Complainants are “Dr. Martens" International Trading GmbH and "Dr. Maertens" Marketing GmbH, of Gräfelfin, Germany and Seeshaupt, Germany, respectively, represented by Beetz & Partner, Germany.
Respondent is Deborah Jordan of Texas, United States of America and Domains By Proxy, LLC, Scottsdale, Arizona, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on July 25, 2012. On July 25, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 27, 2012, the Registrar 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 Complainant on August 1, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 7, 2012.
The Center verified that the amended 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 Respondent of the Complaint, and the proceedings commenced on August 14, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 3, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 14, 2012.
The Center appointed Ross Carson as the sole panelist in this matter on September 25, 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
Complainants are in the business of marketing shoes, boots, clothing and accessories throughout the world in association with the trademarks DR. MARTENS and DOC MARTENS through retailers, its own stores and online at its “” website. Complainants’ marketing of shoes and boots in association with its DR.MARTENS trademark commenced in the 1950’s and continues on to date. As a result of continuous marketing of shoes and boots throughout the world for decades Complainants’ DR. MARTENS and DOC MARTENS have become well-known brand names distinguishing Complainants’ goods and services from those of others.
Complainants are the owners of numerous trademark registrations for DR. MARTENS or DOC MARTENS throughout the world. Among the registrations are:
CTM No. 59147 for the trademark DR. MARTENS registered March 3, 1999 for various goods, mainly for footwear and clothing in class 25, as well as retail services in class 35;
CTM No. 150144 for the trademark DOC MARTENS registered February 24, 1999 for various goods in class 25, as well as retail services in class 35;
US Trademark No. 1454323 for the trademark DR. MARTENS registered August 25, 1987 for soles for boots and shoes in class 25;
US Trademark No. 1798791 for the trademark DR. MARTENS registered November 12, 1993 for footwear and parts therefore in class 25;
US trademark No. 2838397 for the trademark DR. MARTENS registered May 4, 2004 for retail services in the field of footwear and clothing in class 35;
US Trademark No. 2397734 for the trademark DOC MARTENS registered October 24, 2000 for footwear in class 25.
The disputed domain name was registered on December 21, 2011. 5. Parties’ Contentions A. Complainant A.1. Identical or Confusingly Similar
Complainants state that they are the owners of numerous trademark registrations for the trademarks DR. MARTENS and DOC MARTENS registered in relation to footwear or parts thereof in class 25 or retail store services relating to footwear, clothing etc. in class 35 as more particularly described in Section 4 immediately above.
Complainants submit that the disputed domain name is phonetically similar to Complainants’ trademarks. Complainants further submit that its trademarks DR. MARTENS and DOC MARTENS are identical to “doc-martens” in the disputed domain name and the further element ”boots” is merely and clearly a descriptive word or the products offered by Respondent in association with the disputed domain name. Complainants further submit that the disputed domain name is a clear combination of the only characterizing element “doc-martens” and a descriptive indication of the goods associated with Complainants’ trademark which does not avoid a high risk of confusion, A.2. No Rights or Legitimate Interests in respect of the disputed domain name
Complainants attached a printout of the web pages dated July 3, 2012 associated with the disputed domain name as an annex to the Complaint. The top of each webpage has the notation: “Buy doc martens Boots-www.”. Below the notation the first webpage features Complainants’ trademark DR. MARTENS, Complainants ’logo and Complainants’ “air wair” trademark in association with photographs of DR. MARTENS boots and shoes. Below the photograph are the words “doc martens boots”. Immediately below the above noted material is a long description of the original design of DR. MARTENS boot featuring an air cushioned sole commencing in the 1940’s. The second webpage shows photographs of over twenty different models of DR. MARTENS women’s and men’s shoes and boots together with Complainant’s original color descriptions and Model Numbers.
Complainants submit that by choosing Complainants’ well-known trademark DOC MARTENS and combining it with the generic term “boots” to form the disputed domain name, Respondent is likely to mislead and deceive consumers that it has a sponsorship, affiliation or approval of Complainants when this is not the case. Complainants further submit that Respondent is clearly making false representations that its website has a sponsorship, approval or association with Complainants’. Complainants further state that Respondent is passing off the trademark owners’ goodwill and reputation in its DOC MARTENS and DR. MARTENS trademarks. See: Dr. Martens v. A,WIPO Case No. D2009-1253, regarding the domain name and Dr. Martens v. Privacy P,WIPO Case No. D2010-1342 regarding the domain name .
Complainants allege that Respondent is making an illegitimate commercial and unfair use of the disputed domain name with the clear intention for commercial gain by misleading Internet users to divert consumers and to tarnish Complainants’ DOC MARTENS and DR. MARTENS trademarks.
Complainant submits that from the facts provided above, nothing seems to indicate that Respondent has any rights or legitimate interests in respect of the disputed domain name. A.3. Registration in Bad Faith
Complainant submits that Respondent must have had knowledge of Complainants’ rights in its DOC MARTENS and DR. MARTENS trademarks when it registered the disputed domain name since Complainants’ trademarks were widely used and well-known trademarks. Complainants further submit that Respondents’ awareness of Complainants’ trademark rights at the time of registration of the disputed domain name suggests opportunistic bad faith registration (see: Nintendo v. Marco Beijen, Beijen Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,WIPO Case No. D2001-1070, where the word “pokemon” was held to be a well-known mark of which the use by someone without any connection or legal relationship with the Complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the domain names, because widespread and long-lasting advertisement and marketing of goods and services under the trademark in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by the addition of telecommunications suffix suggested knowledge of the complainant’s rights in the trademarks). A.4. Use in Bad Faith
Complainants submit that by using the confusingly similar domain name to resolve to a webpage incorporating Complainants’ trademarks and representations of Complainants’ goods, Respondent intentionally attempted to attract for commercial gain Internet users to Respondent’s website or other online location by creating likelihood of confusion with Complainants’ trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and/or location and/or of a product or service on Respondent’s website or location. Complainants further submit that Respondent is likely linking the disputed domain name with unauthorized websites which are selling competitors’ and DOC MARTENS/ DR. MARTENS footwear without being authorized or approved by the trademarks’ owners or their licensees.
Complainants state that since Respondent must have had knowledge of Complainants’ rights in Complainants’ DOC MARTENS and DR. MARTENS trademarks at the moment that it registered the disputed domain name, and since Respondent has no legitimate interests in the disputed domain name, it is established that the disputed domain name was registered in bad faith (see: Dr. Martens v. A,WIPO Case No. D2009-1255 regarding the domain name ). B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this 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.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain names should be cancelled or transferred:
(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainants have rights; and
(ii) 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.
The fact that Respondent did not submit a Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a Response results in the Panel drawing certain inferences from Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly that the disputed domain names are identical to or confusingly similar to the trademark in which Complainants have rights.
Complainants are the owners of numerous trademark registrations for the trademarks DR. MARTENS and DOC MARTENS some of which are recited in Section 4 above. Complainants’ registered trademarks were registered and extensively promoted and used in many parts of the world including the United States of America for many years prior to the date of registration of the disputed domain name on December 21, 2011.
The disputed domain name incorporates the entirety of Complainants’ trademark DOC MARTENS. The word “doc” is a common abbreviation of the word “doctor” as is the abbreviation “Dr.” found in Complainants’ trademark DR. MARTENS. The disputed domain name likewise contains an obvious variation of Complainants’ trademark DR. MARTENS. Many UDRP decisions have found that domain names are confusingly similar to trademarks when the disputed domain name incorporates the trademark in its entirety. See eBay, Inc vs. Progressive Life Awareness Network,WIPO Case No. D2001-0068 (finding that the domain name incorporated the complainant’s mark in its entirety and holding it to be confusingly similar to complainant’s EBAY mark). See also, Auxilium Pharmaceuticals, Inc. v. Kumar Patel, NAF Claim No. 642141 (finding confusingly similar to complainant’s AUXILIUM name and mark).
The disputed domain name also includes the generic word “boots” which describes goods promoted and distributed in association with Complainants’ DOC MARTENS and DR. MARTENS and goods covered by Complainants’ registrations for DOC MARTENS and DR. MARTENS. Numerous UDRP panels have found that domain names comprised of a well-known trademark as the distinctive element in conjunction with descriptive or generic terms are confusingly similar to a registered trademark. See, Swarovski Aktiengesellschaft v. Swarovsk.AG,WIPO Case No. D2010-2139 (“Furthermore, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark SWAROVSKI despite the additional word “line” followed by the generic top-level domain “.com”. The distinctive feature of the disputed domain name is “Swarovski”, being the sole and distinctive feature of the Complainant’s trademark. The generic word “line” is indistinctive. The fact that understandably a line or range of goods is sold by the Complainant and marketed under their mark SWAROVSKI will make actual confusion among consumers likely”).
The fact that the disputed domain name includes the word “boots” reinforces the association with Complainants’ trademarks DOC MARTENS and DR. MARTENS as Complainants’ promote and distribute boots in association with its DOC MARTENS and DR. MARTENS. See, Swarovski Aktiengesellschaft v. Luc Sun,WIPO Case No. D2012-0071 (“Moreover, the addition in the disputed domain name of the term “crystal” only reinforces the association of the disputed domain name with Complainant’s mark, because Complainant is a well-known manufacturer of crystals).
The use of several hyphens in the disputed domain name is typically irrelevant in a finding of confusing similarity. Several UDRP panels have held that the use of a hyphen in a domain name is insignificant and does little to avoid confusing similarity with a well-known trademark. See e.g., Swarovski Aktiengesellschaft v. blue crystal, WIPO Case No. D2012-0630 (“ It is well established in decisions under the UDRP that the presence or absence of characters (e.g., hyphens, dots) in a domain name […] are typically irrelevant to the consideration of confusing similarity between a trademark and a domain name”);
The inclusion of the generic top level domain descriptor “.com” in the disputed domain name does not affect a finding of confusing similarity. WIPO UDRP panels have repeatedly held that the specific top level of the domain name such as “.org”, “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (see Magnum Piering, Inc. v.The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525, holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name; and Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429, finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Complainants have proven that the disputed domain name is confusingly similar to Complainants’ trademarks DOC MARTENS and DR. MARTENS. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainants must prove that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent is not affiliated with Complainants and has never been authorized by Complainants to use Complainants’ trademarks DOC MARTENS or DR. MARTENS.
Complainants’ has been using their DOC MARTENS and DR. MARTENS trademarks for decades to promote its goods and services. Respondent appears to have registered or acquired the disputed domain name on December 21, 2011 when Complainants’ trademarks were well-known in the United States, Europe, China and many other parts of the world. Previous UDRP panels have found that in the absence of any license or permission from a complainant to use well-known trademarks, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed. See LEGO Juris A/S v. DomainPark Ltd, David Smith, A, Domain Privacy, Transure Enterprise Ltd, Host master,WIPO Case No. D2010-0138.
There is no evidence that Respondent has ever been known by or used the trademarks DOC MARTENS or DR. MARTENS in association with its own goods or services. Respondent has used the disputed domain name in association with a website that uses Complainants’ DOC MARTENS and DR. MARTENS trademarks, as well as other trademarks owned by Complainants throughout the website. Respondent’s website includes photographs of Complainants boots and shoes described by Complainants’ Product Numbers and unique color descriptions for particular boots and shoes. Respondent offers purported DOC MARTENS and DR. ARTENS products for sale which supports the inference that she chose the disputed domain name only because it was seeking to create an association with Complainants. Use of the disputed domain names in association with copies or imitations of Complainant’s products is not a legitimate use of the disputed domain name. See, Swarovski Aktiengesellschaft v. Christine Jil,WIPO Case No. D2011-0981. WIPO UDRP administrative panels have stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the [holder of the mark]”. See also, Drexel University v. David Brouda,WIPO Case No. D2001-0067.
The Panel finds that Complainants have made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.
It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a domain name. Previous decisions under the UDRP have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in a domain name or domain names. Once this showing is made, the burden of production shifts to the respondent to demonstrate its rights or legitimate interests in the domain name. See Deutsche Telekom AG v. Britt Cordon,WIPO Case No. D2004-0487 where the panel stated “A number of WIPO cases have established that, by virtue of paragraph 4(c) of the Policy, once a Complainant establishes a prima facie case that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent.” In this case, Respondent was given the opportunity by way of Response to demonstrate any rights or legitimate interests in the disputed domain names pursuant to paragraph 4(c) of the Policy. However, Respondent did not file a Response nor avail itself of the benefits of paragraph 4(c) of the Policy.
Under the circumstances, the Panel finds that Complainants have proven on a balance of probabilities that Respondent does not have any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy, Complainants must prove that the disputed domain name has been registered and is being used in bad faith. C.1. Registered in Bad Faith
When the disputed domain name was created on December 21, 2011, Complainants’ DOC MARTENS and DR. MARTENS trademarks had been registered around the world for over a decade in relation to goods and services including International Classes for boots shoes clothing, clothing accessories and retail stores offering such goods for sale. Complainants’ DOC MARTENS and DR. MARTENS were well-known brands throughout the world including the United States of America prior to registration of the disputed domain name. The fact that the disputed domain name includes the word “boots” supports the inference that Respondent registered the disputed domain name in bad faith to benefit from Complainants’ goodwill in its DOC MARTENS and DR. MARTENS trademarks which were well-known in relation to boots prior to the date of creation of the disputed domain name. See, Bell South Intellectual Property Corporation v, Serena, Axel,WIPO Case No. D2006-0007, where it was held that the Respondent acted in bad faith when registering the domain names, because widespread and long-standing advertisements and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix suggested knowledge of the Complainants rights in the trademarks.
The question of bad faith at the time of registration has often been the subject of UDRP decisions. See British Sky Broadcasting Group plc, v. Mr. Pablo Merino and Sky Services S.A.,WIPO Case No. D2004-0131 where the panel found: “It is reasonable to conclude that only someone who was familiar with the Complainant’s mark would have registered identical domain names.” As Complainant’s trademarks are famous in wide parts of the world, this suggestion proves true in particular. See also PepsiCo, Inc. v. Paul J. Swider,WIPO Case No. D2002-0561, where the panel stated: “Respondent’s registration, without authorization, of a domain name that is identical to Complainant’s famous […] mark and […] trade name is in and of itself evidence of bad faith.” See also, Deutsche Telekom AG v. Britt Cordon,WIPO Case No. D2004-0487 where the panel found: “The knowledge of marks at the time of registration of the domain name suggests bad faith.”
The Panel thus finds on a balance of probabilities that Respondent registered or acquired the disputed domain names in bad faith. C.2. Domain Name Used in Bad Faith
Under paragraph 4(b)(iv) of the Policy, inter alia, the following circumstances shall be evidence of the use and registration of a domain name in bad faith: by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website 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 its website or location or of a product or service on its website or location.
The use of the disputed domain name in which the distinctive element “doc-martens” is identical to Complainants’ trademark DOC MARTENS and confusingly similar to Complainants’ trademark DR. MARTENS shows Respondent’s intention to trade on the goodwill in Complainants’ trademarks DOC MARTENS and DR. MARTENS. The inclusion of the word ”boots” in the disputed domain name when Complainants’ goods and services are associated in the public mind with “boots” confirms the Respondents use of the disputed domain name is intended to mislead the public into associating the disputed domain name with Complainants’ business, goods, and services.
The intent to mislead the public continues on the website associated with the disputed domain name. The disputed domain name which is confusingly similar to Complainants’ DOC MARTENS and DR. MARTENS trademarks resolves to a website in which the top of each webpage has the notation: “Buy doc martens Boots-www.”. Below the notation the first webpage features Complainants’ trademark DR. MARTENS, Complainants’ logo, and Complainants’ “air wair” trademark in association with photographs of DR. MARTENS boots and shoes. Below the photograph are the words “doc martens boots”. Immediately below the above noted material is a long dissertation about the original design of DR. MARTENS boot featuring an air cushioned sole commencing in the 1940’s. The first webpage includes links entitled: Contact Us; My Account; Currency; USD; and Sign In Register. Immediately below are links to Product Search, Enter Product Number or Key Word. The second webpage shows photographs of over twenty different DR. MARTENS women’s and men’s shoes and boots including Product Numbers and Complainants’ original color descriptions for the pictured boots and shoes. The third page of the webpage includes links entitled: Contact Us; Payment; Shipping and Returning; Size Chart and FAQ. The webpage concludes with an obviously false International copyright Marking:” © 1999-2012 www . All right reserved 2012-07-03 15:37.20.” as the disputed domain name was created on December 21, 2011.
Based on the evidence submitted by Complainants the Panel infers that Respondent is clearly making false representations that itself or its website have a sponsorship, approval or association with Complainants’. See, Dr. Martens v. A,WIPO Case No. D2009-1253, regarding the domain name and Dr. Martens v.Privacy P,WIPO Case No. D2010 regarding the domain name .
The Panel finds that Complainants have proven that the disputed domain name is being used 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 Complainants or one of the Complainants.
Ross Carson
Sole Panelist
Dated: October 7, 2012
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