The Complainants are “Dr. Martens” International Trading GmbH of Graefelfing, Germany and “Dr. Maertens” Marketing GmbH of Seeshaupt, Germany (collectively referred to as the “Complainant”), represented by Beetz & Partner, Germany.
The Respondent is WhoisGuard, Inc. of Panama / Michael Schutt of Moshav Shokeda, Israel. 2. The Domain Names and Registrar
The disputed domain names and are registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2015. On December 16, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 21, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 22, 2015, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 23, 2015.
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 24, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 25, 2016.
The Center appointed Andrea Dawson as the sole panelist in this matter on January 26, 2016. 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 is the owner of the DR. MARTENS trademark and has continuously used the trademark in connection with various goods, especially footwear and clothing since the 1950s. The Complainant’s goods are available for sale under the DR. MARTENS trademark at retailers throughout the world, as well as online.
The Complainant has obtained trademark registrations covering its DR. MARTENS mark in several countries, including, Australia, the United States of America, Canada and Panama, as well as International Trademark, Registration No. 575311, registered July 18, 1991; and Community Trade Mark, Registration No. 000059147, registered March 3, 1999.
The Complainant has been the registrant of the domain name since 1999.
The disputed domain names and were both registered on August 5, 2015. 5. Parties’ Contentions A. Complainant
The Complainant states that it is the owner of several trademark registrations for the DR. MARTENS trademark around the world.
The Complainant adds that the DR. MARTENS trademark is a famous mark for footwear and clothing.
The Complainant states that the disputed domain names are confusingly similar to the DR. MARTENS trademark.
The Complainant further adds that the mere addition of the terms “shoes” and “shoestore” does not prevent any likelihood of confusion, as they refer to the products offered by the Complainant. These terms are merely descriptive.
The Complainant states that it has not authorized the Respondent to use of the DR. MARTENS trademark, and that by using the disputed domain names, the Respondent is likely to mislead and deceive consumers into believing that the Respondent is sponsored by or is affiliated with the Complainant.
The Complainant further adds that the disputed domain names are being used by the Respondent in a manner to take unfair advantage of, and is detrimental to, the Complainant’s rights.
The Complainant also states that the Respondent has registered the disputed domain names with the intention to deceive and mislead Internet users by creating a likelihood of confusion with the Complainant’s trademark for commercial gain.
The Complainant states that the Respondent must have had knowledge of the Complainant’s rights to the DR. MARTENS trademark when registering the disputed domain names, since the trademark is widely known, suggesting opportunistic bad faith registration.
The Complainant states that it has established and proven that the three requirements of paragraph 4(a) of the Policy have been met in the present case, i.e., that the disputed domain names and are confusingly similar to the Complainant’s DR. MARTENS trademark, that the Respondent has no rights or legitimate interests in respect of the disputed domain names, and that the Respondent has registered and used the disputed domain names in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy stipulates that the Complainant must prove the following three elements in order to be successful in its action:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Complainant has demonstrated that it has rights in the DR. MARTENS trademark. The disputed domain names include the terms “shoe” and “shoestore” together with the DR. MARTENS trademark. The mere addition of these generic terms to the trademark is not sufficient to eliminate the confusing similarity with the Complainant’s trademark, particularly in light of the fact that the Complainant’s main area of business is the manufacturing and sales of footwear.
Consequently, the Panel concludes that the disputed domain names are confusingly similar to the Complainant’s trademark and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain names.
Prior UDRP panels have established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in a disputed domain name the burden of production shifts to the respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant has made out such a prima facie case in the present proceeding.
The Panel accepts the arguments of the Complainant that the Respondent has not been authorized by the Complainant to use its DR. MARTENS trademark, or to register any domain name incorporating said mark, and that the Respondent has no prior rights or legitimate interests in the disputed domain names.
Furthermore, the Panel finds that the Respondent is neither commonly known by the name “Dr. Martens” nor in any way affiliated with the Complainant, nor authorized or licensed in any other way to use the DR. MARTENS trademark.
The Panel also accepts the Complainant’s argument that the Respondent has made no demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services; or that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not come forward to assert any right or legitimate interest he may have in the disputed domain names, and the record is devoid of any indication of such a right or legitimate interest.
Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain names were registered and are being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular but without limitation, if found by the Panel to be present, shall be evidence of registration and use of the disputed domain names in bad faith.
The Panel finds that the Respondent’s bad faith is evidenced by several circumstances indicating that the Respondent must have been aware of the Complainant’s trademarks at the time of the registration of the disputed domain names.
The Panel finds it highly unlikely that Respondent was unaware of the Complainant’s trademark when registering the disputed domain names, as the disputed domain names coincide with a registered trademark of the Complainant, together with terms which refer to the same goods as those offered by the Complainant.
Consequently, the Panel concludes that the Respondent was likely aware of and had the Complainant’s trademark in mind when registering the disputed domain names, taking into consideration the Complainant’s evidence of longstanding advertising and marketing of goods and services related to the footwear industry.
The Panel notes that the disputed domain names do not resolve to active websites and as such are passively held by the Respondent. Considering the circumstances of the present case, namely, that the Complainant’s well-known trademark is clearly visible in the disputed domain names, that the Respondent has filed no response to the Complaint, and that prior to the disclosure of the underlying registrant of the disputed domain names by the Registrar, that the Respondent was making use of a privacy service to conceal its identity; the Panel is of the view that the above circumstances are cumulative evidence of the Respondent’s bad faith use of the disputed domain names. Moreover, in the circumstances of the present proceeding, the Panel cannot conceive of any plausible use of the disputed domain names that would not amount to bad faith use for the purposes of the Policy.
For the above-cited reasons, the Panel finds that the disputed domain names were registered and are being used in bad faith; therefore, the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 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 Complainant.
Andrea Dawson
Sole Panelist
Date: February 9, 2016
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