Complainants are “Dr. Martens” International Trading GmbH of Gräfelfing, Germany, and “Dr. Maertens” Marketing GmbH of Seeshaupt, Germany, represented by Beetz & Partner of Munich, Germany.
Respondent is caiyoucici96 yu of Chengdu, China.
The disputed domain name <bestdrmartensjp.com> (the “Disputed Domain Name” is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2014. On March 21, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 21, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on April 2, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 22, 2014. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 23, 2014.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on May 2, 2014. 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.
Complainant states, and provides evidence to support, that it is “a famous 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, and relevantly through many retailers in Australia, as well as online at the ‘Dr. Martens’ website, located at the domain name ‘www.drmartens.com’.”
Complainant has provided appropriate evidence to support its ownership of trademarks that consist of or include the mark DR. MARTENS (collectively, the “DR. MARTENS Trademark”), including (to list only a few) Community Trademark Reg. No. 59147, Australian Trademark No. 500,799 and United States of America Reg. No. 1,454,323.
The Disputed Domain Name was created on June 4, 2013. Complainant states, and provides evidence to support, that the Disputed Domain Name is used in connection with “a website for selling very low-priced ‘Ray-Ban Sunglasses’.”
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to a trademark in which Complainant has rights because, inter alia, the Disputed Domain Name contains the DR. MARTENS Trademark in its entirety, the addition of the word “best” is “merely and clearly descriptive” and “[t]he letters ‘jp’ are merely added characters.”
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “[t]he Respondent has never been authorized by the Complainants and it is asserted that the Respondent has knowingly registered the disputed domain name with the intention of deceiving and misleading [I]nternet visitors by creating a likelihood of confusion with the Respondents’ [sic] website or of a product or service of the Respondent’s website.”
- Respondent registered and is using the Disputed Domain Name in bad faith because, inter alia, “Respondent must have had knowledge of the Complainants’ right to the ‘Dr. Martens’ trademarks when he registered the contested domain name, since the Complainants’ trademarks are a widely well-known trademark”; the Respondent is “linking… [the Disputed Domain Name] with unauthorized websites which are selling products of third parties not being related to nor being authorized or approved by the trademarks’ owners or their licensees”; and “[i]t is more than likely that the Respondent is profiting of [sic] the goodwill associated with the Complainants’ trademark by accruing click-through fees for each redirected and confused Internet user.”
Respondent did not reply to Complainant’s contentions.
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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. Policy, paragraph 4(a).
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the DR. MARTENS Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the DR. MARTENS Trademark, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., “bestdrmartensjp”), as it is well-established that the generic Top-Level Domain (i.e., “.com”) should be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2 (“The applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”).
Inclusion of the word “best” and the letters “jp” (an abbreviation for “Japan”) in addition to the DR. MARTENS Trademark in the Disputed Domain Name do nothing to diminish confusing similarity. See, e.g., Links (London) Limited d/b/a Links of London v. “Barack Hussein Obama Jr” et al., WIPO Case No. D2011-0878 (inclusion of the word “best” in domain name “is not sufficient to negate the confusing similarity between the disputed domain name [] and the trademark”); and Steven Madden, Ltd. v. Zhang Xiaoli, WIPO Case No. D2013-2049 (“the geographical indication ‘jp’ cannot be considered as sufficient to distinguish the disputed domain name from the Complainant’s trademark”). Further, omission of the period and space (which are present in the DR. MARTENS) from the Disputed Domain Name are irrelevant given that these characters are unavailable for use in a domain name.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy.
Complainant has argued that, inter alia, “[t]he Respondent has never been authorized by the Complainants and it is asserted that the Respondent has knowingly registered the disputed domain name with the intention of deceiving and misleading [I]nternet visitors by creating a likelihood of confusion with the Respondents’ [sic] website or of a product or service of the Respondent’s website.”
Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview 2.0, paragraph 2.1.
Accordingly, as a result of Complainant’s allegations and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has proven the second element of the Policy.
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has 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 registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
Here, Complainant argues that bad faith exists pursuant to paragraph 4(b)(iv) of the Policy. Among other things, Complainant has argued that Respondent’s use of the Disputed Domain Name in connection with a website selling unrelated accessory items creates a likelihood of confusion and constitutes bad faith. The Panel agrees, despite the difference between Complainant’s goods and those advertised on the Respondent’s website. See, e.g., Ferrari S.p.A. v. ASDAQ.com, WIPO Case No. D2004-0342 (finding bad faith where complainant’s trademark was used in connection with motorcars and Respondent’s website was used in connection with unsecured loans, because “the Respondent has… intentionally created confusion amongst consumers, so as to direct them to an on-line location, no doubt with an eye to commercial gain of some description”).
Accordingly, the Panel finds that Complainant has proven the third element 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 name <bestdrmartensjp.com> be transferred to the Complainant.
Douglas M. Isenberg
Sole Panelist
Date: May 16, 2014