The Complainants are “Dr. Martens” International Trading GmbH of Grafelfing, Germany and “Dr. Maertens” Marketing GmbH of Seeshaupt, Germany, represented by Beetz & Partner, Germany.
The Respondent is Cake Web Design of Cibolo, Texas, United States of America (“US”). 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with N LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on October 30, 2012. On October 31, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 1, 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 for the Domain Name.
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 November 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 2, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 4, 2012.
The Center appointed William P. Knight as the sole panelist in this matter on December 11, 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 successors in title of a business manufacturing and distributing footwear and related products, and licensing such manufacture and distribution, that has traded since shortly after the end of the Second World War, in particular becoming famous for a distinctive design of shoe known by the names “Doc Martens” or “Dr. Martens” around the world. The Complainant “Dr. Martens” International Trading GmbH has numerous trademark registrations around the world for the DOC MARTENS and DR. MARTENS trademarks, including in the United States, the jurisdiction of the Respondent, with registration dates going back to 1993 and before.
The Domain Name was registered on January 16, 2012. 5. Parties’ Contentions A. Complainant
In accordance with paragraph 4(a) of the Policy, the Complainants assert:
(i) that the Domain Name is confusingly similar to its DR MARTENS trademark;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name;
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainants say that the addition of the words “for less” in the Domain Name does nothing to distinguish the dominant element of the Domain Name, namely the words “dr” and “martens”.
The Complainants say that the Respondent must have been aware of the Complainants’ reputation and trademarks before registering the Domain Name, not only by virtue of the worldwide consumer recognition of the Complainants’ trademarks, but by virtue of the use of the Domain Name by the Respondent to point to a “parked website” featuring links to third-party websites offering genuine DOC MARTENS products but, according to the Complaints, also including links to websites offering products competing with those of the Complainants.
From the Respondent’s own name and use of the Domain Name, the Complainants say, there is nothing to indicate that the Respondent has any rights or legitimate interests in the Domain Name.
For the same reasons, the Complainants argue that the Respondent’s registration and use of the Domain Name has been for the purpose of deriving economic advantage from the diversion of Internet users searching for the Complainants’ products and therefore must be found to be in bad faith, in the sense intended by the Policy. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings
The onus is on the Complainants to prove each of the three elements set out in paragraph 4(a) of the Policy.
The Respondent has had ample opportunity to respond to the allegations of the Complainants and has not done so. The Respondent, in the view of the Panel, cannot be in a better position by failing to respond than if he had chosen to take advantage of the opportunities afforded to him, expressly, by paragraph 4(c) of the Policy.
Paragraph 15(a) of the Rules instructs the Panel to decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. In the absence of any response from the Respondent, the onus upon the Complainants will be satisfied if a conclusion, which is capable of being drawn from the evidence provided by the Complainants, is not contradicted by the Respondent; see for example Alcoholics Anonymous World Services, Inc., v. Lauren Raymond,WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic. A.S.,WIPO Case No. D2000-0011. The Panel may also supplement the submissions of the Complainants with matters of public record that are readily available to it, such as an inspection of the website, if any, in respect of which the domain name the subject of the dispute is used; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) at paragraph 4.5. A. Identical or Confusingly Similar
As to element (i) of paragraph 4(a) of the Policy, the Panel notes that the determination of confusing similarity is a factual one which must be satisfied by making a side-by-side comparison of the Complainants’ trademark DR MARTENS and the Domain Name, taking into account the degree of aural, visual, or conceptual similarity between the two, the similarity of the goods and services for which they are used and the inherent or acquired distinctiveness of the trademark, as well as issues relevant to language; see Tchibo Frisch-Röst-Kaffee GmbH v. Hans Reischl,WIPO Case No. D2001-0079.
Placed side-by-side, the similarity of the DR MARTENS trademark and the Domain Name is self-evident. The Panel finds that the trademark DR MARTENS has become world famous and very powerful in respect of footwear, notwithstanding its potential to be a common honorific and surname. The addition of the generic words “for less” does nothing to distinguish the Domain Name, and only tends to emphasize that any likely use made of the Domain Name would target those interested in the Complainants’ products.
The Panel therefore finds that the Complainants have sufficient trademark rights and that the Domain Name is confusing similar to the Complainants’ DR MARTENS trademark. B. Rights or Legitimate Interests
The Complainants allege in the Complaint that the Domain Name was in use, at the time the Complaint was submitted, to point to a “parked website” featuring links to third party websites offering genuine DOC MARTENS products as well as websites offering products competing with those of the Complainants. The Complainants support this assertion by providing in evidence a screenshot of that parked website. However, at present, the Domain Name is not being used at all. In the absence of any explanation from the Respondent, and any contrary evidence regarding the actual use of the Domain Name provided by the Respondent, the Panel accepts the facts as asserted by the Complainant. In such circumstances, it defies credulity that the Respondent was unaware of the Complainant, its business and its reputation.
It is established, of course, that the use of a domain name for the purpose of providing genuine commentary on, or criticism of, a trademark owner, such as so-called “fan sites” and “sux sites”, may demonstrate a legitimate interest in the domain name. Such use falls squarely within the express terms of paragraph 4(c)(iii) of the Policy as a “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue” and there are many examples of this; see for example the decisions cited inWIPO Overview 2.0, paragraphs 2.4 and 2.5. In this case, however, the Panel finds it impossible to avoid the conclusion that the Domain Name was registered and used solely for the purpose of trading on the enormous reputation of the Complainants in order to attract Internet searchers, to introduce to them links to other traders in footwear, from which the Respondent no doubt derived click-through revenue.
In such circumstances, and given the Respondent has now ceased the use formerly made of the Domain Name without replacing it with anything, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registration and Use in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that may indicate registration and use in bad faith. Paragraph 4(b)(iv) of the Policy provides that evidence of the registration and use of a domain name in bad faith includes “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”.
In light of the findings made above, the Panel considers that paragraph 4(b)(iv) perfectly describes both the registration and use of the Domain Name by the Respondent.
In these circumstances, the Panel concludes that the Domain Name was registered and is being used in bad faith. 7. Decision
In the light of the findings in paragraph 6 above, the Panel accordingly determines in accordance with paragraph 15 of the Rules that the Domain Name be transferred to the Complainants.
William P. Knight
Sole Panelist
Dated: December 14, 2012
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