The Complainants are “Dr. Martens” International Trading GmbH of Gräfelfing, Germany, and “Dr. Maertens” Marketing GmbH of Seeshaupt, Germany, represented by Beetz & Partner, Germany.
The Respondent is Domain Admin of Alsace, France. 2. The Domain Name and Registrar
The disputed domain name is registered with Dynadot, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2011. On December 9, 2011, the Center transmitted by email to Dynadot, LLC a request for registrar verification in connection with the disputed domain name. On December 9, 2011, Dynadot, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On December 14, 2011, the Center issued the Complaint Deficiency Notification inviting the Complainant to include the full statement as specified in the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), paragraph 3(b)(xiv). The Complainant filed the amendment to the Complaint on December 16, 2011.
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, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 10, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 11, 2012.
The Center appointed Daniel Kraus as the sole panelist in this matter on January 19, 2012. 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 a German company engaged in business of manufacturing, marketing and selling of footwear, clothing and accessories under the trademark DR. MARTENS. The Complainant owns several trademarks for DR. MARTENS worldwide, including the Community trademark registration N° 59147, Canadian trademarks N° 420485 and 625884, US trademarks N° 1454323, 1798791, N° 2838397 and N° 2397734 in classes 2, 25 and 35. The Complainant’s trademark is well-known amongst “fashionistas”.
The Respondent registered the disputed domain name on July 18, 2011. 5. Parties’ Contentions A. Complainants
The Complainants contend that the disputed domain name is confusingly similar to their trademark. The mere fact that a point between “Dr” and “Martens” has been omitted is not sufficient to create enough distinctiveness between the trademark and the disputed domain name.
The Complainants further claim that the Respondent has no rights or legitimate interests in respect of the disputed domain name and failed, in response to that prima facie claim, to establish any rights or legitimate interests in respect of the disputed domain name. This is in particular due to the fact that the Respondent is using the disputed domain name to host a parked website which features links to advertisements for the sale of footwear, including “Dr. Martens” footwear on websites which are not authorized or approved by the trademark owner, as well as on websites which refer to competitors of the Complainants.
Finally, the Complainants contend that the disputed domain name was registered and is being used in bath faith. The Respondent knows the Complainants’ well-known trademark and registered it as a domain name. By using the disputed domain name, the Respondent intentionally attempts to attract Internet users to its website or other online locations in order to attract commercial gain, by creating a likelihood of confusion with the Complainants' trademarks. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainants must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have 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. A. Identical or Confusingly Similar
Based on the documents produced by the Complainants, the Panel is satisfied that the Complainants have proven that they are the owners of the trademark DR. MARTENS. The mere fact that a point between “Dr” and “Martens” has been omitted in the disputed domain name is not sufficient to create enough distinctiveness between the trademark and the disputed domain name.
The Panel holds that the disputed domain name is confusingly similar with the Complainants’ trademark. B. Rights or Legitimate Interests
The Complainants have not authorized, licensed or permitted the Respondent to use the trademark DR. MARTENS.
The Complainants assert that the Respondent is not commonly known by the disputed domain name and that the Respondent cannot demonstrate any bona fide use of the disputed domain name.
The Panel is satisfied that the Complainants have established prima facie evidence that the Respondent has no rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy. According to a consistent line of UDRP decisions, in such a case the burden of production shifts to the Respondent to rebut the evidence. See among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia,WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio,WIPO Case No. D2002-0683.
It is also noted that the Respondent has failed to file a response to prove its rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy. For all the above reasons, the Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
By using the disputed domain name, the Respondent intentionally attempted to attract Internet users to its website in order to attract commercial gain, by creating a likelihood of confusion with the Complainants’ trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Respondent must have had knowledge of the Complainants’ rights in the DR. MARTENS trademarks when it registered the disputed domain name, since the Complainants’ trademarks are widely known trademarks. This suggests opportunistic bad faith registration (see BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007; see also Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. A Domain Privacy/Transure Enterprise Ltd,WIPO Case No. D2009-1253). Besides, the disputed domain name is linked to a pay-per-click website featuring links to third parties, some of which sell products in direct competition with the Complainants. This is a clear indication that the Respondent is intentionally attempting to attract Internet users for commercial gain. By doing so, the Respondent is willingly creating a likelihood of confusion and intends to free ride on the Complainants’ trademark. The Respondent is hence benefitting of the goodwill associated with the Complainants’ trademark by obtaining click through fees for each redirected (and possibly confused) Internet user.
For this reason, the Panel concludes that the disputed domain name was registered and is being used in bad faith. 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 domain name be transferred to the Complainant.
Daniel Kraus
Sole Panelist
Dated: February 2, 2012
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