The Complainants are “Dr. Martens” International Trading GmbH of Gräfelfing, Germany and “Dr. Martens” Marketing GmbH of Seeshaupt, Germany, represented by Beetz & Partner, Germany.
The Respondent is Hui Chen of Guangzhou, Guangdong, China.
The disputed domain names <outletdrmartensshoes.com>, <outletsdrmartensshoes.com> and <outletssdrmartensshoes.com> are registered with Shanghai Yovole Networks, Inc. and Chengdu West Dimension Digital Technology Co., Ltd respectively. (the “Registrars”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2013. On January 30, 2013, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On January 31 and February 7, 2013, the Registrars transmitted by email to the Center their verification response confirming that the Respondent is listed as the registrant and providing the contact details. On February 8, 2013, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On February 12, 2013, the Complainants confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding 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 February 14, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 6, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 7, 2013.
The Center appointed Jonathan Agmon as the sole panelist in this matter on March 13, 2013. 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 German companies.
The Complainants are owners of a famous international brand for footwear, clothing and accessories since the late 1950’s.
The Complainants’ goods are available for sale at retailers throughout the world as well as online at the Complainants’ official website located at the domain name <drmartens.com>.
The Complainants are the owner of numerous worldwide trademark registrations for the mark DR. MARTENS. For example: Community trademark registration No. 59147 - DR. MARTENS, with the registration date of March 3, 1999; Australian trademark registration No. 40023 – DR. MARTENS, with the registration date of November 16, 1983; Australian registration No. 500799 – DR. MARTENS, with the registration date of December 5, 1988; Canadian trademark registration No. 420485 – DR. MARTENS, with the registration date of December 10, 1993; United States trademark registration No. 1454323 - DR. MARTENS, with registration date of August 25, 1987, and many more.
The trademark DR. MARTENS has acquired the status as well-known trademark due to extensive and long-term use on products of the Complainants.
The disputed domain name <outletssdrmartensshoes.com> was registered on December 18, 2012, long after the Complainants has registered the trademark DR. MARTENS worldwide.
The disputed domain name <outletsdrmartensshoes.com> was registered on November 28, 2012, long after the Complainants has registered the trademark DR. MARTENS worldwide.
The disputed domain name <outletdrmartensshoes.com> was registered on November 16, 2012, long after the Complainants has registered the trademark DR. MARTENS worldwide.
From the evidence provided by the Complainants, it appears that all of the three disputed domain names resolve to an inactive webpage that contains sponsored links.
The Complainants argue that the disputed domain names are confusingly similar to the Complainants’ well-known trademark DR. MARTENS, seeing that the dominant part of the disputed domain names comprises the Complainants’ trademark DR. MARTENS, which has been registered as a trademark in numerous countries all over the world.
The Complainants further argue that the additional descriptive elements “shoes” and “outlet” are merely and clearly descriptive and that the respective consumers will pay their major attention to the dominant and characterizing element “drmartens”, which is the Complainants’ famous mark.
The Complainants further argue that they have exclusive rights to the DR. MARTENS trademark and that this trademark is widely recognized with the Complainants. Furthermore, the Complainants argue that they did not have any relationship with the Respondent nor has they licensed or permitted the Respondent to use the DR. MARTENS mark.
The Complainants further argue that the disputed domain names are likely to mislead or confuse the public as to its source or origin, and the public is likely to believe that the Complainants have authorized or endorsed the Respondent.
The Complainants further assert that the disputed domain names are used by the Respondent in the manner which takes unfair advantage of and is detrimental to the Complainants’ earlier rights.
The Complainants further argue that the Respondent is using the disputed domain names as a platform for offering links to entities selling footwear showing the Complainants’ trademarks without authorization.
The Complainants further argue the Respondent is making illegitimate commercial use of the domain names for commercial gain and to tarnish the Complaints’ trademarks.
The Complainants further argue that the Respondent is hereby passing off the Complainants’ goodwill and reputation in the DR. MARTENS trademark.
The Complainants further argue that the Respondent is using the disputed domain names to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainants’ mark.
The Complainants further argue that the Respondent registered the disputed domain names with knowledge of the Complainants and the Complainants’ operation. The Complainants argue that this is evidence of the Respondent’s bad faith.
The Complainants further argue that the considerable value and goodwill of the mark DR. MARTENS are most likely what made the Respondent registered the disputed domain names.
For all of the above reasons, the Complainants request the transfer of the disputed domain names.
The Respondent did not reply to the Complainants’ contentions.
Paragraph 4(a)(i) of the Policy requires the Complainants to show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The DR. MARTENS trademark is registered in multiple territories around the world. For example: Community trademark registration No. 59147 - DR. MARTENS, with the registration date of March 3, 1999; Australian trademark registration No. 40023 – DR. MARTENS, with the registration date of November 16, 1983; Australian registration No. 500799 – DR. MARTENS, with the registration date of December 5, 1988; Canadian trademark registration No. 420485 – DR. MARTENS, with the registration date of December 10, 1993; United States trademark registration No. 1454323 - DR. MARTENS, with registration date of August 25, 1987, and others.
The disputed domain names <outletdrmartensshoes.com>, <outletsdrmartensshoes.com>, <outletssdrmartensshoes.com> differ from the registered DR. MARTENS trademark by the additional words “outlet”, “outlets” or “outletss” and “shoes”, and the gTLD “.com”.
The dominant element in the disputed domain names is the Complainants’ DR. MARTENS trademark, which is incorporated in its entirety. The words “outlet”, “outlets” or “outletss” and “shoes” do not serve sufficiently to distinguish or differentiate the disputed domain names from the Complainants’ DR. MARTENS trademark, especially as they represent goods, which are regularly sold under the DR. MARTENS trademark by the Complainants, and services regularly rendered by the Complainants.
Previous UDRP panels have ruled that the mere addition of a non significant element do not sufficiently differentiate the domain name from the registered trademark: “The addition of the non-distinctive term “shoes” does nothing in this case to reduce the confusing similarity of the disputed domain name with the Complainants’ widely and well-known DR. MARTENS trademark. Indeed, if anything, the disputed domain name is very likely to make assume Internet users that the website that is linked to the disputed domain name would be hosted by the famous shoe manufacturer. Therefore, the Panel considers the disputed domain name to be confusingly similar to the Complainants’ trademark DR. MARTENS.” (Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Above.com Domain Privacy/Transure Enterprise Ltd, WIPO Case No. D2009-1253).
“The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark.” (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505). Also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name <redbull-jp.net> is somehow connected with the owner of RED BULL trademark.” (Red Bull GmbH v. PREGIO Co., Ltd., WIPO Case No. D2006-0909).
The addition of the gTLD “.com” to the disputed domain names does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Thus, the gTLD “.com” is without legal significance since the use of a gTLD is technically required to operate a domain name.
The result is that the Complainants have shown that the above disputed domain names are identical or confusingly similar to a trademark in which the Complainants have rights.
Consequently, the Panel finds that the Complainants had shown that the disputed domain names are identical or confusingly similar to the trademarks in which the Complainants have rights.
Once the Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain names (paragraph 4(a)(ii) of the Policy).
In the present case, the Complainants allege that the Respondent has no rights or legitimate interests in respect of the disputed domain names and the Respondent has failed to assert any such rights or legitimate interests.
The Panel finds the Complainants have established such a prima facie case inter alia due to the fact that the Complainants have not licensed or otherwise permitted the Respondent to use the DR. MARTENS trademark, or a variation thereof. The Respondent has not submitted a Response and has not provided any evidence to show it has any rights or legitimate interests in the disputed domain names sufficient to rebut the Complainants’ prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Complainants must show that the Respondent registered and is using the disputed domain name in bad faith (paragraph 4(a)(iii) of the Policy). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Complainants submit evidence, which shows that the Respondent registered the disputed domain names after the Complainants registered their trademarks. According to the evidence filed by the Complainants and the trademark search performed by the Panel, the Complainants own a registration for the DR. MARTENS trademark at least since the year 1983. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainants, was registered long before the registration of the disputed domain names (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).
The Complainants also provide evidence to demonstrate their trademark’s vast goodwill. The Panel cites the following with approval: “The Respondent’s selection of the disputed domain name, which wholly incorporates the Trade Mark, cannot be a coincidence… Given the fame of the Trade Mark, there is no other conceivable interpretation of the Respondent’s registration and use of the disputed domain name other than that of bad faith”. (Swarovski Aktiengesellschaft v. Zhang Yulin, WIPO Case No. D2009-0947). It is therefore unlikely that the Respondent had no knowledge of the Complainants upon registering the disputed domain names.
Indeed, “when a domain name is so obviously connected with a Complainant, it's very use by a registrant with no connection to the Complainant suggests ‘opportunistic’ bad faith”. (Tata Sons Limited v. TATA Telecom Inc/Tata-telecom.com, Mr. Singh, WIPO Case No. D2009-0671).
Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the domain name it had intentionally attempted to attract, for commercial gain, Internet users to its websites or other on-line locations, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations.
The disputed domain names are confusingly similar to the Complainants’ trademark. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (See Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
The Complainants submitted evidence, proving that the Respondent was using the disputed domain names to direct Internet users to a parked webpage containing pay-per-click links that direct Internet users to websites offering footwear products that bear the Complainants’ trademark. The Respondent has been utilizing the Complainants’ trademark in the disputed domain names for commercial gain by creating Internet user confusion through suggesting that the source of the Respondent’s websites is the Complainants. Such action constitutes bad faith registration and use of the disputed domain names. (See Schur International A/S v. Jorge Massa, WIPO Case No. D2009-0450).
Finally, based on the evidence presented to the Panel, taking into consideration the goodwill the Complainants has achieved in their trademark, the late registration of the disputed domain names and the non-legitimate commercial use of the disputed domain names, the Panel draws the inference that the disputed domain names were registered and are being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainants have met their burden under paragraph 4(a)(iii) 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 disputed domain names <outletdrmartensshoes.com>, <outletsdrmartensshoes.com> and <outletssdrmartensshoes.com> be transferred to the Complainants.
Jonathan Agmon
Sole Panelist
Date: March 19, 2013