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 Wallin Fransson of Vilsbiburg, 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 April 11, 2018. On April 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 16, 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 paragraphs 2 and 4 of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 18, 2018. In accordance with paragraph 5 of the Rules, the due date for Response was May 8, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 9, 2018.
The Center appointed Brigitte Joppich as the sole panelist in this matter on May 17, 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 paragraph 7 of the Rules. 4. Factual Background
The Complainants are the registered owners of numerous trademark registrations worldwide for DR. MARTENS (the "DR. MARTENS Marks"), in particular European Union Trademark Number 000059147 registered on March 3, 1999, amongst others for goods in class 25 and services in class 35.
The Respondent registered the disputed domain name on December 4, 2017. The website at the disputed domain name currently resolves to an inactive web page and, according to the evidence on the case file, previously resolved to an online shop selling footwear and accessories bearing the Complainants' trademarks.
There is an earlier case decided under the UDRP involving the Parties of the present dispute and relating to the domain name ("Dr. Martens" International Trading GmbH and "Dr. Maertens" Marketing GmbH v. Wallin Fransson,WIPO Case No. D2018-0214). 5. Parties' Contentions A. Complainant
With regard to the three elements specified in paragraph 4(a) of the Policy, the Complainants contend that each of the three conditions is given in the present case.
(i) DR. MARTENS is supposed to be a well-known worldwide brand for footwear, clothing and accessories, and the disputed domain name to be confusingly similar to the DR. MARTENS Marks. The additional element "romania" (a country name) is merely descriptive and does not avoid confusing similarly between the trademark and the disputed domain name.
(ii) The Respondent allegedly has no rights or legitimate interests in respect of the disputed domain name as the Respondent is neither authorized, licensed or sponsored by nor affiliated with the Complainants. There is no legitimate or fair use of the disputed domain name as the Respondent is believed to use an unauthorized site to sell counterfeit goods, infringing the Complainants' trademarks.
(iii) The Complainants allege that the disputed domain name was registered and is being used in bad faith. When registering the disputed domain name, the Respondent must have been aware of the Complainants' well-known DR. MARTENS Marks because of the inclusion of the entire trademark in the disputed domain name and of the choice of products offered for sale on the website at the disputed domain name. Moreover, by using the disputed 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' trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent's website and the products on the Respondent's website. B. Respondent
The Respondent did not reply to the Complainants' contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed domain name is identical or confusingly similar to the Complainants' trademark; 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. A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the DR. MARTENS Marks as it contains their distinctive element, the name DR. MARTENS, and the geographical term "romania", which merely indicates a location.
The Panel finds that the Complainants satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among UDRP panels that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, once a prima facie case is made, the burden of coming forward with evidence of the respondent's rights or legitimate interests in the disputed domain name will then shift to the respondent.
The Complainants have substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainants have made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and that the burden of production has been shifted to the Respondent.
The Respondent did not deny these assertions in any way and therefore failed to come forward with any allegations or evidence demonstrating any rights or legitimate interests in the disputed domain name.
Based on the evidence before the Panel, the Panel cannot find any rights or legitimate interests of the Respondent either.
The Respondent is using the disputed domain name for a website offering products at least similar to the Complainants' products and using the Complainants' trademarks. There is no persuasive evidence on the record supporting that the goods offered at the disputed domain name are counterfeit as suspected by the Complainants. But even if such goods were genuine, the use of the disputed domain name would not be bona fide under the Policy. The Panel acknowledges that a reseller can make a bona fide offering of goods and services and thus have rights or legitimate interests in a domain name if the use fits certain requirements, with regard to the actual offering of goods, the use of the site to sell only the trademarked goods, and the site is accurately and prominently disclosing the registrant's relationship with the trademark holder (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; section 2.8.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0")). According to the evidence on the record, however, the website at the disputed domain name does not visibly disclose the registrant's relationship with the trademark holder, therefore does not meet the Oki Data criteria, and cannot convey any rights or legitimate interests on the Respondent's use of the disputed domain name.
Accordingly, the Panel finds that the Complainants have proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy. C. Registered and Used in Bad Faith
The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainants and their rights in the DR. MARTENS Marks and thus in bad faith as the Respondent used the disputed domain name in connection with a website featuring the Complainants' brand.
As to bad faith use, by fully incorporating the DR. MARTENS Marks into the disputed domain name and by using such domain name for a website advertising the Complainants' brand, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainants' website to its own for commercial gain as set out under paragraph 4(b)(iv) of the Policy.
Moreover, considering the facts of the UDRP case related to the domain name ("Dr. Martens" International Trading GmbH and "Dr. Maertens" Marketing GmbH v. Wallin Fransson,WIPO Case No. D2018-0214), the Respondent has engaged in pattern of conduct by registering at least two domain names closely corresponding to the Complainants' trademarks and redirecting them to websites advertising the Complainants' brand (see section 3.1.2 of the WIPO Overview 3.0: "UDRP panels have held that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration. This may include a scenario where a respondent, on separate occasions, has registered trademark-abusive domain names, even where directed at the same brand owner."). Paragraph 4(b)(ii) of the Policy provides that this circumstance is also evidence of use of a domain name in bad faith.
The fact that the disputed domain name currently resolves to an inactive web page does not change the Panel's findings.
Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainants satisfied the requirements of 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.
Brigitte Joppich
Sole Panelist
Date: May 26, 2018
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