Complainants are "Dr. Martens” International Trading GmbH of Gräfelfing, Germany; and “Dr. Maertens” Marketing GmbH of Seeshaupt, Germany, represented by Beetz & Partner, Germany.
Respondent is Wijayanti Pri of Blora, Central Java, Indonesia. 2. The Domain Name and Registrar
The disputed domain name is registered with R (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on October 1, 2012. On October 1, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 4, 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 Respondent of the Complaint, and the proceedings commenced on October 11, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 31, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 1, 2012.
The Center appointed Andrew Mansfield as the sole panelist in this matter on November 8, 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 in this matter own the following trademarks:
- CTM 59147 for DR. MARTENS of April 1, 1996, registered for various goods, mainly for footwear and clothing in class 25, as well as retail services in class 35;
- Canadian Trademark No. for 420485 DR. MARTENS of December 17, 1990, mainly for footwear and clothing in class 25;
- Canadian Trademark No. 625884 for DR. MARTENS of June 25, 2002, mainly for retail services in the field of footwear and clothing in class 35;
- US Trademark No. 1454323 for DR. MARTENS of June 9, 1983, for footwear in class 25;
- US Trademark No. 1798791 for DR. MARTENS of March 14, 1990, for footwear in class 25;
- US Trademark No. 2838397 for DR. MARTENS of June 26, 2002 for retail services in the field of footwear and clothing in class 35.
Complainants provided sufficient information to demonstrate their ownership of these trademarks to the satisfaction of the Panel. 5. Parties’ Contentions A. Complainant
The disputed domain name is . Complainants contend that the disputed domain name is identical or confusingly similar to various trademark registrations in which they have rights. As specified above, Complainants own the trademark rights to DR. MARTENS in at least the European Union, Canada and the United States. Complainants bring to the Panel’s attention the fact that 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. Complainants state that Dr. Martens brand footwear, clothing, and accessories are available for sale at retailers throughout the world as well as online at the Dr. Martens website, located at the domain name .
Complainants allege that disputed domain name is merely a combination of the geographically descriptive element UK and the name “drmartens”.
Further, Complainants allege that Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainants submit evidence that the disputed domain name was used by Respondent as a “parked” domain name with links to various competing footwear, clothing, and accessories and links to websites selling Complainants’ products without authorization to use Complainants’ trademarks.
Complainants attest that the disputed domain name is likely to mislead and deceive consumers into believing that Respondent has a sponsorship, affiliation, or approval from Complainants and is authorized to use the Complainants’ trademarks. Complainants allege that Respondent is thereby passing off competing goods using the trademark owners’ goodwill and reputation. Complainants argue that this is an illegitimate commercial use (and an unfair use) of the disputed domain name for the purpose of diverting confused consumers to competing goods. Finally, Complainants state that they are not aware that Respondent has any rights or interests in respect to the disputed domain name nor any legitimate interest in “Dr. Martens” as a phrase or brand.
According to Complainants, the disputed domain name was registered and is being used in bad faith. Complainants indicate that Respondent intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainants’ trademarks. This confusion allegedly runs to the source, sponsorship, affiliation, and/or endorsement of Respondent’s website. The use of Complainants’ trademarks is unauthorized.
Complainants hold that Respondent must have had knowledge of Complainants famous trademarks when it registered the disputed domain name. The inescapable conclusion that Respondent was aware of Complainants’ trademarks suggest, according to Complainants, opportunistic bad faith registration. Complainants argue that the Panel can draw this conclusion from the widespread and long-standing advertising engaged in by Complainants, Respondents inclusion of the entire trademark in the disputed domain name, and the similarity of products sold through links on Respondent’s website at the disputed domain name. B. Respondent
Respondent did not reply to Complainants’ contentions. 6. Discussion and Findings
Complainants have the burden of proof in showing that each element within paragraph 4(a) of the Policy is present. These are as follows:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights;
- Respondent has no rights or legitimate interests in respect of the disputed domain name; and,
- The disputed domain name was registered and is being used by Respondent in bad faith.
Even when a respondent defaults, as is the case here, the complainant must establish and carry the burden of proof on each of the three elements identified above (see Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan,WIPO Case No. D2004-0383). Further, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate.”
The Panel proceeds to each of these elements below. A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to Complainants’ trademark DR. MARTENS. In this case, the disputed domain name consists of the characters “Dr.”, for the term “Doctor”, and the word “Martens”. “Dr.” is a nearly universal abbreviation for “Doctor”. In this matter, Respondent merely added the letters “UK” to the disputed domain name. “UK” is arguably understood as a geographic identifier for the United Kingdom of Northern Ireland and Great Britain.
Numerous panel decisions have reiterated that “the mere addition of common terms” to a trademark “does not change the overall impression of the designations as being a domain name connected to the Complainant.” (see PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS)WIPO Case No. D2003-0696; PepsiCo, Inc. v. Diabetes Home Care, Inc. and DHC Services,WIPO Case No. D2001-0174; Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Kil Inja,WIPO Case No. D2000-1409; and America Online, Inc. v. Chris Hoffman,WIPO Case No. D2001-1184.
The Panel finds that Complainants have satisfied paragraph 4(a)(i) of the Policy. The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights.
Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel is satisfied that Complainants have made out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent must carry the burden of demonstrating a right or legitimate interest in the disputed domain name. By matter of default, Respondent has failed to do so, and Complainants are deemed to have satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides the following non-exclusive examples of registration and use in bad faith. If found, any one of these elements, though non-exclusive, may be found to be evidence of the registration and use of the domain name in bad faith.
i. Circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainants who are the owners of the trademark or service mark or to a competitor of the Complainants, for valuable consideration in excess of Respondent’s documented out of pocket costs directly related to the domain name; or
ii. Respondent has 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 Respondent has engaged in a pattern of such conduct; or
iii. Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv. By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
Respondent appears to have merely “parked” the disputed domain name with a web hosting company. It is unclear whether Respondent directly controls the advertising on the parked disputed domain name. Whether or not Respondent directly controls the advertising, Respondent appears to financially benefit from the advertising and web links on the website at the disputed domain name. Links to various competing products and to large Internet-based retailers purportedly selling Complainants’ products are provided at the disputed domain name.
The Panel concludes that Respondent registered the disputed domain name for the purpose of attracting Internet users searching for Complainants’ products. Complainants’ trademark is well-known internationally and is unlikely to have been selected randomly by Respondent. When a confused consumer views the parked webpage at Respondent’s website, they will click through to other webpages that may sell competing products. It appears that Respondent receives compensation from the hosting provider for advertising or pay-per-click placement.
Other panels have found that a domain name registrant will ordinarily be held responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content. This is often the case if advertising links appear on a website on an "automatically" generated basis. In order to avoid the conclusion that Respondent is responsible for advertising links, Respondent would need to show some good faith attempt toward preventing inclusion of the advertising or links which profit from trading on third-party trademarks. The Panel need not decide whether Respondent has itself profited from the links. To establish bad faith use under paragraph 4(b)(iv) of the UDRP, it is sufficient to show that profit or "commercial gain" was made by a third party. This is so even if the profit went to the operator of an advertising revenue arrangement or a domain name parking service (see, e.g., Rolex Watch U.S.A., Inc. v. Vadim Krivitsky,WIPO Case No. D2008-0396; The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC,WIPO Case No. D2009-0057).
The Panel finds that Complainants have satisfied paragraph 4(b)(iv) of the Policy and that the disputed domain name was registered and 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.
Andrew Mansfield
Sole Panelist
Dated: November 22, 2012
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