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 Jiang Gu of Longde, Ningxia, China.
The disputed domain name <drmartensbarato.com> (the “Disputed Domain Name”) is registered with Jiangsu Bangning Science & technology Co. Ltd (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2012. On February 27, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 28, 2012, 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. On March 5, 2012, the Center transmitted an email to the Parties in both Chinese and English language regarding the language of proceedings. On March 6, 2012, the Complainant confirmed its request that English be the language of proceeding. The Respondent did not comment on the language of proceedings by the specified due date.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 12, 2012. The Center’s attempt to send the Written Notice to the Respondent by courier at the address provided in the WhoIs record of the Disputed Domain Name was unsuccessful due to the address being invalid. In accordance with the Rules, paragraph 5(a), the due date for Response was April 1, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 2, 2012.
The Center appointed Kar Liang Soh as the sole panelist in this matter on April 11, 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.
The Complainants are companies registered in Germany. The business of the Complainants arose from the invention of an air-cushioned sole by Munich-based Dr. Maertens and Dr. Funck and has been operating for about 50 years. The Complainants’ products marketed under the trade mark DR. MARTENS include footwear, clothing and accessories and they are particularly known for their shoes and boots. The products are available through retailers throughout the world and online at the website “www.drmartens.com”. The trade mark DR. MARTENS has been acknowledged as a popular fashion brand in various publications. The trade mark DR. MARTENS has also been recognized by prior UDRP panels as a well-known mark (e.g., Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Above.com Domain Privacy/Transure Enterprise Ltd, WIPO Case No. D2009-1253; “Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. PrivacyProtect.org/Tech Domain Services private Limited, WIPO Case No. D2010-1342).
The Complainants are joint owners of the following trade mark registrations:
Jurisdiction | Trade mark | Trade mark No. | Registration Date |
|
CTM |
DR. MARTENS |
591147 |
April 1, 1996 |
|
Australia |
DR. MARTENS |
500799 |
December 5, 1988 |
|
Australia |
DR. MARTENS |
570247 |
December 5, 1988 |
|
Australia |
DR. MARTENS |
652619 |
February 8, 1995 |
|
Australia |
DR. MARTENS |
400023 |
November 16, 1983 |
|
Australia |
DR. MARTENS |
916942 |
June 20, 2002 |
|
Canada |
DR. MARTENS |
420485 |
December 17, 1990 |
|
Canada |
DR. MARTENS |
625884 |
June 25, 2002 |
The Complainant “Dr. Martens” International Trading GmbH is also the owner of the following trade mark registrations:
Jurisdiction | Trade mark | Trade mark No. | Registration Date |
|
United States |
DR. MARTENS |
1454323 |
August 25, 1987 |
|
United States |
DR. MARTENS |
1798791 |
October 12, 1993 |
|
United States |
DR. MARTENS |
2838397 |
May 4, 2004 |
The Respondent appears to be an individual. No further information about the Respondent is known beyond what is disclosed in the WhoIs record of the Disputed Domain Name.
The Disputed Domain Name was registered on December 15, 2011. As at February 7, 2012, the Disputed Domain Name resolved to a website which offers for sale footwear under the trade mark DR. MARTENS. The website featured the trade mark DR. MARTENS very prominently. The Complainants have received complaints from customers who ordered products and disclosed credit card details via the website but did not receive any goods. As at March 4, 2012, the Disputed Domain Name did not appear to resolve to any website.
The Complainants contend that:
1) The Disputed Domain Name is confusingly similar to the Complainants’ trade mark registrations. The Disputed Domain Name comprises the characterizing element “drmartens” and the descriptive element “barato” which means “cheap” in Spanish. These elements do not assist to avoid the risk of confusion;
2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent is making a false representation that he has the sponsorship, approval or association with the Complainants which is not the case. The Respondent was selling Dr. Martens footwear without being authorized or approved by the Complainants. There is nothing in the evidence to indicate that the Respondent has any rights or legitimate interests in respect of the Disputed Domain Name; and
3) The Disputed Domain Name was registered and is being used in bad faith. The trade mark DR. MARTENS is a well-known mark which the Respondent must have been aware of. The Respondent intentionally attempted to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainants’ trade mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and/or products on the Respondent’s website. The Respondent exhibited opportunistic bad faith in registering the Disputed Domain Name.
The Respondent did not reply to the Complainants’ contentions.
Having considered the circumstances of the case, the Panel decides that English should be adopted as the language of the proceedings under paragraphs 10 and 11 of the Rules. In coming to this decision, the Panel has taken the following into account:
1) The Complaint has already been submitted in English and the Panel is fully capable of dealing with the Complaint in English;
2) The Respondent has not indicated any language preference;
3) The website resolved from the Disputed Domain Name was fully in Spanish, which is strongly suggestive that the Respondent is or has ready access to competence in languages other than Chinese; and
4) Since no response has been filed, there does not appear to be any procedural benefit that may be achieved by insisting on the default language of the proceedings and it is likely that delay to the proceedings would result should the Complainants be required to re-submit the Complaint in Chinese.
In order to succeed in this proceeding, the Complainants must show that the 3 conditions of paragraph 4(a) of the Policy are established. The Panel proceeds to consider these 3 conditions below.
The Complainants clearly have rights in the trade mark DR. MARTENS by virtue of their trade mark registrations. The Disputed Domain Name incorporates the trade mark DR. MARTENS almost in its entirety.
The only difference between the Disputed Domain Name and the trade mark DR. MARTENS is the addition of a descriptive suffix “barato” which means “cheap” in Spanish. The Panel is of the view that this difference does not assist in distinguishing the Disputed Domain Name from the trade mark DR. MARTENS. In the circumstances, the Panel holds that the first condition of paragraph 4(a) of the Policy is established on the facts.
The Complainants have confirmed that the Respondent does not have the sponsorship, approval or association with the Complainants to enable them to use the trade mark DR. MARTENS. The Panel believes the Respondent to be an individual. There is no evidence to suggest that the Respondent is commonly known by the name “Dr. Martens”. In accordance with the consensus of past UDRP panel decisions, such a circumstance supports a prima facie determination that a respondent does not have rights or legitimate interests. No response having been filed, the Panel holds that the prima facie determination stands. As such, the second condition of paragraph 4(a) of the Policy is also established.
Paragraph 4(b)(iv) of the Policy states that the following circumstance is evidence of bad faith registration and use by a respondent:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The website which resolved from the Disputed Domain Name at least until February 7, 2012, offered products for sale. In addition, the evidence indicates that the website had the ability to receive orders via credit card. The Panel accepts that the Respondent had commercial gain in mind by using the Disputed Domain Name. The evidence submitted is consistent with the prior UDRP panel decisions of Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Above.com Domain Privacy/Transure Enterprise Ltd, supra and “Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. PrivacyProtect.org/Tech Domain Services private Limited, supra, in holding that the trade mark DR. MARTENS is well-known. In deciding to adopt the Disputed Domain Name, the Respondent must have been aware of the trade mark and that the Disputed Domain Name is confusingly similar to the trade mark. The prominent use of the trade mark DR. MARTENS on the website is consistent with this view.
In addition, the Center has verified that the postal code and/or city in the address of the Respondent is not complete. An applicant for registration of a domain name warrants that its contact details are correct, pursuant to paragraph 2 of the Policy. The deliberate use of fictitious and/or ineffective contact particulars to register a domain name without any valid reason is itself indicative of bad faith and the subsequent use of the domain name accordingly tainted by the bad faith (see Farouk Systems Inc. v. David, WIPO Case No. D2009-1245). The Panel is of the view that the Respondent has failed to discharge this duty and the finding of bad faith registration and use is further justified.
Based on the above, the Panel concludes that the facts support a finding of bad faith registration and use under paragraph 4(b)(iv) of the Policy.
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, <drmartensbarato.com> be transferred to the Complainants.
Kar Liang Soh
Sole Panelist
Dated: May 10, 2012