The Complainants are “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH, both German companies, both represented by Beetz & Partner, Germany.
The Respondent is Deborah Jordan of Spring, Texas, United States of America / Domains By Proxy, LLC of Scottsdale, Arizona, United States of America.
The disputed domain name <dr-martens-shoes.org> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on October 19, 2012. On October 19, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 24, 2012, 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 the Complainants on October 25, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on October 26, 2012.
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 October 30, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 19, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 20, 2012.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on November 30, 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 factual findings pertinent to the decision in this case are that:
1. The Complainants (or their predecessors in business) have sold boots and shoes by reference to the trade mark DR. MARTENS since the 1950s.
2. The Complainants (jointly) own, inter alia, Community Trade Mark Registration No. 59147 for the word mark DR. MARTENS.
3. The disputed domain name was created on December 21, 2011.
4. The disputed domain name resolves to a website which offers for sale boots and shoes by reference to the trade mark DR. MARTENS.
5. There is no known relationship between the parties.
The Complainants assert trade mark rights in DR. MARTENS and allege that the disputed domain name is “phonetically similar” to the trade mark.
The Complainants allege that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainants further allege that the Respondent registered and used the disputed domain name in bad faith.
The Respondent did not reply to the Complainants’ contentions.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In accordance with paragraph 4(a) of the Policy, the Complainants must prove that:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainants have rights; and
(ii) the 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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights. It is well established by former decisions under this Policy that a trade mark registered with a national authority is evidence of trade mark rights. The Complainants have provided evidence of their trade mark registrations in a number of jurisdictions and so the Panel is satisfied that they have trade mark rights (see State Farm Mutual Automobile Insurance Company v. Periasami Malain, NAF Claim No. 705262 (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, NAF Claim No. 174052 finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
The Complainants submit that the disputed domain name is phonetically similar to the trade mark. Whether that is the case or not, it is not the relevant issue for the purposes of the Policy. Since the disputed domain name is clearly not identical to the trade mark, the question is whether it is confusingly similar to the trade mark.
The disputed domain name takes the trade mark and adds hyphenation, the generic Top Level Domain (gTLD) “.org”, and (within the context of the Complainants’ goods of interest) the descriptive word “shoes”. Applying the principles developed and now broadly accepted under the Policy, the Panel disregards as trivial both the hyphenation and the gTLD and treats the added word “shoes” as having no distinguishing value. The Panel finds that the disputed domain is confusingly similar to the trade mark (see Rollerblade, Inc. v. McCrady, WIPO Case No. D2000-0429, finding that the top level of the domain name may not affect the domain name for the purpose of determining whether it is identical or confusingly similar; see also Isleworth Land Company v. Lost in Space, SA, NAF Claim No. 117330 stating that “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy 4(a)(i) analysis.”; Gardline Surveys Ltd v. Domain Finance Ltd., NAF Claim No. 153545 stating that “The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”; see also Sutton Group Financial Services Ltd. and Sutton Group Realty Services, Inc. v. Bill Rodger, WIPO Case No. D2005-0126, finding the domain name <suttonpromo.com> confusingly similar to complainant’s SUTTON trademark because the addition of the descriptive term, “promo”, being an obvious abbreviation of the word “promotion”, did nothing to distinguish the domain name from the trademark; see further Luby’s Fuddruckers Restaurants, LLC. v. Paydues Inc., NAF Claim No. 1421339 involving <fuddruckersfranchise.net> for the same principle)).
The Panel finds that the Complainants have satisfied the requirements of paragraph 4(a)(i) of the Policy.
The Complainants need only make out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to the Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; see also Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. 741828; see also AOL LLC v. Jordan Gerberg, NAF Claim No. 780200.
Paragraph 4(c) of the Policy sets out certain circumstances which if found by the Panel to be proved demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Those sets of circumstances are not exhaustive and other instances of legitimate interests might be in evidence however it is logical to first test the present facts against those given circumstances. They are that:
(i) before any notice to the domain name registrant of the dispute, the registrant used, or made 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) the domain name registrant (as an individual, business, or other organization) has been commonly known by the domain name, even if the registrant has acquired no trade mark or service mark rights; or
(iii) the domain name registrant is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
By reason of evidence soon described, paragraphs 4(c)(ii) and (iii) of the Policy have no application. There is, however, a live question as to whether paragraph 4(c)(i) is engaged.
The Registrar revealed the beneficial owner of the disputed domain name to be “Deborah Jordan” and so there is no prima facie evidence that the Respondent might be commonly known by the disputed domain name. There is no evidence that the Respondent has any trade mark rights. There is no evidence that the Complainants have authorized Respondent to use the trade mark.
The Complainants state that:
“The respondent is using the contested domain name … to host a parked website that features links to advertisements for the sale of footwear and of “Dr. Martens” footwear on websites that are not authorized or approved by the trademark owners as well as on websites which refers to competitors of the Complainants although he has never been authorized to do so by the Complainants.”
Annexure 6 to the Complaint has been provided to support those statements. The Panel has considered Annexure 6 which comprises pages taken from the website at the disputed domain name (“www.dr-martens-shoes.org”) and notes, contrary to the Complainant’s assertions, that it does not appear to be a parking website but rather a developed website offering boots and shoes for sale. All of the boots and shoes shown are being offered by reference to the trade mark DR. MARTENS and, absent any submission from the Complainants to the contrary, the boots and shoes would appear to be genuine goods originating from the Complainants. There is no reference whatsoever to competitors of the Complainant’s or to boots or shoes not made by the Complainants. Selection of a shoe choice would appear to give further information about and/or images of that shoe and allow it be added to a purchase cart. There are no click-through links so far as the Panel can ascertain to other websites and none has been shown in evidence.
The Complainants’ objections are unclear. The Complainants assert that:
“By choosing the identical well-known trademark “Dr. Martens” and combining it with the descriptive word “shoes” the 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 when this is not the case. … The Respondent is hereby passing off the trademark owner’s goodwill and reputation in the “Dr. Martens” trademarks and the “Dr. Martens” name. … The Respondent is making an illegitimate commercial and unfair use of the domain name … with the clear intention for commercial gain misleading to divert customers (sic) and to tarnish the trademark and the service marks “Dr. Martens”.”
The Panel struggles to make sense of these statements in the described circumstances, and is surprised to find they are apparently the product of professional representation. To this Panel, the reference to the Complainants’ “customers” is incomprehensible. The passage about “passing off” is a muddle bearing no apparent connection with the basis of that common law tort. There is no evidence or submission that the goods offered for sale by the Respondent are counterfeit and so the allegations of diversion of customers and tarnishment are unfathomable.
Based on the Panel’s independent assessment of the matter, the question which deserves attention is whether before notice of the dispute, the Respondent used the disputed domain name in connection with a bona fide offering of goods. The key issue is the bona fides of the offering and in that respect the Panel proceeds on the basis that the evidence simply shows the Respondent to be a re-seller of the Complainants’ boots and shoes.
Although the Complainants made no reference to the case, the UDRP decision of relevance is that of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“Oki Data”), where it was held that to be “bona fide” within the meaning paragraph 4(c)(i) the offering should meet the following requirements:
- the Respondent must actually be offering the goods or services at issue;
- the Respondent must use the site to sell only the trade marked goods; otherwise, it could be using the trade mark to bait Internet users and then switch them to other goods;
- the site must accurately disclose the registrant’s relationship with the trade mark owner; it may not, for example, falsely suggest that it is the trade mark owner, or that the website is the official site; and
- the Respondent must not try to corner the market in all domain names, thus depriving the trade mark owner of reflecting its own mark in a domain name.
The factors developed in the Oki Data case have been adopted in numerous subsequent UDRP cases (see, for example, Ferrari S.P.A., Fila Sport S.P.A., v. Classic Jack, WIPO Case No. D2003-0085 <ferrari-fila.com>, <ferrarifila.com>, <ferrariguy.com> et al.; Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095 - <experiancredit.com> et al.).
This Panel follows the majority view put forward in the Oki Data case that a reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use conforms with the requirement laid out in that case.
Here, the Respondent is confining its use of the disputed domain name to the resale of the Complainants’ footwear by reference to the Complainants’ mark. It is not selling products in competition to the Complainants’ goods; indeed, it is not selling other goods at all. There is no evidence that the Respondent has attempted to “corner the market” and somehow deprive the Complainants’ of a suitable domain name and the evidence shows the Complainants to already have an established web presence.
In terms of the Oki Data factors, the Respondent’s only possible omission is that it might not have disclosed its relationship with the Complainants. The respondent in the Oki Data case was an authorized re-seller and so that requirement was quite specific to the case and to parallel cases. Nonetheless, former UDRP panels have applied the same criteria in cases, such as this one, where there was no contractual relationship between the parties (see, for example, Dr. Ing. h.c. F. Porsche AG. v. Del Fabbro Laurent, WIPO Case No. D2004-0481 - <porsche-buy.com> and <porschebuy.com>; Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946 - <discount-marlboro-cigarettes.com>). That said, the only guidance from the Oki Data case of use to this Panel are the statements that the Respondent should not falsely suggest that it is the trade mark owner, or that its website is the Complainants’ official site.
It cannot be said that the website corresponding with the disputed domain name unambiguously suggest either of those things. The Panel finds that one Internet user might form the view that the website is the (or, a) website controlled by the Complainants, whilst it is just as likely that another Internet user might see it as the website of a stockist of the Complainants’ goods. The Panel notes that the landing page has an “About Us” link which the Complainants have chosen not given include in evidence. It is not implausible that the “About Us” information makes clear the nature of the Respondent’s business in a way which satisfies the Oki Data case. The website does not appear to be operational at the time of this decision and the Wayback Machine Internet archive (“www.archive.org”) has no historical data for the web address. Accordingly, the Panel has not been able to discover more through its own efforts.
It has been said earlier that the Complainants’ bear the onus to show a prima facie case under paragraph 4(a)(ii) of the Policy. The fact that the Respondent has taken no part in these UDRP proceedings does not nullify that obligation. The Panel finds that the Complainants have not discharged the onus to show that the Respondent has no rights or legitimate interests in the disputed domain name and so decides that the Complainants have failed on the record in these proceedings to satisfy the second element of the Policy.
No findings required.
For the foregoing reasons, the Complaint is denied.
Debrett G. Lyons
Sole Panelist
Date: December 10, 2012