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 Jerry Forrest, Jerry Forrest of Little Rock, Arizona, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with 1API GmbH (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 5, 2018. On February 6, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 8, 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 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 8, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 9, 2018.
The Center appointed Leticia Caminero as the sole panelist in this matter on March 14, 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 "Dr. Martens" International Trading GmbH of Graefelfing, Germany and "Dr. Maertens" Marketing GmbH of Seeshaupt, Germany, companies duly registered and located in Germany. The Complainants are proprietors of DR. MARTENS, a famous international brand representing footwear, clothing and accessories.
The Complainants own numerous DR. MARTENS registered trademarks mainly concerning footwear and clothing products, as well as retail services in the United States of America, the European Union, Australia, Canada, among others. Particularly, the Complainants first registered their trademark in the United States of America on August 25, 1987 and first used it in the late 1950s.
The Complainants hold the domain name which is used in connection with their business activities.
The Respondent registered the disputed domain name on December 25, 2017 which resolves to a website using a "Dr. Martens" logo and offering footwear products. 5. Parties' Contentions A. Complainants
As a first argument, the Complainants declare that the disputed domain name is confusingly similar to the Complaints' registered trademarks DR. MARTENS. The disputed domain name reproduces the trademark in its entirety, apart from the omission of the "." and the addition of "leatherboots". These last terms refer to the material of the products being offered, which is not sufficient to distinguish the disputed domain name from the trademark.
As a second argument, the Complainants claim that the Respondent has no rights or legitimate interests in respect of the disputed domain name. This argument is founded on the lack of connection or affiliation with the Complainants and with the fact that the Respondent has not received any license or consent, express or implied, to use the trademark DR. MARTENS. Likewise, the Complainants quoted a previous case Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. A Domain Privacy/Transure Enterprise Ltd,WIPO Case No. D2009-1253. Furthermore, the Respondent is using the disputed domain name to take advantage of the reputation of the Complainants' trademarks DR. MARTENS and operating a website offering footwear products identified as "Dr. Martens".
As a third argument, the Complainants assert that the disputed domain name was registered and is being used in bad faith. The Complainants claim that the DR. MARTENS registered trademark is a well-known trademark subject to widespread and longstanding advertisement and marketing of footwear and clothing products, as well as retail services. The Respondent's registration and use of the disputed domain name which contains the Complainants' trademark in combination with the terms "leatherboots" suggest its awareness of the trademark's reputation and the intention to attract Internet users for commercial gain. B. Respondent
The Respondent did not reply to the Complainants' contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainants must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(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 Complainants bear the burden of proof on each of these elements. Seeing that the Respondent did not present a response to the Complaint, the Panel may draw appropriate inferences from such a default. However, the Complainants must still support their allegations with adequate evidence to succeed in a UDRP proceeding. A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the trademark DR. MARTENS. The disputed domain name consists of the Complainants' trademark DR. MARTENS in its entirety with the omission of ".", the addition of the terms "leatherboots", followed by the generic Top-Level Domain ("gTLD") ".net". The added terms "leatherboots" are not enough to differentiate from the Complainants' trademark DR. MARTENS. On the contrary, the terms "leatherboots" increase their similarity by including a description of some of the products represented by the registered trademark, namely footwear, clothing, and accessories. It is clear that the main part of the disputed domain name is "drmartens".
The Panel concludes that the requirements of paragraph 4(a)(i) of the Policy have been met by the Complainants. B. Rights or Legitimate Interests
The Panel concludes that there is no evidence that the Respondent before any notice of the present dispute, used, or made demonstrable preparations to use, the disputed domain name (or a name corresponding to the disputed domain name) in connection with a bona fide offering of goods or services. Equally, there is no evidence that the Respondent has been commonly known by the disputed domain name.
The Panel affirms that there is clear evidence of the Respondent's commercial use of the disputed domain name , which resolves to a website offering similar products under the name of "Dr. Martens" as the ones already offered by the Complainants for several decades under the registered trademarks DR. MARTENS. Likewise, the trademarks DR. MARTENS are present all over the website to which the disputed domain name resolves. The intention of the Respondent for the use of the disputed domain name cannot be considered bona fide. Thus, its intention for commercial gain to misleadingly divert consumers or to tarnish the Complainants' trademark could be reasonably inferred.
The Panel finds that the Complainants have established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name . The Respondent has not filed any Response to rebut the Complainants' prima facie case.
The Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been met by the Complainants. C. Registered and Used in Bad Faith
Within the meaning of paragraph 4(b)(iv) of the Policy, based inter alia on the use to which the disputed domain name has been put, the Respondent selected the disputed domain name with the purpose of intentionally attempting to attract, for commercial gain, Internet users to the disputed domain name's website by creating a likelihood of confusion with the Complainants' trademarks as to the source, sponsorship, affiliation, or endorsement of the website.
The Respondent knew about the reputation of the Complainants' trademarks before registering the disputed domain name, given that the Complainants have been using the DR. MARTENS registered trademarks for decades, and these have been regarded as a famous international brand for footwear, clothing and accessories. The Panel also notes that the website at the disputed domain name says "powered by Dr. Martens" when it clearly is not.
The Panel concludes that the requirements of paragraph 4(a)(iii) of the Policy have been met by the Complainants. 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.
Leticia Caminero
Sole Panelist
Date: March 26, 2018
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