The Complainant is “Dr. Martens” International Trading GmbH, Germany, and “Dr. Maertens” Marketing GmbH, Germany, represented by Mayr Kotsch, Germany.
The Respondent is Bud Thomas, United States of America. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 24, 2020. On February 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 25, 2020, 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 March 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 23, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 27, 2020. The Center appointed Tuukka Airaksinen as the sole panelist in this matter on April 3, 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 The Complainant is active in the footwear, clothing and accessories business. The Complainant is the owner of the trademark DR. MARTENS. The Complainant’s trademark has been registered in several countries and regions, including the European Union trademark number 000059147 with a filing date of April 1, 1996, and a registration date of March 3, 1999. The disputed domain name was registered on September 18, 2018. The disputed domain name resolves to a webpage offering for sale footwear bearing the trademark DR. MARTENS at discounted prices. 5. Parties’ Contentions A. Complainant The disputed domain name is similar to the Complainant’s trademark. The Complainant’s trademark is famous for footwear and clothing. The disputed domain name is a combination of the Complainant’s trademark and the term “oslo”, being the capital of Norway. The Respondent is not affiliated with the Complainant and the Complainant has not given the Respondent permission, authorization or license to use the Complainant’s trademark in any manner. The Respondent is not commonly known by the disputed domain name, and the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name. The Respondent must have been aware of the Complainant’s well-known trademark when registering the disputed domain name because of the Complainant’s numerous trademark registrations. The Complainant argues that it is more than likely that the Respondent is profiting from the goodwill associated with the Complainant’s trademarks. By choosing the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other online locations, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship or affiliation or endorsement of the Respondent’s website or locations. There is no plausible good-faith reason for the Respondent to register a domain name including the Complainant’s trademark and the term “oslo”. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In order to obtain the transfer of a domain name, a complainant must prove the three elements of paragraph 4(a) of the Policy, regardless of whether the respondent files a response to the complaint or not. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The second element a complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. The third element a complainant must establish is that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires that the Complainant establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark. The disputed domain name includes the Complainant’s trademark in its entirety (simply omitting the period after “dr”), combined with the geographical term “oslo”. This conveys the impression that the disputed domain name would be used to offer the Complainant’s services to Internet users in, or interested in, Oslo. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.” As the disputed domain name includes the Complainant’s trademark in its entirety (simply omitting the period after “dr”), combined with a geographical term, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and hence the first element of the Policy has been fulfilled. B. Rights or Legitimate Interests Paragraph 4(a)(ii) of the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests to the disputed domain name. It is widely accepted among UDRP panels that once a complainant has made a prima facie showing indicating the absence of the respondent’s rights or legitimate interests in a disputed domain name the burden of production shifts to the respondent to come forward with evidence of such rights or legitimate interests. If the respondent fails to do so, the complainant is deemed to have satisfied the second element of the Policy. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270, and section 2.1 of the WIPO Overview 3.0. The Complainant has credibly submitted that the Respondent is neither affiliated with the Complainant in any way nor has it been authorized by the Complainant to use and register the disputed domain name, that the Respondent has no prior rights or legitimate interests in the disputed domain name, and that the Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and is not commonly known by the disputed domain name in accordance with paragraph 4(c)(ii) of the Policy. Moreover, the Panel finds that the nature of the disputed domain name carries a risk of implied affiliation with the Complainant’s trademark. See section 2.5.1 of the WIPO Overview 3.0. Accordingly, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. Considering the Panel’s findings below, the Panel finds that there are no other circumstances that provide the Respondent with any rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the second element of the Policy is fulfilled. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: “(i) circumstances indicating that [the respondent has] registered or has acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or (ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or (iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business or competitor; or (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.” The Panel finds that the Complainant’s trademark DR. MARTENS is well known for shoes. Hence the Respondent must have been aware of the Complainant’s trademark when registering the disputed domain name, especially given that the Respondent’s website offers for sale footwear bearing the trademark DR. MARTENS. As described above, the disputed domain name resolves to a website offering for sale footwear bearing the trademark DR. MARTENS at discounted prices. In addition, the Respondent’s website does not accurately and prominently disclose its relationship with the Complainant. See, e.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, and section 2.8.1 of the WIPO Overview 3.0. By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith. Moreover, when looking at the totality of the circumstances in this case, the Panel finds that the Complainant’s trademark has been used for many years, that the disputed domain name is confusingly similar to the Complainant’s trademark, and that the Respondent has also not put the disputed domain name into any legitimate use. Therefore, the Panel finds that the third element of the Policy is fulfilled. 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 Tuukka Airaksinen
Sole Panelist
Date: April 17, 2020
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