The Complainants are “Dr. Martens” International Trading GmbH of Graefelfing, Germany; and “Dr. Maertens” Marketing GmbH of Seeshaupt, Germany (the “Complainant”), represented by Beetz & Partner, Germany.
The Respondent is ZhangXin of Shenyang, Liaoning, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (the “Registrar”). 3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2017. On July 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 4, 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. In response to a notification by the Center regarding the registrant information, the Complainant filed an amendment to the Complaint on July 10, 2017.
On July 6, 2017, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in both Chinese and English of the Complaint, and the proceedings commenced on July 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 2, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 3, 2017.
The Center appointed Douglas Clark as the sole panelist in this matter on August 7, 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 Complainant is an international brand of footwear, clothing and accessories.
The Complainant is the owner of numerous trademark registrations for: Trademark Registration Number Goods Registration Date
DR. MARTENS
European Union Trade Mark 000059147
footwear and clothing
March 3, 1999
DR. MARTENS
Australian Trademark No.500799
footwear and clothing
December 5, 1988
DR. MARTENS
Australian Trademark No.652619
retail services
February 8, 1995
DR. MARTENS
Canadian Trademark No. 420485
footwear and clothing
December 10, 1993
DR. MARTENS
Canadian Trademark No.625884
retail services in the field of footwear and clothing
November 18, 2004
DR. MARTENS
United States of America (“US”) Trademark No. 1,454,323
footwear
August 25, 1987
DR. MARTENS
US Trademark No. 1,798,791
footwear
October 12, 1998
DR. MARTENS
US Trademark No. 2,838,397
services in the field of footwear and clothing
May 4, 2004
DR. MARTENS
International Trademark no. 575311 (also protected in China)
footwear
July 18, 1991
The Respondent registered the disputed domain name on December 19, 2016. The disputed domain name is used by the Respondent to redirect Internet users to a pay-per-click website. 5. Parties’ Contentions A. Complainant
Identical or confusingly similar
The Complainant argues that the disputed domain name is identical or confusingly similar to the registered trademark DR.MARTENS.
No rights or legitimate interests
The Complainant argues that the Respondent has incorporated the protected trademark DR.MARTENS into the disputed domain name without any permission to do so. The Complainant also alleges that the use of the disputed domain name misleads Internet users and causes Internet users to believe the website is connected to the Complainant. Furthermore, the Complainant argues that the Respondent is using the disputed domain name as a platform for selling footwear by using the Complainant’s trademarks without authorization by the Complainant.
Registered and used in bad faith
The Complainant argues that in registering the disputed domain name, the Respondent did so in knowledge of the trademark DR.MARTENS which constitutes bad faith. The Complainant emphasizes the fact that the disputed domain name uses the Complainant’s trademark in its entirety, suggesting knowledge of the Complainant’s rights in the trademarks. Furthermore, the Complainant states that the Respondent is using the disputed domain name to link users to unauthorized sites selling competitors’ and Dr. Martens footwear without authorization. Finally, the Complainant argues that the Respondent is using the disputed domain name for commercial gain and is profiting from the Complainant’s trademark through click-through fees by users of the website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the proceeding
The language of the Registration Agreement is in Chinese. However, paragraph 11(a) of the Rules provides that:
“unless otherwise agreed by the parties, or specified in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The Complainant requested the language of the proceeding be in English on the grounds that the Registrar is an ICANN accredited registrar and usually has knowledge of the English language. Furthermore, the Respondent has registered a domain name using the Latin alphabet and is linking its website with multilingual pages one of which uses the English language.
The Respondent has not responded to the proceeding nor to the request for the language of the proceeding to be in English.
The Center stated that if they do not hear from the Respondent by the July 11, 2017 then they would assume the Respondent has no objection to the Complainant’s request for the language of the proceeding to be in English.
In the case of Z, Inc. v. Zufu aka Huahaotrade,WIPO Case No. D2008-1191, the panel decided that the respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceeding “should, in general be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint.”
Based on the fact that English is used as one of the languages on the website under the disputed domain name and that the Respondent has not responded to the Center’s notification of a language request the Panel determines the language of the proceeding to be English. 6.2 Substantive Issues A. Identical or Confusingly Similar
According to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO overview 3.0”), section 1.11, the generic Top-Level Domain (“gTLD”) is generally ignored for the purpose of determining identity or similarity. Other than the gTLD “.online”, the disputed domain name is identical to the Complainant’s trademark DR.MARTENS.
The first element of paragraph 4(a) of the Policy is therefore satisfied. B. Rights or Legitimate Interests
The Respondent has not responded to assert any rights or legitimate interests. Section 2.1 of WIPO overview 3.0 provides:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving the negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Respondent has not responded to demonstrate its rights or legitimate interests. None of the circumstances in paragraph 4(c) of the Policy, which sets out how a respondent can prove its rights or legitimate interests, are present in this case. The Respondent has failed to rebut the Complainant’s prima facie case.
The second element of paragraph 4(a) of the Policy is therefore satisfied. C. Registered and Used in Bad Faith
The Panel finds that the disputed domain name was registered and used in bad faith.
The Respondent is using the disputed domain name to link users to websites selling competitors’ and Dr. Martens footwear without authorization. Furthermore, the Respondent is using the disputed domain name for commercial gain and is profiting from the Complainant’s trademark through click-through fees by users of the website.
These activities fall within paragraph 4(b)(iv) of the Policy which provides that the respondent is using a domain name in bad faith where:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line 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 web site or location.”
The third element of the paragraph 4(a) of the Policy is therefore satisfied. 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.
Douglas Clark
Sole Panelist
Date: August 25, 2017
Full & Egal Universal Law Academy