The Complainants are “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH of Graefelfing and Seeshaupt respectively, Germany, represented by Beetz & Partner, Germany.
The Respondent is onepiece onepiece, of Alaska, Alaska, 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 June 30, 2014. On July 1, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 1, 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 July 4, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 24, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 25, 2014.
The Center appointed Keiji Kondo as the sole panelist in this matter on August 5, 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 are active in the field of footwear and the owners of DR. MARTENS trademark in many countries (Annex 3 to the Complaint).
The DR. MARTENS trademark is famous all over the world (Annex4, 5).
The disputed domain name was registered in October 2014. 5. Parties’ Contentions A. Complainant
The Complainants’ trademarks DR. MARTENS. are identical to the “drmartens” in the disputed domain name, being the distinctive part of the disputed domain name.
The mere addition of the element “boots” and some added letters “jp” does not in any way prevent the likelihood of confusion in the minds of the relevant Internet users.
Therefore, the disputed domain name is confusingly similar to various trademark registrations in which the Complainants have rights.
The Respondent has been selling “Dr. Martens” footwear, which is suspected to be counterfeit, on the website at the disputed domain name.
The Respondent is not entitled to incorporate the Complainants’ trademark into the disputed domain name.
This is a clear case of trademark infringement.
Furthermore, “www.” is blacklisted on the anti spam/anti-fraud-list of “” (Annex 7 to the Complaint). The Complainants suspect that the disputed domain name has been used for credit card phishing purpose.
From the facts provided above, nothing seems to indicate that the Respondent has any rights or legitimate interests in respect of the disputed domain name.
The Respondent must have had knowledge of the Complainants’ rights to the DR. MARTENS trademark when it registered the disputed domain name, since the Complainants’ trademark is widely well-known..
The Respondent’s awareness of the Complainants’ trademark rights at the time of registration suggests opportunistic bad faith registration. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainants have registered DR. MARTENS trademark in many countries before the Respondent’s registration of the disputed domain name.
The disputed domain name consists of “drmartens”, “boots”, “jp” and “.com”.
“drmartens” is identical to the Complainants’ trademark.
“boots” is merely descriptive for the products of the Complainants ,“jp” is the official country code for Japan and “.com” is the generic Top-Level Domain (“gTLD”) suffix.
Consequently, the Panel finds that “boots” “jp” and “.com” do not impact a finding of confusingly similarity.
Therefore, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
The Respondent is not affiliated with the Complainant in any way and has not been authorized by any of the Complainants to use the Complainants’ trademark.
The Respondent is using the disputed domain name to sell footwear showing the Complainants’ trademark.
Regardless of whether the Respondent’s products are counterfeit or not, the Respondent’s use of the disputed domain name cannot be considered as a bona fide offering of goods or servi ces or a legitmate noncommercial or fair use.
Therefore, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Complainants’ trademark was already well-known before the registration of the disputed domain name.
Furthermore, the description “boots” of the disputed domain name means the product of the Complainants’. Therefore, it is unlikely that the Respondent was not aware of the Complainants’ trademark at the time of the registration of the disputed domain name.
The Respondent uses the disputed domain name to sell footwear showing the Complainants’ trademark. The webpage is described in Japanese language.
The above mentioned circumstances suggest that the Respondent registered and used the disputed domain name to gain unfair commercial profit.
Therefore, considering the abovementioned circumstances and the Respondent’s lack of reply, the Panel concludes that the disputed domain name was registered and is being used 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 Complainants.
Keiji Kondo
Sole Panelist
Date: August 15, 2014 e
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