The Complainants are Dr. Martens International Trading GmbH and Dr. Maertens Marketing GmbH of Germany, represented by Beetz & Partner, Germany.
The Respondent is PrivacyProtect.org of Moergestel, Netherlands and Purple Bucquet of Panama City, Panama.
The disputed domain name <docmartons.com> is registered with Power Brand Center LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2010. On October 25, 2010, the Center transmitted by email to Power Brand Center LLC. a request for registrar verification in connection with the disputed domain name. On November 3, 2010, Power Brand Center LLC. transmitted by email to the Center its confirmation that the disputed domain name would remain under registrar “lock” throughout the pendency of the administrative proceeding. The Complainants filed an amendment to the Complaint on November 9, 2010.
The Center verified that the Complaint together with the amendment to 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 November 10, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 30, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 10, 2010.
The Center appointed Jon Lang as the sole panelist in this matter on December 15, 2010. 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.
On December 6, 2010 the Center sent an email to the registrar requesting confirmation, in accordance with ICANN’s Expired Domain Deletion Policy (paragraph 3.7.5.7), as to whether any action was required given that the domain name was due to expire on December 28, 2010. The same day the registrar confirmed that it would renew the domain pending the outcome.
The Complainants are the owners of numerous trademarks for DR. MARTENS (for instance, CTM 591147 dated April 1996 and Australian Trademark No. 500799 dated December 1988). They are also the owner of CTM 150144 for DOC MARTENS dated April 1996.
DR MARTENS is a famous international brand for footwear, clothing and accessories. Dr Martens goods are available through retailers throughout the world including online at the website “www.drmartens.com” .
The domain name in dispute, <docmartons.com> (hereafter the “Domain Name”) was registered on December 28, 2005.
The following is a summary of the Complainants’ contentions:
The Domain Name is identical or confusingly similar to trademarks in which the Complainants have rights:
“Doc Martons” and “Doc Martens” are almost phonetically identical and visually very similar.
The Respondent has no rights or legitimate interests in respect of the Domain Name:
The Respondent is using the Domain Name to host a parking website containing links to websites selling footwear of competitors to the Complainants (as well as DR. MARTENS footwear), and by using the Domain Name the Respondent is likely to mislead consumers into believing it has some form of sponsorship, affiliation or the approval of the Complainants even though there is no such relationship or approval. The Respondent’s actions amount to passing-off.
The Respondent is making illegitimate commercial and unfair use of the Domain Name with the intention of making commercial gain and misleading and diverting consumers, and tarnishing the trademarks of the Complainants.
The Domain Name was registered and is being used in bad faith:
The Respondent is intentionally attempting to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainants’ marks as to the source sponsorship, affiliation or endorsement of the Respondent’s site or products available on or through it.
The Respondent has linked the Domain Name to a site from which other unauthorized websites can be accessed selling competitor products and it is likely that the Respondent is profiting from “click-through” fees.
The Respondent must have had knowledge of the Complainants’ rights when it registered the Domain Name given the fame of the DR. MARTENS and DOC MARTENS marks suggesting “opportunistic bad faith’
The Respondent did not reply to the Complainants’ contentions.
Paragraph 4(a) of the Policy requires a complainant to prove that the respondent has registered a domain name which is:
(i) identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that he has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A complainant must prove each of these three elements.
The Domain Name is phonetically and visually very similar to the Complainants’ trademark DOC MARTEN and similar, when one considers the meaning conveyed by the prefix ‘Dr’, to the Complainant’s trade mark, DR.MARTENS.
There is a likelihood of confusion in that an Internet user may form the view that the owner of the Domain Name is also the owner of the trademark to which it is similar, or at least that there is some form of association between the Respondent and the Complainants. The switching of the vowel ‘e’ for ‘o’ in ‘martens’ does little to distinguish the Domain Name from the Complainants or their trademark.
Accordingly, this Panel finds that this element of paragraph 4(a) of the Policy is established.
A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with the complainant. For instance, it can show that it has been commonly known by the domain name or that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers. However, the Respondent is not known by the Domain Name and, given the website to which the Domain Name resolves (i.e. one that appears to be very much commercial in nature), it cannot be said that there is legitimate noncommercial or fair use. A respondent can also show that it was using a domain name in connection with a bona fide offering of goods or services. However, it is difficult to accept that promotion of a website to which a confusingly similar domain name resolves, which contains links to other commercial websites selling products competing with those of a complainant, could be a bona fide offering of goods or services.
In Drexel University v. David Brouda, WIPO Case No. D2001-0067 the panel stated that “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”.
There is no evidence before this Panel that the Respondent has rights or legitimate interests in the Domain Name. Indeed, there is no evidence before this Panel to contradict or challenge any of the contentions of the Complainants. This Panel finds therefore that the Complainants have made out a prima facie case that the Respondent has no rights or legitimate interests in the Domain Name. The burden to demonstrate such rights or legitimate interests therefore shifts to the Respondent. As the Respondent has not come forward with a Response or taken any other action to address the Complaint, this Panel finds the Complainants have fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
It seems clear, given the fame of the Complainants’ trademark and the use to which the Domain Name has been put, that the Respondent must have been aware of the Complainants’ marks when the Domain Name was registered. One way a complainant may demonstrate bad faith registration and use, is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it. This appears to be the case here. Accordingly, this Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <docmartons.com> be transferred to the Complainants.
Jon Lang
Sole Panelist
Dated: December 28, 2010