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 Elliot Elliot of Borken, Germany. 2. The Domain Name and Registrar
The disputed domain name is registered with Hosting Concepts B.V. d/b/a Openprovider (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 1, 2018. On February 1, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 6, 2018, 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 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 1, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 5, 2018.
The Center appointed Tobias Malte Müller as the sole panelist in this matter on March 12, 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 Complainants are the registered owners of numerous trademark registrations for DR. MARTENS, in particular European Union Trademark Number 000059147 registered on March 3, 1999, amongst others for goods in class 25 and services in class 35, amongst others.
The disputed domain name was registered by the Respondent on December 8, 2017, which currently resolves to an inactive web page. It results from the Complainants' documented allegations that the website to which the disputed domain name previously resolved contained an online shop selling footwear and accessories bearing the Complainants' trademarks. 5. Parties' Contentions A. Complainants
The Complainants allege that "Dr. Martens" is a famous international brand for footwear, clothing and accessories, particularly renowned for its distinctive shoes and boots, first sold in the late 1950's. DR. MARTENS footwear, clothing and accessories are available for sale at retailers throughout the world, as well as online at the DR. MARTENS website available under "". According to the Complainants' undisputed allegations DR. MARTENS has worldwide consumer recognition.
The Complainants contend that the disputed domain name is confusingly similar to their trademarks. In particular, the trademark DR. MARTENS is wholly incorporated in the disputed domain name; the mere addition of the descriptive element "ireland" (representing a sales proposition that the products on offer could derive or be bought from that country) does not in any way prevent likelihood of confusion in the minds of the relevant Internet users.
It further results from the Complainants undisputed contentions that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, the Respondent has no connection or affiliation with the Complainants and has not received any license or consent to use the Complainants' mark DR. MARTENS. According to the Complainants' non-contested allegations, the Respondent uses the disputed domain name for an online shop selling footwear and accessories with DR. MARTENS products. The Complainants further believes that the disputed domain name is being used to sell counterfeit products. The Complainants contend that the Respondent is clearly making of false representations that it and/or its website have a sponsorship, approval or association with the original DR. MARTENS trademark owners, licensees, customers which is not the case. The Internet user seeing the disputed domain name will believe or be likely to believe that the disputed domain name is registered to, operated or authorized by, or otherwise connected with the Complainants. Thus, the Respondent is clearly making illegitimate commercial and unfair use of the disputed domain name for commercial gain to misleadingly divert Internet users and to tarnish the Complainants' trademarks.
Furthermore, the Complainants contend that the Respondent registered and uses the disputed domain name in bad faith. According to the Complainants' allegations, the Respondent must have had knowledge of the Complainants trademarks at the time of the disputed domain name's registration, since DR. MARTENS is widely well known. The Complainants further contend that the Respondent also intends to mislead consumers on a commercial relationship between the Respondent and the Complainant. Finally, so the Complainants, by using the disputed domain name, the Respondent intentionally attempts to attract Internet users to its website, by creating a likelihood of confusion with the Complainants' trademark as to the source, sponsorship, affiliation, and endorsement of its website or of the products or services of the Respondent's website. In fact, the disputed domain leads to a website which advertises and sells footwear under the mark DR. MARTENS without being authorized or approved by the trademark owners. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable".
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel is satisfied that the registrant of record for the disputed domain name is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, the Complainants must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainants have rights.
It results from the evidence provided that the Complainants are the registered owners of various trademark registrations for the verbal elements "Dr. Martens". Reference is made in particular to European Union word mark no. 000059147 DR. MARTENS registered on March 3, 1999, amongst others for goods in class 25 and services in class 35. This trademark predates the creation date of the disputed domain name which is December 8, 2017.
Many UDRP panels have found that a disputed domain name is confusingly similar to a complainant's trademark where the disputed domain name incorporates the complainant's trademark in its entirety (e.g., F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt,WIPO Case No. D2015-1305; Compagnie Générale des Etablissements Michelin v. Christian Viola,WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack,WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812; Rhino Entertainment Company v. DomainS,WIPO Case No. D2006-0968; SurePayroll, Inc. v. Texas International Property Associates,WIPO Case No. D2007-0464). This Panel shares this view and notes that the Complainant's registered trademark DR. MARTENS is fully included in the disputed domain name. In the case at hand the Complainants' registered trademark can be considered as being fully included in the disputed domain name. The minor variation between the trademark – containing a dot "." between the two word elements "dr" and "martens" – and the disputed domain name – in which the two word elements are written one after the other without punctuations marks – cannot call into question the above findings.
Furthermore and according to UDRP panel consensus, the applicable generic Top-Level Domain ("gTLD") suffix ".com" in the disputed domain name is to be disregarded under the confusing similarity/identity test.
Finally, it is the view of this Panel that the addition of the geographical term "ireland" is not sufficient as to exclude the confusing similarity between the disputed domain name and the Complainants' trademark. In numerous UDRP decisions, panels have found that the addition of geographical terms to a distinctive trademark does not diminish the distinctiveness of the trademark (see, F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt,WIPO Case No. D2015-1305; AT&T Corp. v. WorldclassM,WIPO Case No. D2000-0553, and Sanofi-Aventis v. Andrey Volkovich,WIPO Case No. D2010-1230; see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), at section 1.8). In this particular case, this addition of the term "ireland" rather leads to confusing the Internet users who will think that the website triggered through the disputed domain name may represent the Irish branch of the Complainants' business.
Hence, this Panel finds that the disputed domain name is confusingly similar to the Complainants trademark DR. MARTENS pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
With respect to this requirement, a Complainant is generally required to make a prima facie case that a respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name (WIPO Overview 3.0, at section 2.1).
According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a respondent's rights or legitimate interests in a domain name:
(i) the respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute;
(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 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 complainant's marks.
Considering the facts at hand, the Panel finds that the Complainants have made a prima facie case and the Respondent, which has not responded to the merits of the Complaint, has failed to demonstrate any rights or legitimate interests in the disputed domain name. The mere registration of a domain name does not give rise to a "legitimate interest" (see, F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt,WIPO Case No. D2015-1305; Sanofi-Aventis v. Domain Admin/ Andrey Volkovich,WIPO Case No. D2010-2009).
According to the Complaint, which has thus remained unchallenged, the Complainants have not authorized the Respondent's use of the trademark DR. MARTENS, e.g. by registering the disputed domain name comprising said mark entirely.
The disputed domain name resolved to a website in which footwear and accessories bearing the Complainants' trademarks were sold. Such use of the disputed domain name can clearly not be qualified as bona fide offering of goods or services since it rather has a high propensity to mislead and divert consumers.
Furthermore, the Panel notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain name.
In view of the above, it also follows that the disputed domain name is not being used in connection with a legitimate, noncommercial or fair use. In particular, as established in WIPO Overview 3.0, sections 2.5 and 2.5.1 "In assessing a fair use a respondent's use of a domain name will not be considered "fair" if it falsely suggests affiliation with the trademark owner [...]. Generally speaking, UDRP panels have found that domain names identical to a complainant's trademark carry a high risk of implied affiliation. Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. [...] certain geographic terms (e.g., , or ), or terms with an "inherent Internet connotation" (e.g., , , or ) are seen as tending to suggest sponsorship or endorsement by the trademark owner".
Indeed, in the light of the fact that the disputed domain name does not only include the Complainants' trademark in its entirety but it also a geographical term, the Panel finds that said mark could not legitimately be adopted for purposes other than creating the impression of an association with the Complainant.
The Panel therefore finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, "in particular but without limitation", be evidence of the disputed domain name's registration and use in bad faith. One of these circumstances is that the respondent by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website 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 its website or location or of a product or service on its website or location (paragraph 4(b)(iv) of the Policy).
It is the view of this Panel that these circumstances are met in the case at hand:
The Complainants' trademarks have existed for a long time and are widely known (see for instance, Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. A Domain Privacy/Transure Enterprise Ltd,WIPO Case No. D2009-1253). Therefore, it is the view of this Panel that the Respondent knew or should have known that the disputed domain name included the Complainants' DR. MARTENS trademarks when it registered the disputed domain name. Registration of the disputed domain name in awareness of the reputed DR. MARTENS mark and in the absence of rights or legitimate interests in this case amounts to registration in bad faith (see e.g., KOC Holding A.S. v. VistaPrint Technologies Ltd, WIPO Case No. D2015-1910; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812 and The Chancellor, Masters and Scholars of the University of Oxford v. Almutasem Alshaikhissa,WIPO Case No. D2014-2100; Deutsche Lufthansa AG v. Mustermann Max, Muster AG, WIPO Case No. D2015-1320).
According to the Complainants' further non-contested allegations, the disputed domain name resolved to a website on which products bearing DR. MARTENS trademarks were advertised and sold, the Respondent therefore benefitted from the confusion arising from the similarities in the disputed domain name and the products offered by the Complainant and purported to be offered by the Respondent. Therefore, it is highly likely that the Respondent received revenue from Internet users who came across the Respondent's website by means of confusion with the DR. MARTENS trademark (see, F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt,WIPO Case No. D2015-1305; The Chancellor, Masters and Scholars of the University of Oxford v. Almutasem Alshaikhissa,WIPO Case No. D2014-2100; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812). In view of the distinctive quality possessed by the well-known DR. MARTENS trademark, the Respondent's registration of a domain name containing that mark combined with a geographical term is a clear indication of the Respondent's bad faith (see, F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt,WIPO Case No. D2015-1305; Hoffmann-La Roche Inc. v. home, Konstantin Kovalevski,WIPO Case No. D2012-2243).
In the light of the above the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to 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 disputed domain name be transferred to the Complainants.
Tobias Malte Müller
Sole Panelist
Date: March 26, 2018
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