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 Domain Administrator, See PrivacyG of Phoenix, Arizona, United States of America (“United States”) / Angie Arendt of Lawrenceville, Georgia, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2017. On December 18, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 18, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 5, 2018, 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 amended Complaint on January 9, 2018.
The Center verified that the Complaint together with the amended 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 10, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 30, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 2, 2018.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on February 23, 2018. 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 in the business of footwear, clothing and accessories. It is the owner, amongst several others (comprising at least the European Union, Australia and Canada), of the following trademark registrations:
- United States Trademark Registration No. 1454323 for the word mark DR. MARTENS registered on August 25, 1987 in class 25, and
- International Trademark Registration No. 575311 for the word mark DR. MARTENS registered on July 18, 1991 in classes 18 and 25.
The disputed domain name was registered on November 29, 2017 and was used in connection with a website operating as an online store depicting what appear to be counterfeit products. Currently it resolves to a parked webpage. 5. Parties’ Contentions A. Complainant
The Complainant asserts to have first sold shoes and boots in the late 1950’s, currently being well-known internationally and particularly renowned for its products.
The Complainant submits that the disputed domain name is confusingly similar to its trademark. The addition of the element “love” in the disputed domain name, under the Complainant’s view, does not prevent the likelihood of confusion in the minds of the relevant Internet users in view of the characterizing elements “drmartens”.
As to the absence of rights or legitimate interests, the Complainant argues that:
i. the Respondent, at the time the Complaint was submitted, had been using the disputed domain name in connection with an online shop selling footwear and accessories with the Complainant’s trademark;
ii. the Complainant believes that the products which were depicted at the webpage that resolved from the disputed domain name were counterfeit ones;
iii. the Respondent was clearly making false representations that he and/or his website have a sponsorship, approval or association with the Complainant, which is not true; and
iv. the Respondent has never been authorized by the Complainant and is not known by the disputed domain name.
The registration and use of the disputed domain name in bad faith, according to the Complainant, arises from the Respondent’s use of the disputed domain name who intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademark and products. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has established rights in the DR MARTENS trademark.
The disputed domain name includes the relevant part of the Complainant’s trademark. The addition of the “love” prefix does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark.
The first element of the Policy has been established. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate a respondent’s rights to or legitimate interests in a domain name. These circumstances are:
(i) before any notice of the dispute, the respondent’s 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In that sense, the Complainant indeed states that the Respondent has never been authorized by the Complainant or otherwise connected with the Complainant.
Also, the absence of any trademarks or trade names registered by the Respondent corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name, that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate with a finding as to the absence of a right or legitimate interest.
The Respondent’s use of the disputed domain name in connection with an online store in which the Complainant’s trademark was reproduced, offering for sale what appear to be counterfeit goods cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert the Complainant’s consumers.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where, by using the disputed domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, both the registration and use of the disputed domain name in bad faith can be found in view of the Respondent’s webpage which operated as an online store in which the Complainant’s trademark was reproduced, offering for sale what appear to be counterfeit goods.
The Respondent’s use of the disputed domain name not only clearly indicates full knowledge of the Complainant’s trademark but also an attempt of misleadingly diverting consumers for its own commercial gain.
Other factors corroborate a finding of bad faith such as the use of privacy protection service; incorrect information in the WhoIs records (non-existing address relating to the Respondent after the privacy shield was removed), non-active email addresses and the absence of a formal response to the Complaint, failing thereby to invoke any circumstance which could demonstrate good faith in the registration or use of the disputed domain name.
For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use 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.
Wilson Pinheiro Jabur
Sole Panelist
Date: March 9, 2018
Full & Egal Universal Law Academy