WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

“Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. Xu Chi

Case No. D2012-0705

1. The Parties

The Complainants are “Dr. Martens” International Trading GmbH of Gräfelfing, Germany, and “Dr. Maertens” Marketing GmbH of Seeshaupt, Germany (together the “Complainant”), represented by Beetz & Partner, Germany.

The Respondent is Xu Chi of Honghe, Yunnan, China.

2. The Domain Name and Registrar

The disputed domain name <cheapdrmartensonline.com> is registered with Jiangsu Bangning Science & technology Co. Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2012. On April 4, 2012, the Center transmitted by email to Jiangsu Bangning Science & technology Co. Ltd. a request for registrar verification in connection with the disputed domain name. On April 8, 2012, Jiangsu Bangning Science & technology Co. Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On April 12, 2012, the Center transmitted an email to the Parties in both the Chinese and English language regarding the language of the proceeding. On April 13, 2012, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not submit any comments 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 April 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 9, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 11, 2012.

The Center appointed Colin Yee Cheng Ong as the sole panelist in this matter on June 7, 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

4.1 The Complainant has provided evidence to substantiate its claim that Dr. Martens is a widely-known international brand for footwear, clothing and accessories which is particularly known for its distinctive shoes and boots. Dr. Martens footwear was first sold in the late 1950’s and it is now available for sale, together with clothing and accessories at retailers throughout the world as well as online at the Complainant’s website, located at “www.docmarten.com”.

4.2 The Complainant has provided further evidence that it is the owner of the following trademarks:

Community Trade Mark CTM 59147 DR. MARTENS of April 1, 1996, registered for various goods, mainly for footwear and clothing in class 25, as well as retail services in class 35;

Australian Trademark No. 500799 DR. MARTENS of December 5, 1988 for footwear and clothing in class 25;

Australian Trademark No. 570247 DR. MARTENS of December 5, 1988 for footwear and clothing in class 25;

Australian Trademark No. 652619 DR. MARTENS of February 8, 1995 for retail services in class 35;

Australian Trademark No. 400023 DR. MARTENS of November 16, 1983 for footwear and clothing in class 25;

Australian Trademark No. 916942 DR. MARTENS of June 20, 2002 for retail services in the field of footwear, clothing, etc. in class 35;

Canadian Trademark No. 420485 DR. MARTENS of December 17, 1990, mainly for footwear and clothing in class 25;

Canadian Trademark No. 625884 DR. MARTENS of June 25, 2002 mainly for retail services in the field of footwear and clothing in class 35;

United States Trademark No. 1454323 DR. MARTENS of June 9, 1983 for footwear in class 25;

United States Trademark No. 1798791 DR. MARTENS of March 14, 1990 for footwear in class 25;

United States Trademark No. 2838397 DR. MARTENS of June 26, 2002 for retail services in the field of footwear and clothing in class 35;

International Trademark No. 575311 DR. MARTENS of July 18, 1991 for footwear in class 25, also protected in China;

5. Parties’ Contentions

A. Complainant

5.1 The Complainant contends that the disputed domain name <cheapdrmartensonline.com> is confusingly similar to its own trademark and website at “www.docmarten.com” for several reasons:

(i) The disputed domain name <cheapdrmartensonline.com> is phonetically similar to the Complainant’s trademarks.

(ii) The various trademarks DR. MARTENS are identical with “drmartens” in the disputed domain name with respect to all their letters. The Complainant submits that only the point between “Dr” and “Martens” has been omitted but that this omission will not be sufficient in order to create enough distinctiveness between the trademark DR. MARTENS and the term “drmartens” in the disputed domain name.

(iii) The disputed domain name <cheapdrmartensonline.com> is a combination of the descriptive elements “cheap”, “online” and the characterizing name “drmartens”. With respect to the fact that the elements “cheap” and “online” are merely and clearly descriptive, the respective consumers will pay their major attention to the characterizing element “drmartens”.

5.2 The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name for the following reasons:

(i) The Respondent is using the disputed domain name <cheapdrmartensonline.com> to host a parking website which features links to advertisements for the sale of footwear and of Dr. Martens footwear on websites which are not authorized or approved by the trademark owners.

(ii) By using the disputed domain name, the Respondent is likely to mislead and deceive consumers into believing that he has a sponsorship, affiliation or approval with the original DR. MARTENS trademark owners/licensees/customers when this is not the case. The Respondent is making false representations that he and/or his website have a sponsorship, approval or association with the original DR. MARTENS trademark owners/licensees/customers which is not the case. The Respondent is passing off the trademark owners’ goodwill and reputation in the DR. MARTENS trademarks and the “Dr. Martens” name.

(iii) The Respondent is making an illegitimate commercial and unfair use of the disputed domain name <cheapdrmartensonline.com> with the clear intention for commercial gain misleading to divert consumers and to tarnish the trademark and service marks DR. MARTENS.

(iv) From the facts provided above, nothing seems to indicate that the Respondent has any rights or legitimate interests in respect of the disputed domain name. The Respondent has no connection or affiliation with the Complainant and has not been authorized by the Complainant to register and use its trademark or to seek registration of any domain name incorporating said mark.

5.3 The Complainant, lastly, contends that the disputed domain name was registered and is being used in bad faith for the following reasons:

(i) The Complainant alleged that the Respondent has registered the disputed domain name in bad faith because the Respondent must have knowledge of the Complainant’s rights in the DR. MARTENS trademarks at the moment it registered the disputed domain name, since the Complainants trademarks are widely and well-known trademarks. ‘The Respondent’s awareness of the Complainant’s trademark rights at the time of registration suggests opportunistic bad faith registration.

(ii) The Respondent linked the disputed domain name with an unauthorized active website, which was selling the Complainant’s Dr. Martens footwear and the Complainant’s competitors’ products, without being authorized or approved by the trademarks’ owners or their licensees. This is a clear indication that the Respondent is intentionally attempting to attract Internet users for commercial gain. By doing so, the Respondent is creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. It is more than likely that the Respondent is profiting from the goodwill associated with the Complainant’s trademark by accruing click-through fees for each redirected and confused Internet user.

(iii) Since the Respondent must have knowledge of the Complainant’s rights in the DR. MARTENS trademarks at the moment it registered the disputed domain name, and that the Respondent has no rights or legitimate interests in the disputed domain name, the disputed domain name was registered and is being used in bad faith.

The Complainant requests a decision that the disputed domain name be transferred to the Complainant.

B. Respondent

5.4 The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 The Complaint was filed in the English language. On April 12, 2012, the Center transmitted by email to the parties in both Chinese and English regarding the language of proceedings. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Center has been informed by the concerned registrar that the language of the registration agreement for the disputed domain name is Chinese. Although the Chinese language is the language of the registration agreement for the disputed domain name, the Complainant asserted its request that English should be the language of proceedings. According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of paragraph 11 of the Rules is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.

6.2 The Complainant requested that English be the language of the proceedings, in part because the content of the website was in English.

6.3 In the present case, considering the composition of the domain name, the content of the website, and the Panel’s assessment of the unique circumstances of the case, bearing in mind its broad powers given to the Panel by paragraph 11 (a) of the Rules, and bearing in mind the fact that the Respondent did not attempt to contest these proceedings, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of administrative proceeding in this case.

6.4 The Panel finds that the proceedings have been conducted in accordance with the Rules and the Policy. The procedural history of this case raises the question as to whether the Respondent has received notice of this proceeding. Having gone through the series of communications as set out above under the section on procedural history, the Panel concludes that the Center has notified the Respondent of this proceeding and has discharged its responsibility under paragraph 2(a) of the Rules. The Panel finds that the proceedings have been conducted in accordance with the Rules and the Policy. The procedural history of this case raises the question as to whether Respondent has received notice of this proceeding. However, having gone through the series of communications as set out above under the section on procedural history, the Panel concludes that the Center has notified the Respondent of this proceeding and has discharged its responsibility under paragraph 2(a) of the Rules. The Panel has reviewed the Complaint together with its annexes and, in the light of this material, the Panel finds as set out below. This Panel does not find any exceptional circumstances pursuant to paragraph 5(e) of the Rules so as to prevent this Panel determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.

6.5 The Respondent has been accorded with the opportunity to provide submissions and evidence to dispute the claims of the Complainant. Some previous UDRP panels have suggested that if the Respondent chooses not to present any such evidence, an inference may be made that such evidence would not have been favorable to the Respondent, or that he accepts the claims of the Complainant, or even that he does not wish to respond or defend his perceived interest in the trademark. (See cases set out by the Complainant above). However, this Panel respectfully views that any such adverse inference is not conclusive at all and the Complainant would still be obliged to prove his case in accordance with the UDRP. The burden of proof falls upon and remains on the Complainant. In such case of silence by the Respondent, the Complainant shall then continue with his case and shall have to prove the three elements that are required by the Policy without opposition than the Complainant’s own ability to explain them. (See: PRL USA Holdings, Inc. v. Yan Shif, WIPO Case No. D2006-0700).

6.6 Under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the panel “shall draw such inferences there from as it considers appropriate”. Therefore, in a case where a respondent fails to put in a response, a panel may draw negative inferences from the respondent’s default (see paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)). Notwithstanding the default of the respondent, it remains incumbent on the complainant to make out its case in all respects as set out in paragraph 4(a) of the Policy (see, PRL USA Holdings, Inc. v. Yan Shif, supra). Namely, the complainant must prove that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

6.8. Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. In line with such provision, the Complainant must prove two limbs, i.e., that it holds the trademark or service mark right; and that the disputed domain name is identical with or confusingly similar to its trademark or service mark. The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the domain name’s use or other marketing factors, usually considered in trademark infringement (see, for example, Ebay Inc. v. Wangming, WIPO Case No. D2006-1107).

6.9 The Complainant has appended to the Complaint a list of registered trademarks and a registered domain name that incorporate the trademark DR. MARTENS. It is quite clear that the Complainant is the legitimate owner of these trademarks and domain name. The Respondent’s registration of the disputed domain name consists of the use of the Complainant’s trademark DR. MARTENS causes confusing similarity. Previous UDRP decisions pronounced under the UDRP in similar situations such as F. Hoffmann-La Roche AG v. Drug Sale, WIPO Case No. D2006-0066 correctly decided that such an addition of generic words was not enough to distinguish capacity in the context of the domain name and they do not alter the value of the trademarks represented in the domain name. Given this, the Panel has little difficulty in concluding that the disputed domain name is confusing similar to a number of trademarks in which the Complainant has rights.

B. Rights or Legitimate Interests

6.11 The Panel accepts that the Complainant has satisfied it in providing evidence showing that the trademarks for DR. MARTENS are well-known throughout the world, registered and is present in China, where the Respondent is located. At the heart of the Complaint is the Complainant’s contention that the Respondent has taken the trademark of the Complainant with a view to attracting Internet users to its website to intentionally link its domain name with DR. MARTENS trademark. The Panel accepts that such activity clearly does not provide the Respondent with a legitimate interest in the disputed domain name.

6.12 According to paragraph 4(a)(ii) of the Policy, the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. However, it is the prevailing view among panelists that where a complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show, inter alia, one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack a right or legitimate interest in the domain name.

6.13 As previously held by other UDRP panels, “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”. (See eBay Inc. v. Akram Mehmood, WIPO Case No. DAE2007-0001). As another panel had held in the case of Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Varentinuo inc. reg by sopao.com, WIPO Case No. D2008-0186, if a respondent wants to argue that it has a right or legitimate interest in a domain name on this basis, it is then for the respondent to positively advance that case and to bring forward evidence in support (see paragraph 6.16 of that decision).

6.14 The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name. There is no evidence on the record of this proceeding to suggest that Respondent has been commonly known by the disputed domain name, or that Respondent has made noncommercial or fair use of the name. The Respondent has also not used the disputed domain name in connection with a bona fide offering of goods or services.

6.15 Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.

C. Registered and Used in Bad Faith

6.16. The Complainant has rightly pointed out the fact that the Respondent has registered the disputed domain name in bad faith because it was registered with the knowledge of the Complainant’s rights in the DR. MARTENS trademark and earlier registered domain name.

6.17. The Complainant then submitted that the selection of the disputed domain name, which wholly incorporates the DR. MARTENS trademark was done in bad faith. The Panel accepts this line of submission and accepts the contention that the Respondent registered the Domain Name in the knowledge of the Complainant’s business and its use of the DR. MARTENS trademark. The Panel accepts the Complainant’s submission that the Respondent is using the disputed domain name to intentionally gain commercially by attracting Internet users to a website, by creating a likelihood of confusion with the Complainant’s mark

6.18. Paragraph 4(b) of the Policy provides a list of examples of evidence of bad faith registration and use. Paragraph 4(b)(iv) of the Policy refers to use of a domain name to intentionally attempt to attract for commercial gain Internet users to a website by creating a likelihood of confusion with the Complainant’s mark as to the source of a website.

6.19. Given that the Respondent has failed to show (for the reasons set out under the heading Rights and Legitimate Interests above) that it was using the disputed domain name genuinely for its own goods or services and that it has also failed to disclose on the site the true relationship between it and the Complainant, the Panel concludes that the Respondent in this case did intentionally attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. The Panel accepts the submission that the Respondent is intentionally attempting for a commercial purpose to attract Internet users to the Respondent’s website. The activities of the Respondent, therefore, fall within the scope of paragraph 4(b)(iv) of the Policy.

6.20. In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy. This is sufficient to dispose of this matter in favour of the Complainant. The Panel has been able to conclude that the Respondent registered and used the disputed domain name in bad faith for the above reasons.

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 <cheapdrmartensonline.com> be transferred to the Complainant.

Dr Colin Yee Cheng Ong
Sole Panelist
Date: July 27, 2012