The Complainants are “Dr. Martens” International Trading GmbH of Graefelfing, Germany and “Dr. Maertens” Marketing GmbH of Seeshaupt, Germany, represented by Beetz & Partner, Germany.
The Respondent is G, Inc.1 of Sacramento, California, United States of America (“US”). 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2017. On February 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 9, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 8, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 9, 2017.
The Center appointed David Taylor as the sole panelist in this matter on March 27, 2017. 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 the owners of many trade mark registrations in the terms DR. MARTENS and DOC MARTENS, used in connection with footwear and clothing, for instance, US Trade mark No. 2397734, DOC MARTENS, registered on October 24, 2000 (covering class 25) and European Union Trade mark No. 150144, DOC MARTENS, registered on February 24, 1999 (covering class 25).
The Domain Name was registered on June 2, 2016. At the time of filing of the Complaint, it was not resolving to an active website. 5. Parties’ Contentions A. Complainants
The Complainants contend that their DR. MARTENS and DOC MARTENS trade marks are famous international brands for footwear, clothing and accessories and that they are particularly renowned for their distinctive shoes and boots, which have been sold since the late 1950s. The Complainants further submit that their footwear and products are available for sale at retailers throughout the world as well as online at their website “”.
The Complainants contend that the Domain Name is identical to the Complainants’ DOC MARTENS trade mark.
The Complainants further contend that the Respondent has no rights or legitimate interests in the Domain Name. The Complainants state that the Respondent has never been authorized by the Complainants to make any use of their trade mark. The Complainants further state that the Domain Name is a parked website for links to unauthorised websites selling not only the Complainants’ footwear products but also third parties’ products that are in direct competition with the Complainants and that by choosing and using the Domain Name, the Respondent is likely to mislead and deceive consumers into believing that the website is sponsored, affiliated to or approved by the Complainants or licensee, which is not the case. The Complainants state that the Respondent is making illegitimate commercial use of the Domain Name for commercial gain and to tarnish the Complainants’ trade marks.
The Complainants also contend that the Domain Name was registered and is being used in bad faith. The Complainants state that the Respondent must have had knowledge of the Complainants’ rights to the DOC MARTENS trade marks at the time of registration of the Domain Name as they are well-known. The Complainants contend that the Respondent’s awareness of the Complainants’ trade mark rights suggests opportunistic and bad faith registration. The Complainants assert that the by selecting the Domain Name, the Respondent intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainants’ trade marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Complainants state that it is more than likely that the Respondent is profiting from the goodwill associated with the Complainants’ trade mark by accruing click-through fees. B. Respondent
The Respondent did not reply to the Complainants' contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that to obtain the transfer of the Domain Name, the Complainants must prove the following three elements:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainants have rights;
(ii) the 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.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. Furthermore, paragraphs 10(b) and 10(d) of the Rules provide that the Panel shall ensure that the parties are treated with equality and shall determine the admissibility, relevance, materiality, and weight of the evidence.
In addition, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it considers appropriate.
The Panel notes that the Respondent did not reply to the Complainants' contentions. The Respondent’s failure to respond, however, does not automatically result in a decision in favour of the Complainants, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules. See paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
Taking the aforementioned provisions into consideration, the Panel finds as follows: A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Panel to consider first whether the Complainants have established relevant trade mark rights. The Complainants have provided evidence that they have registered trade mark rights in DOC MARTENS in connection with footwear, clothing and accessories. The Panel is therefore satisfied that the Complainants have established relevant trade mark rights.
The Panel is also required under paragraph 4(a)(i) of the Policy to examine whether the Domain Name is identical or confusingly similar to the Complainants' trade mark. The Domain Name incorporates the Complainants' DOC MARTENS trade mark in its entirety (except for the space between “Doc” and “Martens”) under the “.xyz” generic Top-Level Domain (“gTLD”). Prior panels deciding under the Policy have held that “when a domain name wholly incorporates a complainant’s registered mark that is sufficient to establish identity or confusing similarity for purposes of the Policy”. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525.
The gTLD “.xyz” is generally disregarded under the identity or confusing similarity test as it is a functional element. See paragraph 1.2 of the WIPO Overview 2.0.
The Panel therefore finds that the Domain Name is confusingly similar to the Complainants' trade mark.
The Complainants have therefore satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainants to demonstrate that the Respondent has no rights or legitimate interests in the Domain Name. Paragraph 4(c) of the Policy sets out a list of non-exhaustive circumstances that may suggest that a respondent has rights or legitimate interests in a domain name, including but not limited to:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”
A complainant is required to make a prima facie case that the respondent does not have rights or legitimate interests in the disputed domain name.
Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name in question. If, however, the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See paragraph 2.1 of the WIPO Overview 2.0.
The Complainants have asserted that the Respondent has not been authorised by the Complainants to make any use of their DOC MARTENS trade marks. There is no evidence either that the Respondent is commonly known by the Domain Name, in accordance with paragraph 4(c)(ii) of the Policy.
The Panel further finds that the Respondent is neither making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Name as the Domain Name is not resolving to an active website. The evidence put forward by the Complainants consists of a screen shot of the website associated with the Domain Name that displays the message “This website is not available” (in German) and print-outs of the results obtained in a search engine by entering the Domain Name (plus screen shots of the websites listed in the search). Therefore, there is no actual evidence on record that the Domain Name was resolving to a website containing sponsored links, as suggested by the Complainants. The Panel nevertheless finds that, taking into account the overall circumstances of this case, the Respondent’s lack of use of the Domain Name is a strong indication of its lack of rights or legitimate interests in the Domain Name.
The Complainants have made a prima facie case of the Respondent’s lack of rights or legitimate interests in the Domain Name. As a result of its default, the Respondent has failed to rebut such a showing.
The Complainants have therefore satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainants to demonstrate that the Domain Name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that may indicate bad faith, including but not limited to:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Complainants' registered trade mark rights in DOC MARTENS in connection with footwear and related goods significantly predate the registration date of the Domain Name by at least 15 years. The Panel is therefore of the view that the Respondent registered the Domain Name in full knowledge of the Complainants' trade mark rights and, on balance, with the intention of taking advantage of such rights. The Panel therefore finds that the Respondent registered the Domain Name in bad faith.
The Domain Name was not resolving to an active website at the time of filing. However, the consensus view amongst WIPO panellists is that “the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trade mark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trade mark, no response to the complaint having been filed, and the registrant’s concealment of its identity”. See paragraph 3.2 of the WIPO Overview 2.0. In this case, the Panel is convinced that the overall circumstances of this case strongly suggest that the Respondent’s non-use of the Domain Name is in bad faith. Such circumstances include the strength and renown of the Complainants’ DOC MARTENS trade mark, the Respondent’s failure to take part in the present proceedings and the use of false details to conceal the Respondent’s identity. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Panel therefore finds that the Domain Name was registered and is being used in bad faith.
The Complainants have therefore satisfied paragraph 4(a)(iii) of the Policy. 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 Domain Name, , be transferred to the Complainants.
David Taylor
Sole Panelist
Date: April 10, 2017
1 The Domain Name was registered by the registrant using false details to conceal the Respondent’s identity. In this respect, the Panel notes that the registrant of the Domain Name has used a name almost identical to that of the registrar GoDaddy Inc. which has its headquarters in Scottsdale, Arizona, US.
Full & Egal Universal Law Academy