The Complainants are “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH of Gräfelfing, Germany, represented by Beetz & Partner, Germany.
The Respondent is Whois Privacy Protection Service by MuuMuuDomain of Fukuoka, Japan / masashi komuro of Fukushima, Japan. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GMO Internet, Inc. d/b/a Discount-D and O (the “Registrar”). 3. Procedural History
The Complaint filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2013. On November 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 14, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on November 18, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on November 19, 2013. On November 18, 2013, the Center transmitted an email to the parties in Japanese and English regarding the language of the proceeding. On November 19, 2013, the Complainants confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 amendment to the Complaint, and the proceedings commenced on November 27, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 17, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 18, 2013.
The Center appointed Haig Oghigian as the sole panelist in this matter on January 15, 2014. 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 have obtained the selected trademark registrations for the DR. MARTENS trademark for footwear, clothing and accessories in Australia, Canada, the United States of America, Japan and international trademark registration.
The Domain Name was created on July 18, 2013, long after the Complainants had secured its rights in the DR. MARTENS trademark. 5. Parties’ Contentions A. Complainants
The Complainants request that the registration of the Domain Name be transferred from the Respondent to the Complainants.
The Complainants argue that the Domain Name is confusingly similar to the DR. MARTENS trademark (paragraph 4(a)(i) of the Policy). The Domain Name is a combination of the descriptive element of “love” and the characterizing name “drmartens”. With respect to the fact that the element “love” is merely and clearly descriptive, the respective consumers will pay their major attention to the first characterizing element “drmartens”. The Domain Name is phonetically higher similar to the Complainants’ trademark. The Complainants’ trademark DR. MARTENS is distinctive part of the Domain Name. The mere addition of the descriptive term “love” does not prevent the confusing similarity between the Domain Name and the Complainants’ trademark.
The Complainants assert that the Respondent has no rights or legitimate interests in the Domain Name (paragraph 4(a)(ii) of the Policy). The Respondents has been using the Domain Name as a parking website for links to unauthorized footwear selling websites for “Dr. Martens” products but mainly for footwear of third parties being direct competitions of the Complainants. The Respondent has never been authorized hereto. The Respondent is hereby passing off the Complainants’ goodwill and the reputation in the DR. MARTENS trademark The Respondent is likely to make an illegitimate commercial and unfair use of the Domain Name with clear intension for commercial gain misleading to divert Interest visitors and to tarnish the trademark ”. Nothing seems to indicate that the Respondent has any rights or legitimate interests in respect of the Domain Name.
Furthermore, with respect to paragraph 4(a)(iii) of the Policy, the Complainants state that the Respondent must have had knowledge of the Complainants’ rights in the DR. MARTENS trademark when it registered the Domain Name, since the Complainants’ trademark is well-known, and the Respondent has combined it in the Domain Name with a word (“love”) being descriptive as general term for an emotion towards the products concerned. The Respondent’s awareness of the Complainants’ trademark rights at the time of registration suggests opportunistic bad faith registration. The Respondent is linking the Domain Name to websites offering for sale the Complainants’ competitors’ and “Dr. Martens” footwear without being authorized or approved by the Complainants or their licenses. It is more than likely that the Respondent is profiting of the goodwill associated with the Complainants’ trademark by accruing click-through fees for each redirected and confused Internet user. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings A. Language of Proceedings
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."
It is noted that the language of the registration agreement is Japanese and the default language of the proceedings would have been Japanese. The Complainants assert that English should be the language of the proceedings.
On November 18, 2013, the Center notified the Respondent in both English and Japanese that the Complaint was submitted in English, that the language of the registration agreement for the Domain Name was Japanese, and provided the parties with detailed information concerning the language of proceedings. The Respondent was therefore aware of the language matters in the case and had an opportunity to make any comments or submissions if so wished. However, the Respondent has not objected to the language of the proceedings at all by the due date. See Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004.
Paragraph 11(a) of the Rules reserves the Panel the authority to determine the proper language of the proceeding. In view of all the above circumstances and the Complainants’ request, the Panel finds that there is no prejudice caused to the Respondent if the proceedings are conducted in English. The selection of the Japanese language as the language of the proceedings in the present case would be a burden to the Complainants, and would also cause undue delay to the proceedings.
The Panel is therefore satisfied that English should be selected as the language of the proceedings of this case, and shall therefore render the decision in English in accordance with paragraph 11 of the Rules. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the complainant must prove that the domain name is identical or confusingly similar to the trademark.
It is clear on the given evidence that the Domain Name is a combination of the Complainants’ trademark DR. MARTENS and the descriptive element of “love”. The Complainants have obtained the selected trademark registrations for the Dr. Martens Marks in Australia, Canada, the United States of America and Japan and international trademark registration.
In accordance with UDRP precedent, the Panel finds that the Domain Name is confusingly similar to the Complainants’ trademark DR. MARTENS ..The Complainants have therefore satisfied the requirement of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires that the complainant must prove that the respondent has no rights or legitimate interests in respect of the domain name. Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that may be brought forward by the respondent in order to demonstrate its rights or legitimate interests in a domain name. Such circumstances include:
- (demonstrable preparations to) use the domain name in connection with a bona fide offering of goods or services prior to the dispute (Paragraph 4(c)(i));
- an indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights (Paragraph 4(c)(ii)); or
- legitimate, noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark (Paragraph 4(c)(iii)).
In this case, the Complainants presented a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. It is clear on the given evidence that the Domain Name was registered long after the DR. MARTENS trademark had become famous and distinctive in Japan. Thus, the burden of production is on the Respondent to establish its rights or legitimate interests in the Domain Name. See PepsiCo, Inc. v. Amilicar Perez Lista d/b/a Cyberson,WIPO Case No. D2003-0174. However, there has been no evidence produced by the Respondent in this regard.
There is no evidence that suggests that the Respondent has been or is commonly known by the Domain Name. In addition, there is no evidence that establishes the existence of a relationship between the Complainants and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the Domain Name or any trademark confusingly similar thereto, as a domain name or for any other purposes.
Therefore, the Panel finds that the Complainants have established that the Respondent has no rights or legitimate interests in the Domain Name, and the Complainants have therefore satisfied the requirement of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the complainant must prove that the domain name has been registered and is being used in bad faith. In addition, paragraph 4(b) of the Policy gives a non-exhaustive list of circumstances that may be brought forward by the complainant in order to demonstrate bad faith use and registration of the domain name. Such circumstances include, among others:
- registration of the domain name primarily for the purpose of disrupting the business of a competitor (Paragraph 4(b)(iii)); and
- intentional attempt to attract, for commercial gain, Internet users to web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, product or service on web site or location (Paragraph 4(b)(iv)).
The Respondent must have had knowledge of the Complainants’ right in the DR. MARTENS trademark when it registered the Domain Name, since the Complainants’ trademark is unique and well known. The Respondent’s awareness of the Complainants’ trademark rights at the time of registration suggests opportunistic bad faith registration. (See BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007
The evidence establishes that the Respondent is linking the Domain Name to websites offering for sale the Complainants’ competitors’ and “Dr. Martens” footwear without being authorized or approved by the Complainants or their licenses. It is probable that the Respondent is profiting of the goodwill associated with the Complainants’ trademark by accruing click-through fees for each redirected and confused Internet user.
Therefore, the Panel is satisfied that the Complainant has established bad faith registration and use as required by paragraph 4(a)(iii) of the Policy. 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 Domain Name be transferred to the Complainants.
Haig Oghigian
Sole Panelist
Date: January 31, 2014
Full & Egal Universal Law Academy