPTO No. 2838397 DR. MARTENS in class 35, June 26, 2002.
The disputed domain name was registered on February 27, 2012. 5. Parties’ Contentions A. Complainants
DR. MARTENS is a famous international brand for footwear, clothing and accessories, particularly renowned for its distinctive shoes and boots, first sold in the late 1950’s. The products are available for sale at retailers throughout the world as well as online at the official web site linked to the domain name .
"Dr. Martens" and "drmartens" are extremely similar or identical with respect to their phonetics, writings and meaning. The characterizing element "drmartens" is combined with the clearly descriptive elements "uk" and "sale" which will not be sufficient in order to avoid likelihood of confusion. Consumers will only pay attention to the characterizing element "drmartens". The Respondent is using the disputed domain name to host a parked website featuring links to advertisement for the sale of footwear and of "Dr. Martens" footwear on websites which are not authorized or approved by trademark owners as well as on websites which refer to competitors of the Complainants.
By using the disputed domain name the Respondent is likely to mislead and deceive consumers into believing that it has a sponsorship, affiliation or approval with the original "Dr. Martens" trademark owners/licensees/customers when this is not the case. The Respondent is passing off the trademarks owners' goodwill and reputation in the DR. MARTENS trademarks and name. The Respondent's use of the disputed domain name is commercial, illegitimate and unfair with the clear intention for commercial gain by diverting consumers and to tarnish the DR. MARTENS marks. There are no indications of the Respondent having rights or any legitimate interests in the disputed domain name.
The Respondent is using the disputed domain name to link unauthorized websites to it which are selling competitors and unauthorized "Dr. Martens" footwear without the Complainants’ permission. Due to the Complainants' widely and well-known trademarks, the Respondent must have had knowledge of the Complainants' rights at the time of the registration of the disputed domain name, suggesting opportunistic bad faith registration. The knowledge of the DR. MARTENS trademarks together with the Respondent's lack of legitimate interests in the disputed domain name proves bad faith registration. The content of the website linked to the disputed domain name is a clear indication that the Respondent is intentionally attempting to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainants' trademarks. It is more than likely that the Respondent is profiting of the goodwill of the Complainants' trademarks by click-through fees. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, each of the three following elements must be satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy further states that the burden of proving that all three elements are present lies with the Complainants. A. Identical or Confusingly Similar
The Panel finds that the Complainants have established rights to the DR. MARTENS trademarks in this case and in a large number of prior UDRP cases. See for example “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing Gmbh v. Shanbei Fu a.k.a. fushanbei,WIPO Case No. D2012-0910.
The disputed domain name was registered nearly thirty years after the oldest of the registrations submitted by the Complainants. The disputed domain name consists of "drmartens", which the Panel with the exception of the dot and the space in the Complainants' trademarks, finds to be identical to the Complainants' trademarks, with the addition of the geographic word "uk" and the generic word "sale". According to well-established consensus, the gTLD ".com" is not distinguishing. The Panel finds that "drmartens" is the distinctive part of the disputed domain name, and that the addition of "uk" and "sale" is not sufficient to avoid but rather increases the risk or Internet user confusion in relation to the Complainants' trademarks.
Consequently, the Panel finds the disputed domain name confusingly similar to the trademark in which the Complainants have established rights. The first element of the paragraph 4(a) of the Policy is thus fulfilled. B. Rights or Legitimate Interests
In cases when a respondent fails to present a response, the complainant is still required to make a prima facie case that the respondent lacks rights or legitimate interests in the domain name, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions Second Edition (“WIPO Overview 2.0”), paragraph 2.1., and The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064, and Berlitz Investment Corp. v. Stefan Tinculescu,WIPO Case No. D2003-0465. Further, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
The Complainants have asserted that no permission to register the disputed domain name has been granted to the Respondent. Moreover, the Complainants have stated that the Respondent has no rights of its own or legitimate interests to the disputed domain name which entirely incorporates the Complainants’ trademarks. Also, the Complainants have asserted that the disputed domain name is linked to a website presenting links to the Complainants' competitors selling inter alia footwear of other brands and the Complainants’ products without the authorization of the Complainants.
Having considered the submissions of the Complainants, and the lack of response from the Respondent, the Panel finds that the Respondent is not connected with the Complainants and is not commonly known by the disputed domain name. Further the Panel finds that "drmartens" is used in the disputed domain name with an intention to derive commercial advantage of the Complainants’ trademark. Such use by the Respondent is not a legitimate noncommercial or fair use and does not confer any rights in favour of the Respondent.
In the light of what is stated above, the Panel finds that the Complainants have made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not proved otherwise. Therefore, the Panel finds that the second element of the paragraph 4(a) of the Policy is fulfilled. C. Registered and Used in Bad Faith
Having regarded the fact that the Complainants’ DR. MARTENS trademarks were registered and used years before the Respondent’s registration of the disputed domain name, it is in this Panel’s view apparent that the disputed domain name was registered with knowledge of the Complainants’ trademark rights and with the intention of attracting customers for commercial gain by creating a likelihood of confusion with that same mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
Also, the Panel finds that the website linked to the disputed domain name has contained links to websites of the Complainants’ competitors and sales offers of footwear products together with the DR. MARTENS trademark. The Panel finds that this might easily lead Internet users to mistake the website for an official website of the Complainants and that it clearly indicates bad faith use of the disputed domain name. In this case, no evidence of actual commercial gain of the Respondent has been submitted but nor has this allegation by the Complainants been denied by the Respondent. This Panel shares the findings of previous UDRP panels that a respondent may be found using a domain name in bad faith, even if evidence of actual commercial gain of the respondent has not been proven by the complainant, when nothing indicates a non-commercial use. See “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing Gmbh v. Shanbei Fu a.k.a. fushanbei, supra. ("In the absence of any evidence to the contrary, it appears that the Respondent was not using the domain name for a purpose other than commercial gain". This is a clear indication of bad faith use.). In the case at hand, nothing indicates that the Respondent has had any other purpose than commercial gain. Accordingly, this Panel finds that the disputed domain name has been used in bad faith.
The Panel finds that the third element of the paragraph 4(a) of the Policy is fulfilled. 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 Complainants.
Jonas Gulliksson
Sole Panelist
Dated: August 28, 2012
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