The Complainants are “Dr. Martens” International Trading GmbH of Gräfelfing, Germany and “Dr. Maertens” Marketing GmbH of Seeshaupt, Germany, represented by Beetz & Partner, Germany.
The Respondent is chloe of Hangzhou, Zhejiang Province, China. 2. The Domain Names and Registrar
The disputed domain names and (the “Disputed Domain Names) are 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 April 1, 2014. On April 1, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On April 2 and 3, 2014, the Registrar transmitted by email to the Center its verification responses confirming that the Respondent is listed as the registrant and providing the contact details. On April 8, 2014, the Center informed the parties that in light of the Registrar’s reply dated April 8, 2014 regarding expiration of the Disputed Domain Name , the Complainants or the Respondent should contact the Registrar directly to renew the Disputed Domain Name so that the Disputed Domain Name would remain active and locked during the pending proceeding. On the same day, the Complainants confirmed to the Center that they had paid for the renewal fee of the Disputed Domain Name .
On April 8, 2014, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainants requested 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 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 in both Chinese and English, and the proceeding commenced on April 14, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 4, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default. On April 29, 2014, the Complainants submitted clerical corrections to Annexes 1 and 2 to the Complaint.
The Center appointed Kar Liang Soh as the sole panelist in this matter on May 14, 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 own registrations for the trade mark DR. MARTENS around the world, including: Jurisdiction Trade Mark Number Registration Date
Australia
500799
December 5, 1988
Canada
420485
December 10, 1993
United States of America
1454323
August 25, 1987
International Registration
575311
July 18, 1991
The trade mark DR. MARTENS has been associated with footwear, clothing and accessories since the late 1950’s. Products under the trade mark DR. MARTENS are available from retailers around the world and online. The trade mark DR. MARTENS has been recognized by writers and a book has been written and published about it entitled “Dr Martens the story of an icon”.
A previous UDRP panel has held that the trade mark DR. MARTENS is well-known (i.e., “Dr. Martens” International Tr.comading GmbH, “Dr. Maertens” Marketing GmbH v. Hui Chen,WIPO Case No. D2013-1660). The Respondent’s email address was also used as the administrative, technical and billing contact of the domain name in that case.
Little is known about the Respondent beyond the WhoIs information of the Disputed Domain Names. The Respondent registered the Disputed Domain Names on July 6, 2013 () and March 14, 2013 () respectively. The Respondent’s name is stated simply as “chloe” without any clarity on whether this is a first name or last name. The Respondent’s address in the WhoIs information only identifies a city and province in China without any street address.
On or before the date of the Complaint, the Disputed Domain Name resolved to a holding webpage. It is unclear from the evidence whether the Disputed Domain Name resolved to any webpage on or before the date of the Complaint. As of April 14, 2014, the Disputed Domain Name did not resolve to any webpage, while the Disputed Domain Name resolved to a Microsoft Internet Information Server (IIS) 7 holding page. 5. Parties’ Contentions A. Complainants
The Complainants contend that:
1) The Disputed Domain Names are confusingly similar to the trade mark DR. MARTENS in which the Complainants have rights. The Disputed Domain Names combine the descriptive elements “original”, “boots” and “distinct” with “drmartens”. The mere addition of “original”, “boots” and “distinct” to “drmartens” does not prevent the likelihood of confusion in the minds of Internet users.
2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Respondent has never been authorized by the Complainants to use the Disputed Domain Names.
3) The Disputed Domain Names were registered and are being used in bad faith. The trade mark DR. MARTENS is well-known and the Respondent must have known of the Complainants’ rights at the time of registering the Disputed Domain Names. The Respondent is using the Disputed Domain Names to create a likelihood of confusion with the trade mark DR. MARTENS as to source, sponsorship, affiliation, or endorsement of the Respondent’s websites. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
The language of the registration agreement is Chinese. Therefore, the default language of the proceeding should be Chinese. However, the Panel is empowered under paragraph 11 of the Policy to determine otherwise having regard to the circumstances. In the present instance, the Complainants have requested that English be adopted as the language of the proceeding.
Having considered the circumstances, the Panel decides that English be adopted as the language of the proceeding. In making this decision, the Panel took account of the following factors:
1) The Complaint has already been submitted in English;
2) The Respondent has chosen not to participate in the proceeding by not submitting a Response;
3) The Respondent has not objected to the Complainants’ request that English be adopted as the language of the proceeding;
4) No procedural benefit would be gained by insisting that the Complaint be translated into Chinese and resubmitted; and
5) Requiring translation of the Complaint into Chinese would lead to unnecessary delay in the proceeding. 6.2. Discussion A. Identical or Confusingly Similar
The Complainants have shown that they own trade mark rights in the trade mark DR. MARTENS by virtue of the various trade mark registrations.
Both the Disputed Domain Names incorporate the trade mark DR. MARTENS in its entirety. The essential differences between the Disputed Domain Names and the trade mark DR. MARTENS are the addition of descriptive prefixes and suffixes, namely the prefix “distinct” in , and the prefix “original” and suffix “boots” in . The Panel agrees that the addition of these descriptive words to the trade mark DR. MARTENS in the Disputed Domain Names do not serve to distinguish the Disputed Domain Names from the trade mark DR. MARTENS.
As such, the Disputed Domain Names are confusingly similar to the trade mark DR. MARTENS and the Panel finds that the first limb of paragraph 4(a) of the Policy is established. B. Rights or Legitimate Interests
The Complainants have confirmed that they have not authorized the Respondent to incorporate the trade mark DR. MARTENS in the Disputed Domain Names. There is no evidence before the Panel which suggests that the Respondent is commonly known by the Disputed Domain Names. The evidence also did not indicate that the Disputed Domain Names resolved to any website which is clearly noncommercial in nature. Nothing in the evidence provides any justification for the Respondent’s selection of the Disputed Domain Names. Accordingly, the Panel is of the view that a prima facie case that the Respondent does not have rights or legitimate interests in the Disputed Domain Names has been established. No response having been filed, the prima facie case has not been rebutted by the Respondent and the second limb of paragraph 4(a) is hereby established. C. Registered and Used in Bad Faith
Based on the evidence submitted, the Panel accepts that the trade mark DR. MARTENS is well-known. Considering the well-known status of the trade mark, it is inconceivable that the Respondent was unaware of the trade mark DR. MARTENS when the Disputed Domain Names were registered. The incorporation of the word “boots” in (which describes one of the better known products of the Complainants) points directly to the Respondent’s prior knowledge of the trade mark DR. MARTENS.
Paragraph 4(b)(ii) of the Policy highlights the following example of bad faith registration and use:
“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.”
The Respondent has registered two domain names in the present case incorporating the trade mark DR. MARTENS and prevented the Complainants from reflecting their mark in corresponding domain names. The Respondent has also been associated with an earlier domain name dispute surrounding (“Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. Hui Chen, supra). This indicates that the Respondent has engaged in a pattern of conduct identified in paragraph 4(b)(ii) of the Policy.
Paragraph 4(b)(iv) of the Policy describes another example of bad faith registration and use:
“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.”
There is insufficient evidence before the Panel which shows that the Respondent is using the Disputed Domain Names for commercial gain. However, in light of the Panel’s finding of the Respondent’s prior knowledge of the trade mark DR. MARTENS, it is reasonable to conclude that the Respondent must have registered the Disputed Domain Names to attract Internet users by creating a likelihood of confusion with the Complainants’ trade mark as to the source, sponsorship, affiliation or endorsement of websites resolved from the Disputed Domain Names or products offered thereon. Therefore, although the situation outlined in paragraph 4(b)(iv) of the Policy is not made out by the evidence, a taint of bad faith exists.
This taint is further reinforced by the Respondent’s adoption of what appears to be incomplete contact particulars in association with the registration of the Disputed Domain Names as shown in the corresponding WhoIs information. The name is a single word “chloe”. The Respondent’s address is missing a street address. The facsimile number did not raise a dial tone when the Center attempted to transmit the Written Notice.
The Disputed Domain Name resolved to a holding page on or before the Complaint but stopped resolving to any webpage thereafter. There is no evidence that the Disputed Domain Name resolved to any website on or before the Complaint. Although the Complainant has alleged in the Complaint that the Disputed Domain Name resolved to a website with links to its competitors, the evidence submitted only shows a Bing search result page with “” in the search field followed by a listing of search results. The Panel does not regard the search result page to be a website resolved from . Since resolved to a holding page as of April 14, 2014, and in the absence of evidence suggesting otherwise, the Panel surmises that also resolved to a holding page on or before the Complaint.
Based on the circumstances, the Panel is of the view that the passive holding of the Disputed Domain Names by the Respondent, with the Disputed Domain Names merely resolving to holding pages, amounts to bad faith registration and use in line with the principles first identified in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The factors which led to the Panel concluding thus are:
1) The Complainants’ trade mark DR. MARTENS is well-known as shown in the evidence;
2) The Respondent did not respond to the Complaint and accordingly did not provide suggestion of registration and use of the Disputed Domain Names in good faith;
3) The Respondent has taken active steps to conceal its identity by providing an incomplete name of an individual, an incomplete address, and an invalid facsimile number, and in so doing, is also in breach of the registration agreement;
4) The Respondent has engaged in a pattern of conduct of registering multiple domain names comprising the trade mark DR. MARTENS; and
5) It is not possible to conceive of any plausible legitimate use of the Disputed Domain Names by the Respondent.
Therefore, the Panel holds that the third limb of paragraph 4(a) of the Policy is established. 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 Names, and , be transferred to the Complainants.
Kar Liang Soh
Sole Panelist
Date: May 28, 2014
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