Complainant is “Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH of Seeshaupt, Germany, represented by Beetz & Partner, Germany.
Respondent is chloe of China. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Xin Net Technology Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2014. On March 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 25, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
On March 25, 2014, the Center transmitted an email to the parties in both English and Chinese regarding the language of the proceeding. On March 26, 2014, Complainant submitted its request that English be the language of the proceeding to the Center by email. Respondent did not submit any comments within the specified due date.
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 March 31, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 20, 2014. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 22, 2014.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on May 7, 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
Complainants are the registered owner of numerous trademarks comprising the word “Dr. Martens” in a number of jurisdictions. The mark DR. MARTENS was first registered in the United States of America in June, 1983. The mark DR. MARTENS was registered as an international trademark pursuant to the Madrid Protocol in July, 1991. Complainant sells footwear, clothing, and accessories world-wide under the brand “Dr. Martens.”
Respondent chloe is based in China. The Disputed Domain Name was registered on May 27, 2013. 5. Parties’ Contentions A. Complainant
The Disputed Domain Name is identical and confusingly similar to Complainants’ DR. MARTENS Mark. Respondent has no legal rights to or legitimate interests in the Disputed Domain Name. Respondent registered and is using the Disputed Domain Name in bad faith. B. Respondent
Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Where a party fails to present evidence in its control, the panel may draw adverse inferences regarding those facts. Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques,WIPO Case No. D2000-0004. Insofar as Respondent has defaulted, it is therefore appropriate to accept the facts asserted by Complainant and to draw adverse inferences of fact against Respondent. Nonetheless, paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name 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 Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
ii. the Disputed Domain Name has been registered and is being used in bad faith.
Further, the Panel finds that, in light of the fact that the website resolving from the disputed domain name is in English and ostensibly directed towards English speakers, that English should be the language of the proceeding. The Panel further notes Respondent’s default and failure to respond to emails in either English or Chinese as evidence that Respondent’s default is not related to the language used in the proceeding. A. Identical or Confusingly Similar
To prove this element, Complainant must have trademark rights and the Disputed Domain Name must be identical or confusingly similar to the Complainant’s trademark.
As stated above, Complainant is the registered owner of numerous trademarks comprising the word “Dr. Martens” in a number of jurisdictions. Complainant submits that “Dr. Martens” brand footwear has been sold since the late 1950’s and is particularly renowned for its distinctive shoes and boots. It further submits that “Dr. Martens” brand footwear, clothing, and accessories are available for sale at retailers world-wide, including retailers in Australia, as well as on the brand website . Complainant submitted evidence of its footwear sales at as Annex 4. Complainant also submitted evidence of the worldwide consumer recognition for the “Dr. Martens” brand as Annex 5. The Panel finds that the Complainant’s Marks are distinctive and well-known by the public for footwear, clothing, and accessories.
The record shows Complainant owned trademark rights in the DR. MARTENS Mark long before the Disputed Domain Name registration in May 27, 2013. The Disputed Domain Name incorporates the DR. MARTENS” Mark in its entirety. “In most cases where a domain name incorporates the entirety of a trademark, then the domain name will for the purposes of the Policy be confusingly similar to that mark.” Research in Motion Ltd. v. One Star Global LLC,WIPO Case No. D2009-0227.
Complainant submits that the Disputed Domain Name is confusingly similar to the DR. MARTENS Marks. The Panel agrees. The Disputed Domain Name contains the identical letters to Complainant’s mark. It is well established that a domain name is confusingly similar to a mark “when the domain name includes the trademark, or a confusingly similar approximation.” Nicole Kidman v. Zuccarini,WIPO Case No. D2000-1415; see Six Continent Hotels, Inc. v. The Omnicorp,WIPO Case No. D2005-1249. Furthermore, the Disputed Domain Name incorporates the entirety of the DR. MARTENS Mark and simply adds the descriptive term “original.” Respondent has not offered any argument to show this inclusion is not non-distinctive or generic, and, in the absence of a credible explanation, the most likely explanation is that it was chosen with Complainant’s Mark in mind. (Associazione Radio Maria v. Mary Martinez / Domains by Proxy, Inc.,WIPO Case No. D2010-2181). Previous UDRP panels have accepted that “[g]enerally, a user of a mark ‘may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or nondistinctive matter to it.’” J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23: 50 (4th ed. 1998) cited in Pfizer Inc. v. United Pharmacy Ltd.,WIPO Case No. D2001-0446. See also Telstra Corporation Limited v. Barry Cheng Kwok Chu,WIPO Case No. D2000-0423. The combination of the Complainant’s DR. MARTENS Mark with the word “original” is insufficient to distinguish the Respondent’s domain name from the Complainant’s mark because the dominant portion of the Disputed Domain Name is the Complainant’s DR. MARTENS Mark. See Skype Limited v. Xiaochu Li, Case No. D2005-0996.
It is therefore likely that consumers would be confused by the use of the trademark in the Disputed Domain Name. In light of the foregoing, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s registered mark and that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
The Panel finds there is no evidence in the record to indicate that Respondent is associated or affiliated with Complainant or that Respondent has any other rights or legitimate interest in the term “Dr. Martens”. A complainant is required to make out an initial prima facie case that respondent lacks rights or legitimate interests. Once such a prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See Croatia Airlines d. d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455 and Belupo d. d. v. WACHEM do.o.WIPO Case No. D2004-0110. The Panel finds that Complainant has successfully presented a prima facie case which Respondent has not rebutted. Respondent has filed no response. Without a response, there is nothing in the case file that indicates that Respondent has a right or legitimate interest in the Disputed Domain Name. Further, as discussed below, the Panel also finds that Respondent is not engaged in a bona fide offering of goods or services. There is also no evidence in the record that Respondent’s use of the Disputed Domain Name is a legitimate noncommercial or fair use, or that Respondent is commonly known by the Disputed Domain Name.
The Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states nonexclusive circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.
The record shows Complainant owns trademark rights in DR. MARTENS that predate creation of the Disputed Domain Name. The Disputed Domain Name contains Complainant's mark in its entirety. Given the global recognition of the Complainant, the Panel finds that Respondent was likely aware of or should have known of Complainant’s rights in the trademark DR. MARTENS when registering the Disputed Domain Name. Where the Respondent chooses to incorporate a well known mark into a domain name without authorization, “the combination of an identical trademark in a domain name and the ensuing likelihood of initial interest confusion alone ought to be sufficient to demonstrate that Respondent has no legitimate interest in this case.” General Electric Company, GE Osmonics Inc. v. Optima di Federico Papi,WIPO Case No. D2007-0645. Further, where the mark is well-known and famous, a trader would not legitimately choose it, “unless seeking to create an impression of an association” with the mark’s owner. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-00003.
It is unrebutted that Respondent is using a confusingly similar domain name to Complainant’s DR. MARTENSMark in connection with a website that offers competing services to those of Complainant. Further, as established above, there is no evidence in the record to indicate that Respondent is associated or affiliated with Complainant or that Respondent has any other rights or legitimate interest in the term “Dr. Martens”.
Complainant submits that Respondent is using the Disputed Domain Name as a parked website for links to unauthorized footwear selling sites. These sites offer sales of “Dr. Martens” products and footwear from direct competitors of Complainant. Complainant submitted evidence of this use in Annexes 6 and 7. This use of Complainant’s trademarks evidences Respondent’s intention to attract users, for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, affiliation, or endorsement of the website.
Accordingly, the Panel finds that Respondent registered and is using the Disputed Domain Name in bad faith. For the foregoing reasons, the Panel finds that 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.
Kimberley Chen Nobles
Sole Panelist
Date: May 20, 2014
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