Complainants are “Dr. Martens” International Trading GmbH, Germany, and “Dr. Maertens” Marketing GmbH, Germany, represented by Mayr Kotsch, Germany.
Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”) / Stephan Naumann, Germany.1 2. The Domain Name and Registrar
The disputed domain name The Complaint involving four domain names was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 17, 2020. On February 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name and other three domain names. On February 18, 2020, 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 Complainants on February 25, 2020, providing the registrants and contact information disclosed by the Registrar, and inviting Complainants to submit an amendment to the Complaint or to file a separate Complaint for each of the domain names. Complainants filed an amended Complaint on February 25, 2020, which removed the other three domain names from the current proceeding. 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 Respondent of the Complaint, and the proceedings commenced on March 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 26, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 2, 2020. The Center appointed Stephanie G. Hartung as the sole panelist in this matter on April 7, 2020. 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 Complainants are both companies organized under the laws of Germany which are active in the footwear, clothing and accessories business. Complainants have evidenced to jointly own registered rights in numerous trademarks worldwide relating to the company name and brand “Dr. Martens”, including the following with protection, inter alia, for the territory of Germany: - Word mark DR. MARTENS, European Union Intellectual Property Office (EUIPO), registration number: 000059147, registration date: March 3, 1999, status: active; - Word mark DOC MARTENS, EUIPO, registration number: 000150144, registration date: February 24, 1999, status: active. Moreover, Complainants have demonstrated to own the domain name Respondent, according to the WhoIs information for the disputed domain name, is a resident of Germany who registered the disputed domain name on July 26, 2019. By the time of the rendering of this decision, the disputed domain name does not resolve to any active content on the Internet. Complainants, however, have evidence that, at some point before the filing of the Complaint, the disputed domain name redirected to a website at “www.botasdrmartens” which showed, inter alia, Complainants’ official DR. MARTENS logo and offered a variety of footwear bearing the DR. MARTENS trademark for online sale at discounted prices, including the original model of “Dr. Martens” footwear. Complainants request that the disputed domain name be transferred to Complainants. 5. Parties’ Contentions A. Complainants Complainants contend that they first sold “Dr. Martens” footwear in the late 1950’s, and that their DR. MARTENS trademark nowadays is a famous international brand particularly renowned for its distinctive shoes and boots. Complainants submit that the disputed domain name is confusingly similar to Complainants’ DR. MARTENS trademark as it is a combination of the descriptive element “botas” being the Spanish equivalent for “boots” as well as the characterizing name “drmartens”. Moreover, Complainants assert that Respondent has no rights or legitimate interests in respect of the disputed domain name, since (1) Respondent has never been authorized to sell original “Dr. Martens” footwear or to show Complainants’ DR. MARTENS logo, (2) Respondent is likely to mislead and deceive consumers into believing that he has a sponsorship, affiliation or approval with Complainants which is not the case, and (3) Respondent is linking the disputed domain name with offers to sell footwear of some of Complainants’ direct competitors on the footwear market. Finally, Complainants argue that Respondent has registered and is using the disputed domain name in bad faith, since (1) Respondent must have had knowledge of Complainants’ rights in the DR. MARTENS trademark when registering the disputed domain name, (2) Respondent has been linking his website under the disputed domain name with offers to sell competing footwear products while by the same time offering “Dr. Martens” footwear without any authorization by Complainants to do so, and (3) Respondent provided contact information for the disputed domain name some of which apparently do not exist. B. Respondent Respondent did not reply to Complainants’ contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, Complainants carry the burden of proving: (i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights; and (ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) That the disputed domain name has been registered and is being used in bad faith. Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainants, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from Respondent’s failure to submit a Response as it considers appropriate. As a procedural comment, Complainants jointly enjoy rights in a variety of DR. MARTENS trademarks and, therefore, have a specific common grievance against Respondent. Therefore, it is appropriate in the case at hand and in line with the UDRP panels’ majority view to accept this Complaint filed by multiple complainants against a single respondent (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1). Having said so, the Panel comes to the following decision: A. Identical or Confusingly Similar The Panel concludes that the disputed domain name The disputed domain name incorporates Complainants’ DR. MARTENS trademark almost in its entirety, simply omitting the period sign behind “dr”. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among UDRP panels (see WIPO Overview 3.0, section 1.8), that the addition of another term (whether, e.g., descriptive or meaningless) to a trademark in a domain name would not prevent a finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the word “botas” (which is the Spanish term for “boots” and, thus, even refers to Complainants’ core business) does not dispel the confusing similarity arising from the incorporation of Complainants’ DR. MARTENS trademark in the disputed domain name. Therefore, Complainants have established the first element under the Policy set forth by paragraph 4(a)(i). B. Rights or Legitimate Interests The Panel is further convinced on the basis of Complainants’ undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain. Respondent has neither been granted a license nor has he been otherwise authorized by Complainants to use their DR. MARTENS trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the name “Dr. Martens” on his own. Finally, Respondent apparently has not used the disputed domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair purpose. On the contrary, Respondent, at least at some point before the filing of the Complaint, redirected the disputed domain name to a website at “www.botasdrmartens.com” which offered a variety of footwear bearing the DR. MARTENS trademark for online sale at the discounted prices, including the original model of “Dr. Martens” footwear. While UDRP panels generally recognize that resellers using a domain name containing the complainant’s trademark to undertake sales related to the complainant’s goods or services may be making a bona fide offering of goods or services and, thus, have a legitimate interest in such domain name, the site under the disputed domain name then must, e.g., (a) actually be offering the goods or services at issue, (b) use the website to sell only the trademarked goods or services and accurately, and (c) prominently disclose the registrant’s relationship with the trademark holder (so-called “OKI data test”, see WIPO Overview 3.0, section 2.8). Though Complainants allege that Respondent at some point in the past has been linking his website under the disputed domain name with offers to sell competing footwear products, such allegation, however, is not sufficiently supported by the case file. Still, the screen shot of the website at the disputed domain name provided by Complainants does not appear to show that the website accurately and prominently discloses Respondent’s relationship with Complainants. Therefore, Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services. Accordingly, Complainants have established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Given that Respondent has defaulted, Respondent has not met that burden. Therefore, the Panel finds that Complainants have also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy. C. Registered and Used in Bad Faith The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith. In the case at hand, it is undisputed between the Parties that Complainants’ DR. MARTENS trademark enjoys considerable recognition throughout the world, including in Europe and Germany where Respondent apparently is domiciled. The redirection of the disputed domain name, which is confusingly similar to Complainants’ DR. MARTENS trademark, to a website at “www.botasdrmartens.com” which at least at some point showed, inter alia, Complainants’ official DR. MARTENS logo and offered a variety of footwear bearing the DR. MARTENS trademark for online sale at discounted prices without a disclaimer, including the original model of “Dr. Martens” footwear, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to his own website by creating a likelihood of confusing with Complainants’ DR. MARTENS trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Such circumstances are evidence of registration and making use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. In this context, the Panel has also noted that Respondent not only made use of a WhoIs Privacy Service in order to conceal his true identity, but also provided fault or incomplete contact information in the WhoIs register for the disputed domain name since, according to the email correspondence between the Center and the postal courier DHL, the Written Notice on the Notification of Complaint dated March 6, 2020, could not be delivered. These facts at least throw a light on Respondent’s behavior which supports the Panel’s bad faith finding. Therefore, the Panel concludes that Complainants have also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii). 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 Stephanie G. Hartung 1 It is evident from the case file that Domain Administrator, See PrivacyGuardian.org, United States, is a privacy protection service and that Stephan Naumann, Germany, is the underlying registrant of the disputed domain name. Therefore, unless otherwise indicated, the term “Respondent” is used by the Panel in the case at hand to refer to the latter underlying registrant only.
Sole Panelist
Date: April 20, 2020
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