The Complainant is “Dr. Martens” International Trading GmbH of Graefelfing, Germany, “Dr. Maertens” Marketing GmbH of Seeshaupt, Germany, represented by Beetz & Partner, Germany.
The Respondent is Holm Khalid of Henstedt-Ulzburg, 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 July 10, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 11, 2018, 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 July 16, 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 amendment to the Complaint/amended Complaint on July 16, 2018.
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 of the Complaint, and the proceedings commenced on July 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 7, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 8, 2018.
The Center appointed Kaya Köklü as the sole panelist in this matter on August 20, 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 composed by two German companies which are offering and selling footwear, clothing and accessories. They particularly gain international recognition for their shoes and boots, which were first sold in the late 1950’s.
Since many years, both German companies are jointly registered owners of many word and figurative DR. MARTENS trademarks, particularly covering protection for shoes as part of international class 25, i.a. Australian trademark DR. MARTENS, registered on December 5, 1988 with trademark registration number 500799.
As the DR. MARTENS trademarks are jointly registered in the name of both companies, the Panel finds it reasonable, for the purpose of this decision, to refer to both companies as “the Complainant”, whenever appropriate.
The Complainant also owns and operates various domain names which incorporate the trademark DR. MARTENS, such as .
The Complainant’s DR. MARTENS trademark was already subject to previous comparable UDRP cases, such as “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Wallin Fransson,WIPO Case No. D2018-0214, and “Dr. Martens” International Trading GmbH / “Dr. Maertens” Marketing GmbH v. Wallin Fransson,WIPO Case No. D2018-0807, which were both decided in favor of the Complainant.
The Respondent is an individual from Henstedt-Ulzburg in Germany.
The disputed domain name was registered on December 2, 2017.
The disputed domain name does currently not resolve to an active website. However, the screenshots, as provided by the Complainant (cf. Annex 6), show that the disputed domain name until recently resolved to an online shop in the Turkish language offering a large range of shoes and bags by prominently using the Complainant’s word and figurative trademark DR. MARTENS. 5. Parties’ Contentions A. Complainant
The Complainant requests the transfer of the disputed domain name.
The Complainant is of the opinion that the disputed domain name is confusingly similar to its DR. MARTENS trademark.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It is rather argued that the disputed domain name falsely suggests that there is some official or authorized link with the Complainant.
Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant particularly argues that the Respondent must have been well aware of the Complainant’s DR. MARTENS trademark, when registering the disputed domain name, particularly as the Respondent prominently uses the Complainant’s DR. MARTENS word and figurative mark on the website linked to the disputed domain name without any disclosure of the missing relationship between the Complainant and the Respondent. Furthermore, the Complainant believes that the offered products are counterfeits. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has 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.
Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complaint’s contentions. Stanworth Development Limited v. E Net Marketing Ltd.,WIPO Case No. D2007-1228.
However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Furthermore, the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the WIPO Overview 3.0. A. Identical or Confusingly Similar
The Panel finds that the Complainant has registered trademark rights in the mark DR. MARTENS by virtue of various longstanding trademark registrations (cf. Annex 3).
The Panel further finds that the disputed domain name is confusingly similar to the Complainant’s registered DR. MARTENS trademark, as it fully incorporates the Complainant’s trademark. As stated at section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the additions of other terms would not prevent a finding of confusing similarity. The mere addition of the country name “Turkey”, does in view of the Panel not serve to prevent a finding of confusing similarity between the disputed domain name and the Complainant’s DR. MARTENS trademark.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel further finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
While the burden of proof on this element remains with the complainant, previous UDRP panels have recognized that this would result in the often impossible task of proving a negative, in particular as the evidence in this regard is often primarily within the knowledge of the respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production of evidence shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. See, Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455.
The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any relevant evidence to demonstrate rights or legitimate interests in the disputed domain name according to the Policy, paragraphs 4(a)(ii) and 4(c).
In its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant’s trademark DR. MARTENS in a confusingly similar way within the disputed domain name.
There is also no indication in the current record that the Respondent is commonly known by the disputed domain name. Furthermore, the Respondent has failed to demonstrate any of the other non-exclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or other evidence of rights or legitimate interests in the disputed domain name.
The Panel particularly notes that the website which until recently was linked to the disputed domain name did not adequately disclose the relationship, or lack thereof, between the Respondent and the Complainant, thus created the false impression that the Respondent might be an official and authorized agent for the Complainant’s products and services in Turkey. In view of the Panel, this takes the Respondent out of any conceivable safe harbour for purposes of the second element.
As a conclusion, the Panel finds that the Complainant has also satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel is further convinced that the Respondent has registered and is using the disputed domain name in bad faith.
The Panel notes the reputation and wide recognition of the Complainant’s trademark DR. MARTENS particularly for shoes and boots, including in Turkey. The Panel is convinced that the Respondent must have had this recognized trademark in mind when registering the disputed domain name.
It even appears that the Respondent has registered the disputed domain name solely for the purpose of creating an association with the Complainant. After having reviewed the Complainant’s screenshot of the website linked to the disputed domain name (cf. Annex 6), the Panel is convinced that the Respondent has intentionally registered the disputed domain name in order to generate traffic to its own website. The Panel notes that the Respondent has not published any visible disclaimer on the website linked to the disputed domain name to explain that there is no existing relationship between the Respondent and the Complainant. Quite the opposite, the design of the website linked to the disputed domain name and the prominent use of the Complainant’s DR. MARTENS trademark is sufficient evidence in view of the Panel that the Respondent intentionally tries to attract, for illegitimate gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s DR. MARTENS trademark as to the source, sponsorship, affiliation or endorsement of its website. In the Panel’s view, the Respondent is misrepresenting itself as the trademark owner without being entitled to do so, independent from the question whether the offered products by the Respondent are counterfeits or not.
Furthermore, the Panel finds that the Respondent’s failure to respond to the Complaint also supports the conclusion that it has registered and is using the disputed domain name in bad faith. The Panel believes that, if the Respondent did in fact have legitimate purposes in registering and using the disputed domain name, it would have probably responded.
The fact that the disputed domain name is currently inactive does not prevent a finding of bad faith.
The Panel therefore concludes that the disputed domain name was registered and is used in bad faith and that the Complainant has also satisfied the third element of the Policy, namely, 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 Complainant.
Kaya Köklü
Sole Panelist
Date: August 30, 2018
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