Complainants are “Dr.Martens” International Trading GmbH of Graefelfing, Germany and “Dr.Maertens” Marketing GmbH of Seeshaupt, Germany, represented by Beetz & Partner, Germany.
Respondent is Domain Administrator, See PrivacyGuardian.org of Phoenix, Arizona, United States of America (“United States”) / Lukas Vogel of Adelshofen, Germany.
The disputed domain name <drmartensaustralia.com> is registered with NameSilo, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2018. On September 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainants on September 27, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting Complainants to submit an amendment to the Complaint. Complainants filed an amended Complaint on October 4, 2018.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 5, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 8, 2018.
The Center appointed Torsten Bettinger as the sole panelist in this matter on November 19, 2018. 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.
Complainants are in the business of marketing shoes, boots, clothing and accessories throughout the world in association with the trademarks DR. MARTENS through retailers, its own stores and online at its “www.docmartens.com” website.
As a result of continuous marketing of shoes and boots since the 1950s Complainants’ DR. MARTENS trademark have become well-known brand name distinguishing Complainants’ goods and services from those of others.
Complainants are the owner of numerous trademark registrations for DR. MARTENS throughout the world.
Among the registrations are:
- European Union Trade Mark No. 59147 for the trademark DR. MARTENS registered on March 3, 1999 for various goods, mainly for footwear and clothing in class 25, as well as retail services in class 35;
- United States Trademark No. 1454323 for the trademark DR. MARTENS registered on August 25, 1987 for soles for boots and shoes in class 25;
- Australian Trademark No. 500799 for the trademark DR. MARTENS registered on December 5, 1988 for footwear and clothing in class 25;
- Australian Trademark No. 652619 for the trademark DR. MARTENS registered on February 8, 1995 for retail services in class 35;
- Canadian Trademark No. 420485 for the trademark DR. MARTENS registered on December 10, 1993 for footwear and clothing in class 25;
- Canadian Trademark No. 625884 for the trademark DR. MARTENS registered on November 18, 2004, for retail services in class 35;
- United States Trademark No. 1798791 for the trademark DR. MARTENS registered on October 12, 1993 for footwear and parts therefore in class 25;
- United States Trademark No. 2838397 for the trademark DR. MARTENS registered on May 4, 2004 for retail services in the field of footwear and clothing in class 35;
- United States Trademark No. 1454323 for the trademark DR. MARTENS registered on August 25, 1987 for footwear in class 25;
- International Registration No. 575311 for the trademark DR. MARTENS, registered on July 18, 1991 for footwear in class 25, in various countries.
Respondent appears to be a private individual located in Germany. The disputed domain name <drmartensaustralia.com> was registered on August 3, 2018.
Complainants request that the disputed domain name be transferred to Complainants.
With regard to the requirement of identity or confusing similarity between the trademark and the disputed domain name pursuant to paragraph 4(a)(i) of the Policy, Complainants submitted that the disputed domain name is confusingly similar to a trademark in which they have rights as it incorporates Complainants’ DR. MARTENS trademark in its entirety and only differs from Complainants’ trademark by the addition of the geographical term “Australia” which as such does not alter the overall impression created by the disputed domain name.
With regard to Respondent having no rights or legitimate interests in the disputed domain name, Complainants submitted a printout of the web pages dated September 25, 2018 to which the disputed domain name <drmartensaustralia.com> resolves as an annex to the Complaint. This webpage features Complainants’ trademark DR. MARTENS in association with photographs of DR. MARTENS boots and shoes and imitates the “look and feel” of Complainants’ online presentation at “www.drmartens.com”.
Complainants submitted that:
- Respondent is using the disputed domain name for an online shop selling footwear and accessories with “Dr. Martens” products;
- Respondent is presumably selling counterfeit products;
- Even if Respondent had been selling “Dr. Martens” footwear, he would not have been entitled to incorporate Complainants’ registered and well-protected trademarks into his domain name without being authorized hereto;
- By choosing and using the disputed domain name, 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;
- Respondent is passing off the trademark owners’ goodwill and reputation in its DR. MARTENS trademarks;
- Respondent is making an illegitimate commercial and unfair use of the disputed domain name <drmartensaustralia.com> with the clear intention for commercial gain by misleading Internet users to divert consumers and to tarnish Complainants’ DR. MARTENS trademarks;
- From the facts provided above, nothing seems to indicate that Respondent has any rights or legitimate interests in respect of the disputed domain name.
Finally, with regard to the disputed domain name having been registered and being used in bad faith, Complainants argued that:
- Respondent must have had knowledge of Complainants’ rights in its Dr. MARTENS trademarks when it registered the disputed domain name since Complainants’ trademarks were widely used and well-known trademarks;
- The registration of a domain name comprising Complainants’ trademark Dr. Martens in its entirety and the descriptive element “Australia” suggest knowledge of Complainants’ trademark rights at the time of registration of the disputed domain name;
- By using the confusingly similar domain name to resolve to a webpage incorporating Complainants’ trademarks and representations of Complainants’ goods, Respondent intentionally attempted to attract for commercial gain Internet users to Respondent’s website by creating likelihood of confusion with Complainants’ trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
Respondent did not reply to Complainants’ contentions.
Under paragraph 4(a) of the Policy, Complainants carry the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainants, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel may decide the dispute solely based upon the Complaint.
Further, the Panel may draw such inferences as are appropriate from Respondent’s failure to submit a Response.
The Panel concludes that the disputed domain name <drmartensaustralia.com> is identical to Complainants’ Dr. MARTENS trademark.
It is well established that 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 products for which the domain name is used or other marketing and use factors usually considered in trademark infringement cases (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.).
In this case, the disputed domain name incorporates Complainants’ trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish identity or at least confusing similarity to a registered trademark.
Moreover, it has been long established under the UDRP case law that the addition of geographical terms or elements such as “Australia” will not generally distinguish a domain name from a complainant’s included trademark. Geographical terms are usually viewed as descriptive, potentially referring to locations where Complainants’ goods or services may originate or be sold, and therefore such terms do not alter the overall impression created by the disputed domain name (see, for example, SPECS GmbH v. SPECS Scientific Instruments, Inc. d/b/a SPECS Technologies Corporation, WIPO Case No. D2009-0308.
Furthermore, it is well accepted under the UDRP case law that generic Top-Level Domain (“gTLD”) designations such as “.com”, “.net”, “.org” are not to be taken into account when assessing the issue of identity or confusing similarity, except in certain cases where the applicable Top-Level suffix may itself form part of the relevant trademark (see WIPO Overview 3.0, section 1.11).
Therefore, Complainants have established the first element under the Policy set forth by paragraph 4(a)(i).
A respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
"(i) before any notice to you [respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
"(ii) you [respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
"(iii) you [respondent] are 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 or service mark at issue."
It is undisputed that Respondent is not affiliated with Complainants and has never been authorized by Complainants to use Complainants’ trademark DR. MARTENS.
Complainants have provided evidence that they have been using the DR. MARTENS trademarks for decades to promote their goods and services and that Respondent appears to have registered or acquired the disputed domain name on August 3, 2018 when Complainants’ trademarks were well-known in the United States, European Union, Australia and many other parts of the world.
There is also no evidence before the Panel that Respondent has ever been known by or used the trademarks DR. MARTENS in association with its own goods or services. Respondent has used the disputed domain name in association with a website that uses Complainants’ DR. MARTENS trademarks, as well as other trademarks owned by Complainants throughout the website.
Respondent did not deny Complainants’ allegation that Respondent presumably offers counterfeit Dr. MARTENS products for sale. The Panel therefore infers that Respondent registered and was using the disputed domain name only because it was seeking to create an association with Complainants and to deceive Internet users into believing that it was selling Complainants’ products.1
Given that Respondent has failed to come forward with any evidence to refute Complainants’ prima facie showing that Respondent lacks rights or legitimate interests, the Panel concludes that Complainants have satisfied the second element of the Policy set forth by paragraph 4(a)(ii).
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the Disputed Domain Name primarily for the purpose of selling, renting or otherwise transferring the Disputed Domain Name registration to Complainants who is the owner of the trademark or service mark or to a competitor of Complainants, for valuable consideration in excess of documented out-of-pocket costs directly related to the Disputed Domain Name; or
(ii) Respondent has registered the Disputed 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Disputed Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. Policy, paragraph 4(b).
When the disputed domain name <drmartensaustralia.com> was registered on August 3, 2018, Complainants’ DR. MARTENS trademarks had been registered around the world for over a decade in relation to boots, shoes, clothing, clothing accessories and retail stores offering such goods for sale.
The Panel therefore accepts Complainants’ allegation that DR. MARTENS was a well-known brand throughout the world including Germany prior to registration of the disputed domain name.
As it is undisputed that Respondent is not an authorized reseller of Complainants’ products and is not authorized to use Complainants’ trademark Dr. MARTENS or a domain name similar hereto, the fact that the disputed domain name <drmaternsaustralia.com> in which the distinctive element “drmartens” is identical to Complainants’ trademark DR. MARTENS supports the inference that Respondent registered the disputed domain name with the intent to mislead the public into associating the disputed domain name with Complainants’ business, goods, and services and into believing that, that Respondent is an online store or an authorized reseller of Complainants located in Australia.
The Panel thus finds on a balance of probabilities that Respondent registered or acquired the disputed domain name in bad faith.
Complainants provided evidence that the disputed domain name <drmartensaustralia.com> has been actively used by Respondent to resolve to a website that features Complainants’ trademark DR. MARTENS in association with photographs of “Dr. Martens” boots and shoes. As Respondent did not submit a Response in this matter, the Panel accepts that Respondent is clearly making false representations that itself or its website have a sponsorship, approval or association with Complainants (see Dr. Martens v. Above.com, WIPO Case No. D2009-1253 and Dr. Martens v. Privacy Protect.org, WIPO Case No. D2010-1342) and that Respondent intentionally has used the disputed domain name to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainants’ mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website and products.
The Panel therefore finds that Complainants have also proven that the disputed domain name is being used in bad faith.
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, <drmartensaustralia.com>, be transferred to Complainants.
Torsten Bettinger
Sole Panelist
Date: December 3, 2018
1 Even if the products sold on the website were genuine products of Complainant, the Panel notes that Respondent has not detailed any (lacking) connection with Complainant. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.