The Complainants are “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH of Gräfelfing, Germany and Seeshaupt, Germany, respectively, represented by Beetz & Partner, Germany.
The Respondent is Easyshop of Guangzhou, Guangdong, China.
The disputed domain name <drmartenssale.info> (the “Domain Name”) is registered with GoDaddy.com, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on March 14, 2012. On March 14, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the Domain Name. On March 16, 2012, GoDaddy.com, LLC 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 22, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 11, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 13, 2012.
The Center appointed Michelle Brownlee as the sole panelist in this matter on April 23, 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 own several registrations for the trademark DR. MARTENS, including:
- Community Trade Mark registration No. 59147 for footwear and clothing in International Class 25 and retail services in Class 35, among others.
- Canadian Trademark Registration No. 420485 for footwear and clothing.
- Canadian Trademark Registration No. 625884 for retail services for footwear and clothing.
- United States Trademark Registration No. 1454323 for footwear in International Class 25.
- United States Trademark Registration No. 1798791 for footwear in International Class 25.
- United States Trademark Registration No. 2838397 for retail services for footwear and clothing in International Class 35.
The Complainants also own United States registration No. 2397734 for DOC MARTENS for footwear in International Class 25.
The Domain Name was registered on July 3, 2011.
DR. MARTENS is a well-known international brand for footwear, clothing and accessories, particularly renowned for its distinctive shoes and boots, first sold in the late 1950’s. DR. MARTENS footwear, clothing and accessories are available for sale at retailers throughout the world as well as online at the DR. MARTENS website, located at the domain name “www.drmartens.com”.
The website that is displayed at the Domain Name is not authorized by the Complainants, but uses the DR. MARTENS mark prominently and displays a copyright notice that reads “Copyright © 2012 Dr. Martens.” The site is offering DR. MARTENS footwear for sale.
The Complainants contend that the Domain Name is confusingly similar to their DR. MARTENS mark. The Complainants further submit that the Respondent does not have any rights to or legitimate interests in respect of the Domain Name and that the Respondent registered and is using the Domain Name in bad faith. The Complainants argue that by combining the well-known DR. MARTENS mark with a descriptive element, the Respondent is likely to mislead and deceive consumers into believing that the Respondent has a sponsorship, affiliation or approval with the Complainants when this is not the case.
The Respondent did not reply to the Complainants’ contentions.
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:
(1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Complainants have demonstrated that they own rights in the DR. MARTENS trademark. There are many UDRP decisions that find that the pairing of a distinctive trademark with less distinctive terms is confusingly similar to the distinctive trademark. See, e.g., MasterCard International Incorporated v. Michael J Yanda, Indy Web Productions, WIPO Case No. D2007-1140; Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022 (<christiandiorcosmetics.com> and <christiandiorfashions.com> confusingly similar to CHRISTIAN DIOR); Toyota Motor Sales USA v. Rafi Hamid dba ABC Automobile Buyer, WIPO Case No. D2001-0032 (inter alia <leasinglexus.com> and <lexuselite.com> confusingly similar to LEXUS). Accordingly, the Panel finds that the Domain Name, which pairs the DR. MARTENS trademark with the word “sale” is confusingly similar to the Complainants’ DR. MARTENS trademark.
Paragraph 4(c) of the Policy provides that a respondent can demonstrate rights to or legitimate interests in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name at issue in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark at issue.
In this case, the Respondent has not presented evidence that the Respondent used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services; that the Respondent is commonly known by the Domain Name; that the Respondent is making a legitimate noncommercial or fair use of the Domain Name; or in any other way refuted the Complainants’ prima facie case.
The Complainants have presented evidence, which was not refuted by the Respondent, that the Respondent is using the Domain Name to pass itself off as related to the Complainants. This activity cannot under the circumstances be considered a bona fide offering of goods or services. Accordingly, the Panel finds that the Respondent does not have any rights to or legitimate interests in the Domain Name.
Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
“(i) circumstances indicating that the respondent has registered or acquired the domain name at issue 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.”
The Panel finds the Complainants have established bad faith registration and use under paragraph 4(b)(iv) of the Policy. The content posted on the website associated with the Domain Name demonstrates that the Respondent is aware of the Complainants DR. MARTENS trademark, as the site is selling DR. MARTENS footwear. The Respondent is using the Domain Name to attract Internet users to the Respondent’s site by creating confusion as to source and results in commercial gain to the Respondent since the Respondent is offering products for sale on the site. The likelihood of confusion is exacerbated in this case by the prominent use of the Complainants’ DR. MARTENS mark in the heading of the page and in the copyright notice.
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, <drmartenssale.info> be transferred to the Complainants.
Michelle Brownlee
Sole Panelist
Dated: April 30, 2012