The Complainant is "Dr. Martens" International Trading GmbH of Gräfelfing, Germany / "Dr. Maertens" Marketing GmbH of Seeshaupt, Germany, represented by Beetz & Partner, Germany.
The Respondent is Koben Jorns of New York, New York, United States of America ("US"). 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 May 16, 2014. On May 16, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 16, 2014, 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.
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 May 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 12, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 19, 2014.
The Center appointed Ho-Hyun Nahm as the sole panelist in this matter on July 1, 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 Complainant owns trademark registrations for the mark DR. MARTENS around the world, inter alia, as follows:
US Trademark No. 1454323 registered August 25, 1987 for footwear in class 25;
US Trademark No. 1798791 registered October 12, 1993 for footwear in class 25; and
US Trademark No. 2838397 registered May 4, 2004 for retail services in the field of footwear and clothing in class 35 (Annex 3 to the Complaint).
The disputed domain name was registered on May 19, 2013. 5. Parties' Contentions A. Complainant
(i) the disputed domain name is confusingly similar to the Complainant's registered trademark DR. MARTENS in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith by the Respondent. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
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 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
In view of the Respondent's failure to submit a response, the Panel decides this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draws such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009 (in the absence of a response, it is appropriate to accept as true all allegations of the Complaint); see also Vertical Solutions Management., Inc. v. webnet-marketing, inc., NAF Claim No. 95095 (holding that the respondent's failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true). A. Identical or Confusingly Similar
The Complainant contends that "Dr. Martens" is a famous international brand for footwear, clothing and accessories, particularly renowned for its distinctive shoes and boots, first sold in the late 1950's. See Complainant's Annexes 4 & 5.
The Complainant has provided sufficient evidence showing that it is the owner of the DR. MARTENS mark the registration of which predates the Respondent's registration of the disputed domain name. The Complainant contends that it is the owner of trademark registrations with the USPTO for the DR. MARTENS mark (Reg. No. 1454323 for footwear, registered on August 25, 1987; Reg. No. 1798791 for footwear, registered on October 12, 1993; Reg. No. 2838397 for retail services in the field of footwear and clothing in class 35, registered on May 4, 2004) and many other trademark registrations for the same mark around the world. See Annex 3 to the Complaint.
Accordingly, the Panel finds that the Complainant's registrations of the DR. MARTENS mark with the USPTO sufficiently establish its rights in the mark pursuant to Policy, paragraph 4(a)(i). See Metropolitan Life Insurance Company v. Robert Bonds, NAF Claim No.873143 (finding that a USPTO trademark registration adequately demonstrates a complainant's rights in a mark under Policy, paragraph 4(a)(i)).
The Panel notes that the Respondent adds the geographical identifier "japan" to the Complainant's DR. MARTENS mark in the disputed domain name. It omits the punctuation of the Complainant's mark. The Panel holds that the Respondent's addition of a geographical identifier or omission of the punctuation of the Complainant's mark does not distinguish the disputed domain name from the Complainant's mark under Policy, paragraph 4(a)(i).
The Panel holds that the disputed domain name is confusingly similar to the Complainant's mark DR. MARTENS especially in that it incorporates the Complainant's mark in its entirety. See Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne,WIPO Case No. D2010-0240 finding "the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark."
The Panel also finds that the ".com" is a descriptive suffix commonly used as a generic Top-Level Domain ("gTLD"), and thus it does not constitute a prominent portion in the disputed domain name in determining confusing similarity between the disputed domain name and the Complainant's mark. Therefore, the addition of the gTLD suffix ".com" in the disputed domain name does not have any impact on the avoidance of confusing similarity. See Research in Motion Limited v. Input Inc, Domain Manager, WIPO Case No. D2011-2197 finding "the use of the added descriptive word does not change the overall impression of the domain name."
As such, the Panel concludes that the disputed domain name is confusingly similar to the Complainant's mark. B. Rights or Legitimate Interests
The Complainant must first make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name under the Policy, paragraph 4(a)(ii), and then the burden shifts to the Respondent to demonstrate it does have rights or legitimate interests (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Complainant asserts that it has never granted any license or other permission to the Respondent to use the Complainant's mark. The Complainant also contends that 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 mainly for footwear of third parties being direct competitors of the Complainants by submitting screen shots as shown in Annex 6 to the Complaint. The Complainant asserts that by choosing and using the disputed domain name, the Respondent is likely to mislead and deceive consumers into believing that he has a sponsorship, affiliation or approval with the original DR. MARTENS trademark owners, licensees, and customers when this is not the case. The Complainant submits that the Respondent is clearly making false representations that he and/or his website have a sponsorship, approval or association with the original DR. MARTENS trademark owners, licensees, and customers which is not the case.
The Panel finds that the Respondent has no connection or affiliation with the Complainant or its marks and has not received any license or consent, express or implied, to use the DR. MARTENS mark in the disputed domain name or in any other manner.
The Panel is of the view that the authenticity of the "Dr. Martens" branded products on the website to which the disputed domain name resolves cannot be verified. Furthermore, the linked websites by the disputed domain name appear to sell third parties' footwear as well as the Complainant's products. Therefore, the Panel agrees that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services and that nor is such use a legitimate noncommercial or fair use.
Under the circumstance that the Respondent did not reply and that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, the Panel concludes that the second element of the Policy, paragraph 4(a)(ii) has been established (see De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005 and Accor v. Eren Atesmen, WIPO Case No. D2009-0701). C. Registered and Used in Bad Faith
The Complainant asserts that the Respondent must have had knowledge of the Complainant's right to the DR. MARTENS trademarks when he registered the disputed domain name, since the Complainant's trademark is a well-known known trademark. The Complainant further asserts that the Respondent's awareness of the Complainant's trademark rights at the time of registration suggests opportunistic and bad faith registration.
The Panel agrees that the Complainant's DR. MARTENS mark has become famous and well known in the Unites States and worldwide. In light of the well-known status of the Complainant's DR. MARTENS mark, established well before the registration date of the disputed domain name, the Panel infers that the Respondent registered the disputed domain name with the knowledge of the Complainant's rights in the DR. MARTENS mark. The Panel finds that it is inconceivable that the Respondent was unaware of the Complainant's rights in the DR. MARTENS mark, in that it is unlikely that the Respondent would have registered the disputed domain name unless it was aware of the existence of the trademark DR. MARTENS and that the disputed domain name might be of some type of economic advantage to the Respondent (see The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113; Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517).
The Panel notes that the notoriety of the Complainant's trademark in respect of footwear and clothing goods is such that a prima facie presumption is raised that the Respondent registered the disputed domain name for the purpose of using it in some way to attract for commercial gain users to its linked websites by creating a likelihood of confusion with the Complainant's trademark. See Nokia Corporation v. Private, WIPO Case No. D2000-1271 (finding bad faith registration and use pursuant to Policy, paragraph 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant's famous mark).
In addition, the Panel recognizes that the website of the disputed domain name appears to have been linked to websites that offer third parties' products in competition with those offered under the DR. MARTENS mark. The Panel finds that such activities are disruptive to the Complainant's business and therefore conclusive evidence that the Respondent registered and is using the disputed domain name in bad faith pursuant to Policy, paragraph 4(b)(iii)
For all of the above considerations, the Panel finds that the Respondent, by using the disputed domain name, is intentionally misleading the consumers and confusing them so as to attract them to the websites linked by the disputed domain name resolved website, making them believe that the websites are associated with or recommended by the Complainant. The Respondent is therefore illegitimately capitalizing on the goodwill of the Complainant's mark.
As such, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith. 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.
Ho-Hyun Nahm
Sole Panelist
Date: July 14, 2014
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