The Complainants are "Dr. Martens" International Trading GmbH of Gräfelfin, Germany and "Dr. Maertens" Marketing GmbH of Seeshaupt, Germany, both represented by Beetz & Partner, Germany.
The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“USA”) / Deborah Jordan of Spring Texas, USA. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2012. On July 17, 2012, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the disputed domain name. On July 18, 2012, GoD, LLC 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 24, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on July 25, 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 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 15, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 17, 2012.
The Center appointed Adam Samuel as the sole panelist in this matter on August 23, 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 two companies in the Dr. Martens group which manufacture and sell footware and other goods. The first Complainant is the legal owner of US trademark registrations for DR. MARTENS. The relevant registration numbers are 1454323, 1798791 and, 2838397. The registration dates are respectively August 25, 1987, October 12, 1983 and February 10, 2004. The Complainants jointly own a European Community trademark for DR. MARTENS, no. 59147 whose registration date is March 3, 1999 and a Canadian trademark for the same name, no. 420.485, registered on December 10, 1993. The Complainants market their products through which was registered on November 27, 1996. The disputed domain name was registered on December 21, 2011. 5. Parties’ Contentions A. Complainant
This section sets out the Complainant’s contentions with which the Panel may or may not agree.
Dr. Martens is a famous international brand of footwear, clothing and accessories, particularly renowned for its distinctive shoes and boots. The Complainants’ trademarks are identical to the first part of the disputed domain name. The “1460” is merely descriptive and represents a figure most commonly used by the Complainants’ exclusive worldwide licensee and represents the date April 1, 1960 when the first Dr Martens boot was created.
The Respondent is clearly making false representations that its websites have a sponsorship, approval or association with the original DR. MARTENS trademark owners, licensees or customers which is not the case. The Respondent is making an illegitimate commercial and unfair use of the disputed domain name with the clear intention of making commercial gain by diverting consumers to its website and by tarnishing the trademark and service marks DR. MARTENS.
By choosing the domain name, the Respondent intentionally attempted to attract for commercial gain Internet users to the Respondent’s website or other online location, by creating a likelihood o confusion with the Complainants’ trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and/or location and/or of a product or service on the Respondent’s website or location. The Respondent must have known of the Complainants’ rights in the DR. MARTENS trademarks when it registered the disputed domain name since the trademarks are widely known. This suggests opportunistic bad faith registration. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings
Under the Policy, the Complainants must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which they 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. A. Identical or Confusingly Similar
The disputed domain name consists of the Complainants’ trademark less a full stop which cannot be reflected in a domain name, the number “1460” and the standard generic top-level domain name (gTLD) suffix “.com”. For devotees of the Complainants’ products, the number “1460” has its own significance as the date of the first Dr. Martens boot and as a brand of boots sold by the Complainants. Even for those ignorant of this, the addition of this otherwise apparently randomly chosen number does not prevent the disputed domain name from being confusingly similar to the Complainants’ trademark. The addition of generic or random words to a trademark does not prevent the resulting domain name from being confusingly similar to the trademark concerned. B. Rights or Legitimate Interests
The Respondent is not called “Dr. Martens” or anything similar and does not appear to trade under that or any related name. There is no evidence that the Complainants have ever authorized the Respondent to use its trademarks. The Respondent has never asserted any rights or legitimate interests in that name. For these reasons, and in the absence of any response, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Respondent’s website to which the disputed domain name resolves indicates clearly that the Respondent is well aware of the Complainants’ trademark. Through the website, associated with the disputed domain name the Respondent seeks to market the Complainants’ products and in particular their 1460 brand of “Dr. Martens” boots commemorating the original boot sold by the Complainants’ group.
It is apparent from the evidence that the Respondent must have registered the disputed domain name knowing of the Complainants’ trademark rights and has been using those trademarks to sell products to Internet users without the Complainants’ permission.
For all these reasons, the Panel concludes that the Respondent registered and is using the dispute domain name 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 disputed domain name be transferred to the Complainants.
Adam Samuel
Sole Panelist
Dated: August 27, 2012
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