Complainants are “Dr. Martens” International Trading GmbH, Germany, and “Dr. Maertens” Marketing GmbH, Germany, represented by Mayr Kotsch, Germany.
Respondent is Simone Bader, Germany. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2020. On March 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 6, 2020, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 2, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 3, 2020. The Center appointed Stephanie G. Hartung as the sole panelist in this matter on April 8, 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 August 13, 2018. Complainants have provided a screen shot of the website at the disputed domain name indicating sales activities thereunder at some point before the filing of the Complaint, obviously in relation to footwear bearing the DR. MARTENS trademark offered for online sale at discounted prices , e.g., the model “Dr. Martens 1460 Smooth”. By the time of the rendering of this Decision, however, the disputed domain name does not resolve to any active content on the Internet. 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 elements “vy” being the Slovakian term for “your” and “predaj” being the Slovakian term for “sale” 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 she 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 her 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 in its entirety, simply omitting the period sign after “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 Slovakian term “vypredaj” (meaning “sale” in the English language) 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 she 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 her own. It is questionable, however, whether Respondent has used the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use purpose. Complainants have provided a screen shot of the website at the disputed domain name indicating sales activities thereunder at some point before the filing of the Complaint, obviously in relation to footwear bearing the DR. MARTENS trademark offered for online sale at discounted prices, e.g., the model “Dr. Martens 1460 Smooth”. This is in contrast to find for, e.g., a legitimate noncommercial or typical fair use of the disputed domain name under the UDRP, but still leaves open if the prerequisites, e.g., for a bona fide use are fulfilled. 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. However, the site under the disputed domain name then must, e.g., (a) actually be offering the goods or services at issue, (b) to sell only the trademarked goods or services, and (c) accurately and prominently discloses the registrant’s relationship with the trademark holder (so-called “OKI data test”, see WIPO Overview 3.0, section 2.8). In the case at hand, 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 disclose 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. Though Complainants allege that Respondent at some point in the past has been linking her website under the disputed domain name with offers to sell competing footwear products, such allegation however is not sufficiently supported by the case file. Accordingly, Complainants have established at least 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. As a general rule, UDRP Panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding (see WIPO Overview 3.0, section 3.3). While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include, e.g., the degree of distinctiveness or reputation of Complainant’s mark, the failure of Respondent to submit a response or to provide any evidence of actual or contemplated good faith use, or the implausibility of any good faith use to which the domain name may be put. 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. Also, the screen shot of the website at the disputed domain name provided by Complainants indicating sales activities relating to footwear under the DR. MARTENS trademark at discounted prices demonstrates that Respondent had Complainants’ DR.MARTENS trademark clearly in mind when registering the disputed domain name and by using the disputed domain name, Respondent had intentionally attempted to attract, for commercial gain, Internet users to her website or other online location, by creating a likelihood of confusion with Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Against this background and given that Respondent has defaulted, it is at least more likely than not – regardless of the fact that the disputed domain name by now does not resolve to any active content on the Internet – that Respondent has registered and is using the disputed domain name in a way to take unfair advantage of or otherwise abuse Complainants’ DR. MARTENS trademark, thus acting in bad faith within the larger meaning of paragraph 4(b) of the Policy. In this context, the Panel has also noted that Respondent obviously 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 13, 2020, could not be delivered. This fact at least throws 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
Sole Panelist
Date: April 20, 2020
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