Complainants are “Dr. Martens” International Trading GmbH of Gräfelfing, Germany and “Dr. Maertens” Marketing GmbH of Seeshaupt, Germany, represented by Beetz & Partner, Germany.
Respondent is Yu Du of Chongzuo, Guangxi, China.
The disputed domain name <onlinedrmartensboots.com> is registered with Web Commerce Communications Limited dba WebNic.cc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2012. On April 5, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 5, 2012, the Registrar transmitted by email to the Center its verification response confirming that the 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 13, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 3, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 4, 2012.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on May 16, 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.
The trademark upon which the Complaint is based is DR. MARTENS. According to the documentary evidence and contentions submitted, Complainants own a number of registrations for the DR. MARTENS trademark in different countries, including the CTM Registration No. 59147 issued on April 1, 1996; the International Trademark No. 575311 issued on July 18, 1991 (also including China); and the United States of America Registrations Nos. 1454323 issued on June 9, 1983; 1798791 issued on March 14, 1990; and 2838397 issued on June 26, 2002. All trademark registrations are granted mainly for footwear, clothing and related retail services.
According to the documentary evidence and contentions submitted, DR. MARTENS is a famous international brand for footwear, clothing and accessories, first sold in the late 1950’s. Products bearing DR. MARTENS trademark are available for sale at retailers throughout the world as well as online at the official website located at the domain name <drmartens.com>.
The disputed domain name was registered with the Registrar on December 20, 2011.
Complainants argue that the disputed domain name is identical or confusingly similar to the DR. MARTENS mark because (i) it is a combination of the descriptive elements “online” and “boots” with the name “drmartens”; (ii) the name “drmartens” is the characterizing element of the disputed domain name; and (iii) the name “drmartens” is identical to the DR. MARTENS mark.
Complainants further contend that Respondent does not have rights or legitimate interests regarding the disputed domain name because (i) Respondent is using the disputed domain name to host a parked website with links to advertisements for the sale of footwear and of DR. MARTENS footwear on websites which are not authorized or approved by Complainants and on websites which refer to competitors of Complainants; (ii) by using the disputed domain name, Respondent is likely to mislead and deceive consumers into believing that Respondent has a sponsorship, affiliation or approval with the original DR. MARTENS trademark owners, licensees or customers when this is not the case; and (iii) Respondent is making an illegitimate commercial and unfair use of the disputed domain name with the clear intention for commercial gain misleading to divert consumers and to tarnish the DR. MARTENS marks.
Finally, Complainants contend that Respondent registered and uses the disputed domain name in bad faith because (i) by using the disputed domain name, Respondent intentionally attempted to attract for commercial gain Internet users to Respondent’s website or other online location, by creating likelihood of confusion with Complainants’ marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and/or location and/or of a product or service on the Respondent’s website or location; and (ii) Respondent must have had knowledge of Complainants’ rights in the DR. MARTENS marks when it registered the disputed domain name, since Complainants’ marks are well-known marks, and Respondent’s awareness of Complainants’ mark rights at the time of registration suggests opportunistic bad faith registration.
Respondent did not reply to Complainants’ contentions.
The consensus view is that respondent’s default does not automatically result in a decision in favor of complainant and that complainant must establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), paragraph 4.6). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
This Panel finds that there are no exceptional circumstances for the failure of Respondent to submit a Response. As a result, the Panel infers that Respondent does not deny the facts asserted and contentions made by Complainants from these facts. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contac, WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainants. Reuters Limited v. Global Net 2000, Inc., supra; RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540.
The Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements.
The Panel concurs with the opinion of several prior UDRP panels which have held that, when a domain name wholly incorporates a complainant’s registered trademark, that may be sufficient to establish confusing similarity for purposes of the first element of the Policy. See, e.g., Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Hitachi, Ltd. v. Arthur Wrangle, WIPO Case No. D2005-1105; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615; Dr. Ing. H.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888; adidas-Salomon v. Mti Networks Ltd., WIPO Case No. D2005-0258; and AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758.
That is particularly true where the trademark is distinctive as in the instant case. In fact, there is sufficient evidence in the records that the DR. MARTENS trademark is well-known, and the disputed domain name incorporates the DR. MARTENS trademark as a single word. Further, prior UDRP decisions have held that the addition of generic or descriptive terms to an otherwise distinctive trademark in a domain name is to be considered confusingly similar to the registered trademark. V&S Vin&Sprit AhB v. Giovanni Pastore, WIPO Case No. D2002-0926; Thomson Broadcast and Media Solution Inc., Thomson v. Alvaro Collazo, WIPO Case No. D2004-0746; Sanofi-Aventis v. US-Meds.com, WIPO Case No. D2004-0809; and F. Hoffman La Roche AG v. Pinetree Development, Ltd., WIPO Case No. D2006-0049. The word “boots” points to one of Complainants’ lines of products, which is footwear. The word “online” refers to a website activity. Therefore, the combination of “drmartens” with “online” and “boots” creates an immediate potential for false association with the DR. MARTENS mark, and increases the likelihood of consumer confusion. See adidas-Salomon AG v. Digi Real Estate Foundation, Patrick Williamson, WIPO Case No. D2006-0748.
Finally, the addition of the suffix “.com” is non-distinctive because it is required for the registration of the domain names. See RX America, LLC v. Mattew Smith, WIPO Case No. D2005-0540; and Sanofi-Aventis v. US Online Pharmacies, WIPO Case No. D2006-0582.
Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.
Respondent is using the disputed domain name to resolve to a website with pay-per-click advertisements pointing to Complainants as well as to other websites, including those competing with Complainants.
The issue as to whether use of a domain name for purposes of offering “sponsored links” creates a legitimate right to a domain name has been addressed in previous UDRP decisions. There is a consensus view that such use would not of itself be considered a bona fide offering of goods or services, or a noncommercial or fair use. See Bridgestone Corp. v. Horoshiy, Inc., WIPO Case No. D2004-0795; Deutsche Telekom AG v. Dong Wong, WIPO Case No. D2005-0819; and PRL USA Holdings, Inc. v. LucasCobb, WIPO Case No. D2006-0162.
In fact, the Panel sees no plausible explanation for Respondent’s adoption and use of the term “onlinedrmartensboots” in the disputed domain name and, accordingly, concludes that the disputed domain name was registered and is being used by Respondent to take advantage of the notoriety associated with Complainants’ DR. MARTENS mark and the goodwill attached, with the intent to attract Internet users for commercial gain. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847.
In short, in this Panel’s view Complainants have satisfied their burden of providing sufficient evidence to make a prima facie case showing that Respondent lacks rights to or legitimate interests in the disputed domain name, and Respondent has failed to provide the Panel with any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interests in the disputed domain name. See Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.
Complainants’ first contention of bad faith is based on the argument that Respondent is using the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainants’ mark as to the source, sponsorship, affiliation or endorsement of its websites.
The Panel has already found that that the disputed domain name was registered and is being used by Respondent to take advantage of the notoriety and good will associated with the DR. MARTENS mark, with the intent to attract for commercial gain Internet users by utilizing sponsored links. The Panel concurs with the understanding of several other UDRP panels that the use of a domain name to point to a website that offers sponsored links to other websites may be evidence of bad faith, particularly if, as in the instant case, complainants have registered and previously been using their trademarks. See Mudd, LLC v. Unasi, Inc., WIPO Case No. D2005-0591; and Volvo Trademark Holding AB v. Unais, Inc., WIPO Case No. D2005-0556.
Complainants’ second contention of bad faith is based on the argument that at the time of registration of the disputed domain name Respondent knew of the existence of Complainants’ mark and that registration of a domain name containing a well-known trademark suggests opportunistic bad faith. As stated by a UDRP panel previously, “given the Complainant’s worldwide reputation, and presence on the Internet, indicates that Respondent was or should have been aware of the marks prior to registering the disputed Domain Name.” See Caesar World, Inc. v. Forum LLC, WIPO Case No. D2005-0517.
Therefore, this Panel finds that Respondent in all likelihood knew of the existence of Complainants’ trademarks. That finding is reinforced by the fact that Respondent chose to combine the word “drmartens” with the words “online” and “boots” to register the disputed domain name which is closely related to one of Complainants’ lines of products.
In the case of a domain name so obviously connected to a well-known registered mark, its use by someone with no legitimate interest in respect of the disputed domain name and with no connection with the products suggests “opportunistic bad faith”. See SSL International PLC v. Mark Freeman, WIPO Case No. D2000-1080; Perfumes Christian Dior v. Javier Garcia Quintas and Christian Dior. net, WIPO Case No. D2000-0226; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.
In short, the manner in which Respondent has registered and is using the disputed domain name demonstrates bad faith.
In light of all the conclusions and findings above, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met.
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 <onlinedrmartensboots.com> be transferred to Complainants.
Manoel J. Pereira dos Santos
Sole Panelist
Date: May 29, 2012