Complainant is “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH, Gräfelfing, represented by Beetz & Partner, Germany.
Respondent is Fernando Sarcia, Seattle, Washington, United States of America. 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 28, 2014. On May 28, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 28, 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”).
The Center noticed that the disputed domain name was set to expire on July 4, 2014. Paragraph 3.7.5.7.of the ICANN Expired Domain Deletion Policy provides that: “in the event that a domain which is the subject of a UDRP dispute is deleted or expires during the course of the dispute, Complainant in the UDRP dispute will have the option to renew or restore the name under the same commercial terms as the registrant”. Therefore, the Center contacted the Registrar on June 4, 2014 requesting a confirmation that the disputed domain name was going to be placed in Registrar “lock” status, and also, whether any action from the parties was required to keep it locked. Registrar replied on June 5, 2014, and confirmed that the disputed domain name had been placed in “lock” status, and also that they would take steps to ensure that the disputed domain name remain in status quo during the pending dispute. Although Registrar clarified that it is its policy to make Complainant bear the burden of ensuring that the disputed domain name does not expire. The Center forwarded this response to Complainant, who on June 6, 2014 paid the renewal fee to Registrar of the disputed domain name . Registrar confirmed on June 7, 2014, that the disputed domain name was renewed.
In accordance with the Rules, paragraphs 2(a) and 4(a), on June 4, 2014, the Center sent the Complaint and its Annexes to Respondent via email, and also a Written Notice of the Complaint via courier. As per paragraph 5(a) of the Rules, the due date for Response was June 24, 2014. The Center received a mail delivery system message informing that Respondent’s email address could not be reached. Also, the courier delivery service informed the Center that receiver refused the documents sent. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 27, 2014.
The Center appointed Fernando Triana, Esq. as the sole panelist in this matter on July 22, 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.
The Panel also finds that the Center has discharged its responsibility under Paragraph 2(a) of the Rules: “to employ reasonably available means calculated to achieve actual notice to Respondent” through electronic submission of the Complaint and its Annexes and the Written Notice of the Complaint via courier. Therefore, the Panel may issue its decision based on the documents submitted by Complainant and in accordance with the Policy, the Rules, the Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent. 4. Factual Background
Complainant is the owner of several registrations of the trademarks DR. MARTENS and DOC MARTENS around the world, for footwear, clothing and accessories. These trademarks are well-known mainly because of the boots and shoes sold since the late fifties bearing them, which became true fashion icons. 5. Parties’ Contentions A. Complainant
1. Complainant owns registrations in the United States of America, Canada and the European Union for the trademarks DR. MARTENS and DOC MARTENS in international classes 25 and 35.
2. The trademarks DR. MARTENS and DOC MARTENS are internationally famous and mainly renowned because of the shoes and boots sold since the late 1950’s.
3. The disputed domain name is a combination of the trademark DOCMARTENS and the descriptive word “superstore”, which simply indicates a place where consumers may buy Complainant’s products. Therefore, the disputed domain name is confusingly similar to the trademarks DR MARTENS and DOC MARTENS.
4. Respondent is using the disputed domain name to revert to a website displaying unauthorized links through which Internet consumers may buy Complainant’s products and also products of Complainant’s competitors.
5. Complainant believes that Respondent is making false representations that he and/or his website are sponsored by or somehow associated to Complainant. In addition, Respondent is taking unfair advantage of Complainant’s prior rights.
6. Respondent has no rights or legitimate interests in respect to the disputed domain name because: (i) Respondent does not own trademark rights on the expression DOC MARTENS, and (ii) Complainant has not authorized Respondent to use the trademark DOC MARTENS.
7. Respondent must have had knowledge of Complainant’s trademarks when he registered the disputed domain name, because they are widely well-known. By selecting and registering the disputed domain name, Respondent intentionally attempted to attract Internet users to his website for commercial gain, by creating a likelihood of confusion with Complainant’s trademarks. B. Respondent
Respondent did not reply to 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.”
Likewise, paragraph 10(d) of the Rules, provides that “the Panel shall determine the admissibility, relevance, materiality and weight of the evidence”. The Panel wants to make special emphasis on the evidence filed by the parties to prove their assertions, which has been thoroughly studied in order to determine its relevance and weight in arriving to a decision. The statements that have been accompanied by evidence have been given more importance than the mere statements made by the parties without further demonstration to its existence. The Panel is empowered to confirm this evidence ex officio.
In addition, the Panel will analyze the Respondent’s default within this administrative proceeding in accordance with paragraph 14 of the Rules, which states as follows:
“14. Default
(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.
(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw suchinferences therefrom as it considers appropriate.”
Hence, the Panel will deem Respondent’s failure to respond to the Complaint as a presumption against Respondent, and will accept as sufficient the evidence filed by Complainant (and confirmed by the Panel ex officio) to prove its claims, since it has not been contested by Respondent.
Paragraph 4(a) of the Policy requires that Complainant proves each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
This discussion, based on the evidentiary support submitted by the parties, will be developed as follows:
First of all (Section A), the Panel will determine whether or not the disputed domain name is identical or confusingly similar to the trademark in which Complainant has rights. Secondly (Section B), the Panel will verify if Respondent has any rights or legitimate interests in respect of the disputed domain name; and thirdly (Section C), the Panel will establish whether or not the disputed domain name has been registered and is being used in bad faith by Respondent. Section A. Identical or Confusingly Similar
Complainant contends to be the owner of the trademarks DR. MARTENS and DOC MARTENS in the United States of America, Canada and the European Union, among other jurisdictions since before the registration of the disputed domain name , that is, before July 4, 2013 (as shown in the WhoIs information of the disputed domain name, provided as Annex 1 to the Complaint). a) Existence of a trademark or service mark in which the Complainant has rights
Firstly, it is important to point out that paragraph 4(a) of the Policy requires the existence of a trademark or a service mark, the rights to which may be acquired by registration before a competent office in a number of jurisdictions of the world.
The worldwide-accepted definition of a trademark involves the concept of distinctiveness as the most relevant element. Said force gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.
When a sign is registered as a mark, it is surrounded by a presumption of sufficient distinctive force, and the owner is granted an exclusive right over the mark, which entitles it to prevent any third party from using the registered sign or any other sign confusingly similar to it.
In this case, Complainant proved its rights in the trademarks DR. MARTENS and DOC MARTENS. Annex 3 to the Complaint includes:
(i) A printout of the Office for Harmonization in the Internal Market (“OHIM”), Community Trade Mark in the European Union’s website referring to the Community Registration No.M00013731 of the trademark DR. MARTENS in international classes 14, 15, 18, 25, 35 and 37, which dates back to March 3, 1999.
(ii) A printout of the OHIM’s website referring to the Community Registration No.M00023768 of the trademark DOC MARTENS in international classes 14, 16, 18, 25 and 35, which dates back to February 24, 1999.
(iii) Copies of the following registration certificates for the trademark DR. MARTENS granted by:
- Canadian Intellectual Property Office, registration No. 420,485 of December 10, 1993, for clothing and footwear articles;
- Canadian Intellectual Property Office, registration No. 625,884 of November 18, 2004, for retail services in the field of clothing, footwear, etc.;
- The United States Patent and Trademark Office (“USPTO”), registration No. 1,454,323 of August 25, 1997, for soles for boots and for shoes (international class 25).
- USPTO, registration No. 1,798,791 of October 12, 1993, for footwear and parts thereof (international class 25).
- USPTO, registration No. 2,838,397 of May 4, 2004, for retail services in the field of footwear, clothing, etc. (international class 35).
(iv) Copies of the following registration certificates for the trademark DOC. MARTENS granted by:
- USPTO, registration No. 2,397,734 of October 24, 2000, for footwear and apparel (international class 25).
This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the trademarks DR. MARTENS and DOC MARTENS and the exclusive right to use them in connection with the stated goods. The registration of a trademark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive1 .
Thus, Complainant established its rights in the trademarks DR. MARTENS and DOC MARTENS.
Therefore, the Panel concludes that Complainant has demonstrated registered rights in the trademarks DR. MARTENS and DOC MARTENS for purposes of paragraph 4(a)(i) of the Policy. b) Identity or confusing similarity between the Disputed Domain Name and Complainant’s trademark
Complainant alleges that the disputed domain name incorporates the trademark DOC MARTENS and the descriptive term “superstore”, which makes it similar to the trademarks DR. MARTENS and DOC MARTENS.
Before establishing whether or not the disputed domain name is confusingly similar to the Complainant’s trademarks DR. MARTENS and DOC MARTENS, the Panel wants to point out that the addition of generic Top-Level Domains (“gTLD”), i.e., “.net,” “.com,” “.biz,” “.edu,” “.org,” may not be considered when determining if the domain name is identical or confusingly similar to the registered trademark.
Previous UDRP panels have unanimously accepted that the inclusion of the “.com” gTLD in the disputed domain name may be disregarded when analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights. In the Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico,WIPO Case No. D2000-0477, the panel stated that “the addition of the generic top-level domain (gTLD) name “.com” is without legal significance since use of a gTLD is required of domain name registrants, “.com” is one of only several such gTLDs, and “.com” does not serve to identify a specific enterprise as a source of goods or services”. This conclusion applies also to the “.org” gTLD.
In addition, the Panel believes that the word “superstore” is generic rather than descriptive, and therefore agrees with Complainant on the conclusion that including this generic term at the end of the second-level disputed domain name is not sufficient to make it different from the trademarks DR. MARTENS and DOC MARTENS. The expression “superstore” simply indicates a commercialization channel appropriate (and obvious) for the kind of products that Complainant produces and commercializes with the trademarks DR. MARTENS and DOC MARTENS.
As per this reasoning, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks DR. MARTENS and DOC MARTENS, and thus the requirement set forth in paragraph 4(a)(i) of the Policy is duly complied with. Section B: Rights or Legitimate Interests a) Prima Facie Case
Regarding this second element of paragraph 4(a) of the Policy, previous UDRP panels have unanimously consented that requiring the complainant to prove the lack of rights or legitimate interests of the respondent in a domain name is often an impossible task: it is not only a negative but also demands access to information that is mostly within the knowledge of the respondent.
In the Julian Barnes v. Old Barn Studios Limited, WIPO Case No. D2001-0121, the panel stated that:
“Is the Respondent required to adduce any such evidence, if the onus is on the Complainant to prove the three elements of paragraph 4 of the Policy? While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panel’s view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4I of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head.”
Therefore, a complainant is required to make a prima facie case that the respondent lacks of rights or legitimate interests in a domain name. Once this prima facie case is made, the burden of production shifts to Respondent, who must prove those rights or legitimate interests. If Respondent fails to do so, Complainant is deemed to have met the second element of paragraph 4(a) of the Policy.
Complainant asserts that Respondent has no rights or legitimate interests in respect to the disputed domain name because: (i) Respondent does not own trademark rights in DOC MARTENS; (ii) Complainant has not authorized Respondent to use the trademark DOC MARTENS, (iii) Respondent was or must have been aware of the existence of the trademark DOC MARTENS when he registered the disputed domain name; and (v) the disputed domain name reverts to a website that displays links through which Internet consumers may buy Complainant’s products and also those of Complainant’s competitors.
The Panel accepts this assertion as a prima facie case made by Complainant that shifts the burden of production to Respondent. b) Respondent’s Rights or Legitimate Interests in the Disputed Domain Name
Paragraph 4(c) of the Policy includes an enunciate listing of circumstances that prove Respondent’s rights or legitimate interests in a disputed domain name:
(i) before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is 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.
Respondent did not file a Response.
Given the circumstances of this case, the Panel believes that even if Respondent had filed a Response, he could not have proved any rights or legitimate interests in the disputed domain name: the trademarks DR. MARTENS and DOC MARTENS are worldwide associated with its owner, that is, with Complainant. Respondent is not commonly known by the words “Doc Martens Superstore”. In addition, Annexes 6 and 7 to the Complaint show that the disputed domain name indeed reverts to a parking site displaying links through which consumers can buy products from Complainant and its competitors. In the Panel’s assessment, Respondent is taking advantage of the trademark DOC MARTENS’s recognition and positioning for commercial gain. The Panel deems this behavior as exactly the opposite of a bona fide offering of goods.
The Panel finds on the record that Respondent lacks rights or legitimate interests in the disputed domain name . Therefore, the requirement set forth in paragraph 4(a)(ii) of the Policy is duly complied with. Section C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, 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 the disputed domain name in bad faith:
(1) circumstances indicating that Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(2) Respondent has registered the disputed domain name in order to prevent Complainant from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(3) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(4) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
Complainant asserts that Respondent registered the disputed domain name in bad faith since he must have had knowledge of the trademarks DR. MARTENS and DOC MARTENS on July 4, 2013.
Complainant mentioned in the Complaint that the trademarks DR. MARTENS and DOC MARTENS are well-known and submitted evidence of the trademarks’ recognition and positioning worldwide as Annex 5 to the Complaint.
The Panel wishes to highlight that a trademark’s alleged well-known character must be proved by the interested party and cannot simply be taken for granted. In this case, the evidence submitted by Complainant is enough to prove the trademarks DR. MARTENS and DOC MARTENS’ well-known character.
In addition, the Panel undertook an ex officio online research on August 1, 20142 , about Complainant and its trademarks DR. MARTENS and DOC MARTENS and concludes that these trademarks are not only well-known, but true fashion icons.
Given the trademarks DR. MARTENS and DOC MARTENS’ recognition and positioning, the Panel agrees with Complainant: Respondent must have known the trademarks DR. MARTENS and DOC MARTENS at the time the disputed domain name was registered. In the Panel’s view, Respondent deliberately took someone else’s trademark and combined it with the generic term “superstore” to register a domain name and to create a business around it. The Panel deems that the mere fact of knowingly using and modifying a third-party’s trademark in a domain name without rights or legitimate interests is registration in bad faith. See Aktiebolaget Electrolux v. Jorgeariel Figueroa Rodríguez,WIPO Case No. D2011-1311, where the panel held: “The selection of this word is certainly not a random decision: the Panel finds that it is a consequence of Respondent’s prior knowledge of the mark. This fact, by itself, is registration in bad faith in the Panel’s opinion”.
The Panel must highlight that Respondent also must have been aware of Complainant’s business, since the disputed domain name could perfectly be a means for Internet users to find and buy shoes and boots, either branded with the trademarks DR. MARTENS/DOC MARTENS or any other from Complainant’s competitors. Thus, the Panel believes the inclusion of the trademark DOC MARTENS in the disputed domain name is per se evidence of Respondent’s bad faith.
Additionally, Complainant believes that Respondent has intentionally attempted to attract, for commercial gain, Internet users to an online location by creating a likelihood of confusion with the trademarks DR. MARTENS and DOC MARTENS. The Panel concurs. This intention explains the selection of words with which Respondent made its domain name up. In the Panel’s view, Respondent knew that the disputed domain name would attract Internet users to a website from which Respondent expected to make money.
Internet users may reach the website at the disputed domain name while looking for information about DR. MARTENS/DOC MARTENS branded goods or while trying to visit an online shop for these goods. In all, the Panel believes that registering a domain name which comprises someone else’s highly recognized trademark so as to make profit from diverted Internet users is use in bad faith as per Policy, paragraph 4(b)(iv).
Finally, the Panel considers that refusing the documents regarding this dispute is also indicative of Respondent’s bad faith in this case.
The three elements of the Policy, paragraph 4(a) are satisfied in the present case in respect to Respondent of the disputed domain name. 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.
Fernando Triana, Esq.
Sole Panelist
Date: August 5, 2014
1 See Janus Interantional Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201.
2 See paragraph 4.5 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0")
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