The Complainants are "Dr. Martens" International Trading GmbH, "Dr. Maertens" Marketing GmbH of Grafelfing, Germany, represented by Beetz & Partner, Germany.
The Respondent is Deborah Jordan / Domains By Proxy, LLC, of Texas, United States of America and Scottsdale, Arizona, United States of America, respectively. 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 June 11, 2013. On June 11, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 13, 2013, 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 the Complainant on June 13, 2013 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 June 18, 2013.
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 June 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 9, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 10, 2013.
The Center appointed James McNeish Innes as the sole panelist in this matter on July 30, 2013. 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
DR MARTENS as well as its related trademark DOC MARTENS are famous international brands for footwear, clothing and accessories, particularly renowned for its distinctive shoes and boots, first sold in the late 1950's. DR MARTENS footwear, clothing and accessories are available for sale at retailers throughout the world as well as online at the "Dr. Martens / Doc Martens" website, located at the domain name .
The Complainant is the owner of a number of registrations for the trademarks DR MARTENS and DOC MARTENS. The trademarks are confirmed by the record. The disputed domain name was registered on December 21, 2011. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions include the following:
(a) The disputed domain name is phonetically identical to the Complainant's trademarks for DR MARTENS and DOC MARTENS.
(b) The various trademarks DOC MARTENS and DR MARTENS are identical with "docmartens". The further element "shoes" is a merely and clearly descriptive word for the products offered. The disputed domain name is a clear combination of the only characterizing element "docmartens" and a descriptive indication which is not in the position to avoid a high risk of confusion.
(c) The Respondent has been using the disputed domain name as a parked website for links to unauthorized footwear selling sites for Dr. Martens products, but also for footwear of third parties being direct competitors of the Complainants. The Respondent has never been authorized hereto. By choosing the identical well-known trademark DOC MARTENS and combining it with a descriptive element, the Respondent is likely to mislead and deceive consumers into believing that he has a sponsorship, affiliation or approval with the original DOC MARTENS, respectively DR MARTENS trademarks as well as their owners/licensees/customers when this is not the case. The Complainant hereby asserts that the disputed domain name has been used by the Respondent in a manner which takes unfair advantage of and is detrimental to the Complainant’s earlier rights.
(d) The use of the disputed domain name and associated website by the Respondent causes confusion as to the identity of the entity behind the disputed domain name. The Internet user seeing the domain name will believe or be likely to believe that the disputed domain name is registered to, operated or authorized by, or otherwise connected with the Complainant.
(e) The Respondent is using the disputed domain name as a platform for offering links to entities selling footwear showing the Complainant’s trademarks and offering links to third parties' competing footwear products. The Respondent offers links to entities selling Never Mind shoes as well as Airwalk and Harley Davidson footwear and other third parties footwear and clothing which are competitors to the Complainants and their worldwide exclusive licensees. Even the links to genuine "Dr. Martens" and "Doc Martens" products as offered on the disputed website have never been authorized by the Complainant or its licensees. The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has never been authorized by the Complainant and it is asserted that the Respondent has knowingly registered the disputed domain name with the intention of deceiving and misleading Internet visitors by creating a likelihood of confusion with the Respondent’s website or of a product or service of the Respondent's website. The Respondent is clearly making illegitimate commercial use of the disputed domain name for commercial gain and to tarnish the Complainant’s trademarks. She has no right to include the Complainants' protected trademarks into its disputed domain name.
(f) The Respondent is hereby passing off the trademark owners' goodwill and reputation in the DOC MARTENS trademarks and the "Dr. Martens" name (see: Dr. Martens v. A,WIPO Case No. D2009-1253 regarding the domain name ; Dr. Martens v. Sandy Oakes,WIPO Case No. D2012-0341 regarding the domain name ; and Dr. Martens v. Deborah Jordan / Domains By Proxy, LLC,WIPO Case No. D2012-1506 regarding domain name ).
(g) By choosing the disputed domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online locations, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship or affiliation or endorsement of the Respondent's website or location.
(h) Furthermore the Respondent is linking the disputed domain name with unauthorized websites which are selling competitors' and "Doc Martens" and "Dr. Martens" footwear without being authorized or approved by the trademark owners or their licensees.
(i) The Respondent is likely to make an illegitimate commercial and unfair use of the disputed domain name with the clear intention for commercial gain misleading to divert Internet visitors and to tarnish the trademark and service marks DOC MARTENS and DR. MARTENS.
(j) From the facts provided above, nothing seems to indicate that the Respondent has any rights or neither interests in respect of the disputed domain name .
(k) It is asserted that the Respondent must have had knowledge of the Complainant’s right to the DOC MARTENS and DR MARTENS trademarks when it registered the disputed domain name, since the Complainant’s trademarks are a widely well-known trademark. The Respondent's awareness of the Complainant’s trademark rights at the time of registration suggests opportunistic and bad faith registration.
(l) The Respondent acted in bad faith when registering the domain name because, widespread and longstanding advertisement and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name and the identity of products implied by addition of a completely descriptive element, suggests knowledge of the Complainant’s rights in the trademarks.
(m) By selecting 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 likelihood of confusion with the Complainant’s 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 is linking the disputed domain name with unauthorized websites which are selling competitors' and "Doc Martens" and "Dr. Martens" footwear without being authorized or approved by the trademarks' owners or their licensees.
(n) In the instant case, the Respondent must have had knowledge of the Complainant’s rights in the DOC MARTENS and DR MARTENS trademarks when it registered the disputed domain name, since the Complainant’s trademarks are widely and well-known trademarks, and the Respondent has combined it in the domain name with a word ("shoes") which is descriptive as a general term for the products concerned. The Respondent's awareness of the Complainant’s trademark rights at the time of registration suggest opportunistic bad faith registration (see 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 name, because widespread and long-standing advertisement 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 complainant's rights in the trademarks).
(o) Since the Respondent must have knowledge of the Complainant’s rights in the DOC MARTENS and DR. MARTENS trademarks at the moment it registered the disputed domain name, and since the 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. D2009-1253 regarding the domain name ).
(p) This is likely that the Respondent is intentionally attempting to attract Internet users for commercial gain. By doing so, the Respondent is creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent's website. It is more than likely that the Respondent is profiting of the goodwill associated with the Complainant’s trademark by accruing click-through fees for each redirected and confused Internet user. (See Axcan Pharma Inc. v. BWI Domain Manager c/o Domain Manager, NAF Claim No. 1217153; and McLaughlin Gormley King Company v. BMI Domains c/o Domain Manager, NAF Claim No. 1230837. These circumstances support a finding of bad faith use pursuant to paragraph 4(b)(iv) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) That the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
(ii) That the Respondent has no rights or legitimate interests in respect of the disputed domain name.
(ii) That the disputed domain name has been registered and is being used in bad faith. A) Identical or confusingly similar
The Complainant contends that the disputed domain name is identical or confusingly similar to its mark for the following reasons:
a) The disputed domain name is confusingly similar to the Complainant’s mark DOC MARTENS
b) The only difference between the Complainant's mark and the disputed domain name is the addition of the word “shoes”, which is a descriptive word for the products offered.
c) The disputed domain name is minor variation of the Complainant's mark which does not avoid confusion.
The Panel accepts the Complainant's contentions. The disputed domain name is confusingly similar to the Complainant's mark. The Panel finds that paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that any of the following circumstances in particular but without limitation if found by the panel to be proved based upon its evaluation of the evidence presented shall demonstrate a respondent's rights or legitimate interests in the domain name for the purpose of paragraph
4(a)(ii):
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the disputed domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted any Response and has failed to invoke any circumstance which could have demonstrated any rights or legitimate interests in the disputed domain name. There is no evidence in the case record which could have demonstrated any rights or legitimate interests on the part of the Respondent. The Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Policy, paragraph 4(a)(ii) has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy contains the following provisions under the heading "Evidence of Registration and Use in Bad Faith". For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a disputed domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the disputed domain name; or
(ii) you have registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding disputed domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
The Respondent has not submitted any Response in this connection. The Complainant has made contentions that would lead to situations mentioned in paragraph 4(b)(iv). The Panel accepts the Complainant's assertion that the Respondent has attempted to divert Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant's mark. The Panel finds that the Policy, paragraph 4(a)(iii) has been satisfied. 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 Complainant.
James McNeish Innes
Sole Panelist
Date: August 6, 2013
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