Complainants are “Dr. Martens” International Trading GmbH of Graefelfing, Germany and “Dr. Maertens” Marketing GmbH of Seeshaupt, Germany, represented by Beetz & Partner, Germany.
Respondent is Calle Anna of Aubervilliers of France. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with SIDN through R. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2018. On February 8, 2018, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On February 9, 2018, SIDN transmitted by email to the Center its verification response disclosing the registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainants on February 14, 2018, providing the registrant and contact information disclosed by SIDN, and inviting Complainants to submit an amendment to the Complaint. Complainants filed an amended Complaint on February 16, 2018. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 21, 2018. In accordance with the Regulations, article 7.1, the due date for Response was March 13, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 14, 2018.
The Center appointed Gregor Vos as the panelist in this matter on March 19, 2018. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2. 4. Factual Background
Complainants are the owners of the following trademarks (hereafter: the “Trademarks”):
- European Union (“EU”) Trademark registration No. 59147 for DR. MARTENS, registered on April 1, 1996;
- Australian Trademark registration No. 500799 for DR. MARTENS, registered on May 13, 1997;
- Australian Trademark registration No. 652619 for DR. MARTENS, registered on November 29, 1996;
- Canadian Trademark registration No. 420485 for DR. MARTENS, registered on December 10, 1993;
- Canadian Trademark registration No. 625884 for DR. MARTENS, registered on November 18, 2004;
- United States of America (“US”) Trademark registration No. 1454323 for DR. MARTENS, registered on August 25, 1987;
- US Trademark registration No. 1798791 for DR. MARTENS, registered on October 12, 1993;
- US Trademark registration No. 2838397 for DR. MARTENS, registered on May 4, 2004;
- International Trademark registration No. 575311 for DR. MARTENS, registered on July 18, 1991.
The Domain Name was registered by Respondent on December 12, 2017. Respondent uses the Domain Name to offer for sale products under the trademark DR. MARTENS. 5. Parties’ Contentions A. Complainants
Complainants assert that the distinctive part of the Domain Name is identical to the Trademarks. The element “online” is, according to Complainants, descriptive and consumers would only pay their attention to the element “drmartens”. As a result, the element “online” does not prevent likelihood of confusion.
Furthermore, Complainants submit that Respondent does not hold any rights or legitimate interests with respect to the Domain Name. Complainants state that Respondent has never been authorized or licensed to use the Domain Name or to sell products under the Trademarks. Complainants suggest that Respondent is selling counterfeit products.
Finally, Complainants assert that the Domain Name has been registered and used in bad faith. Complainants state that Respondent must have had knowledge of the Trademarks when it registered the Domain Name, since the Trademarks are widely known. Respondent’s awareness of the Trademarks at the time of registration would suggest opportunistic and bad faith registration. Complainants further state that by selecting the Domain Name, Respondent intentionally attempts to attract for commercial gain Internet users to the website at the Domain Name (the “website”) by creating likelihood of confusion with the Trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and/or of a product of service on Respondent’s website. B. Respondent
Respondent did not reply to Complainants’ contentions. 6. Discussion and Findings
Based on article 2.1 of the Regulations, a request to transfer a domain name must meet three cumulative conditions:
a. the Domain Name is identical or confusingly similar to:
I) a trademark or trade name protected under Dutch law in which Complainants have rights; or
II) a personal name registered in the General Municipal Register (Gemeentelijke Basisadministratie) of a municipality in the Netherlands, or the name of a Dutch public legal entity or the name of an association or foundation registered in the Netherlands under which Complainants undertakes public activities on a permanent basis; and
b. Respondent has no rights to or legitimate interests in the Domain Name; and
c. the Domain Name has been registered or is being used in bad faith.
As Respondent has not filed a response, the Panel shall rule on the basis of the Complaint. In accordance
with article 10.3 of the Regulations, the Complaint shall in that event be granted, unless the Panel considers
it to be without basis in law or in fact. A. Identical or Confusingly Similar
Complainants are the holder of several trademark registrations for the term DR. MARTENS. This includes an EU Trademark registration.
The threshold test for confusing similarity under the Regulations involves a comparison between the Trademarks and the Domain Name to assess whether the Trademarks are recognizable within the Domain Name. For the purposes of assessing confusing similarity under the Regulations, the country code Top-Level Domain (“ccTLD”) (e.g., “.nl”) is generally ignored in the comparison between the domain name and the trademark. This case does not contain any indications to the contrary.
The Domain Name incorporates the Trademarks entirely. Additionally, the Domain Name contains the element “online”. The Panel finds that the element “online” does not change the overall impression of the Domain Name as being connected to the Trademarks. Therefore, the Panel finds that an Internet user viewing the Domain Name would likely confuse the Domain Name with the Trademarks.
Consequently, the Panel finds that the requirement under article 2.1(a) of the Regulations has been fulfilled. B. Rights or Legitimate Interests
A complainant bears the burden of prima facie showing that the respondent has no rights or legitimate interests in the domain name. If a complainant succeeds in making its prima facie case, the burden of evidentiary production shifts to the respondent, which will then have to come forward with appropriate allegations or evidence demonstrating a right or legitimate interest in the domain name (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).1
Article 3.1 of the Regulations provides circumstances in which such rights or legitimate interests to the domain name may be demonstrated. These circumstances include i) use of the domain name in connection with a bona fide offering of goods or services; ii) being commonly known by the domain name; and iii) making legitimate noncommercial or fair use of the domain name.
Complainants state that Respondent has never been authorized or licensed to use the Domain Name or to sell products under the Trademarks. Furthermore, Complainants state that Respondent sells counterfeit products.
The Panel notes that Complainants have not provided specific evidence concerning its assertion that the products Respondent is offering for sale under the Domain Name are in fact counterfeit products. In any event, in the circumstances addressed under section 6C. below, noting also that Complainants have not licensed or otherwise permitted Respondent to use the Trademarks or to register a domain name incorporating the Trademarks, the Panel finds that Complainants have established their prima facie case. On its part, Respondent has not provided any indications of a right or legitimate interest in the Domain Name.
Considering the file before it, the Panel finds that the requirement under article 2.1(b) of the Regulations has been fulfilled. C. Registered or Used in Bad Faith
Article 3.2 of the Regulations provides circumstances which, if present, shall be evidence of the registration and use of a domain name in bad faith.
Respondent’s use of the website is commercial and competes with Complainants and/or their authorized resellers in a confusing manner. Given the style and presentation of the website, Internet users are likely to believe that it is Complainants’ official website or that Respondent is affiliated with Complainants. The use of Complainants’ official logo and Complainants’ advertising images on the website amounts to a form of impersonation by Respondent. In this connection, the Panel further notes the lack of a disclaimer on the website to clarify the absence of a relationship between Respondent and Complainants.
Furthermore, the Panel notes that there is ambiguity about the true identity of the Respondent. The contact details which Respondent has provided when registering the Domain Name appear to be incorrect. The Complaint was sent to the provided address by registered mail but never arrived as the address was non-existing.
In light of the above, the Panel finds that Complainant has successfully evidenced that the Domain Name has been registered or is being used in bad faith, in the sense of article 3.2(d) of the Regulations.
Consequently, the Panel finds that the requirement under article 2.1(c) of the Regulations has also been fulfilled. 7. Decision
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the domain name be transferred to Complainants.
Gregor Vos
Panelist
Date: April 2, 2018
1 In view of the fact that that the Regulations are to a large extent based on the UDRP, it is well established that cases decided under both the Regulations and the UDRP are relevant to this proceeding (see, e.g., Aktiebolaget Electrolux v. Beuk Horeca B.V.,WIPO Case No. DNL2008-0050).
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