Complainants are Dr. Martens International Trading GmbH of Graefelfing and Dr. Maertens Marketing GmbH of Seeshaupt, Germany, represented by Beetz & Partner, Germany.
Respondent is Roberto Bolanero of Lima, Peru.
The disputed domain name <drmartensuruguay.com> (the “Domain Name”) is registered with eNom (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2014. On June 25, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 25, 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 July 3, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 23, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 24, 2014.
The Center appointed Clive L. Elliott QC as the sole panelist in this matter on July 29, 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.
Complainants have rights in the trademark DR. MARTENS (Complainants’ Trademark) that significantly pre-date Respondent’s registration of the Domain Name.
According to the Registrar, the Domain Name was registered on March 31, 2014.
Complainants state that they are the owners of numerous trademarks for DR. MARTENS worldwide, including in Uruguay. They contend that Complainants’ Trademark is a famous international brand for footwear, clothing and accessories and that it is particularly renowned for its distinctive shoes and boots; such shoes and boots first being sold in the late 1950’s.
As well as being available for sale at retailers throughout the world, Dr. Martens footwear, clothing and accessories are also available for sale online at “www.drmartens.com” (the “Dr. Martens website”).
Complainants contend that the Domain Name is a combination of the descriptive element “Uruguay” and the characterizing name “drmartens”. The Domain Name is phonetically similar to the Complainants’ Trademark and Complainants’ Trademark DR. MARTENS is identical to the “drmartens” in the Domain Name, being the distinctive part of the Domain Name. Complainants suggest that the addition of the descriptive term “Uruguay” does not prevent likelihood of confusion in the minds of Internet users.
Complainants assert that Respondent has been using the Domain Name as an online store using trademarks, logos and product images of Complainants in a fraudulent and unauthorized way. Complainants state that by choosing and using the Domain Name in this manner, Respondent is making false representations which are 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.
Complainants assert that the Domain Name has been used by Respondent in a manner which takes unfair advantage of and is detrimental to Complainants’ earlier rights and that the use of the Domain Name and associated website by Respondent causes confusion as to the identity of the entity behind the Domain Name. The Internet user seeing the Domain Name will believe or be likely to believe that the Domain Name is registered to, operated or authorized by, or otherwise connected with Complainants.
Complainants state that the links to “Dr. Martens” as offered on the Domain Name website have never been authorized by them or their licensees and contend that Respondent is making illegitimate commercial use of the Domain Name for commercial gain and to tarnish Complainants’ Trademark.
Complainants further contend that Respondent is linking the Domain Name with unauthorized websites which are selling competitors and “Dr. Martens” footwear without being authorized or approved by the trademark owners or their licensees. He is for instance linking the Domain Name with other third party's websites (for example “Pinterest”) selling shoes produced by Complainants as well as shoes and clothing produced by competitors of Complainants.
Complainants claim that Respondent must have had knowledge of Complainants’ right to the “Dr. Martens” trademark when Respondent registered the Domain Name, especially as Complainants’ Trademarks are widely well-known, and that awareness of Complainants’ Trademark rights at the time of registration suggests opportunistic and bad faith registration by Respondent.
Complainants state that Respondent must have had knowledge of their rights in the DR. MARTENS Trademarks when Respondent registered the Domain Name, as Complainants’ Trademark is widely and well-known and Respondent has combined them in the Domain Name with the descriptive word “Uruguay”.
The Respondent did not reply to the Complainants’ contentions.
Complainants assert that they have traded since the late 1950’s and are renowned for their distinctive shoes and boots. Complainants provide clear evidence that they are the owners of various trademarks for DR. MARTENS and DOC MARTENS and that Complainants’ Trademark is a famous international brand for footwear, clothing and accessories. Complainants assert that their reputation extends to the country of Uruguay.
The Panel accepts that Complainants’ Trademark is exclusively associated with Complainants. It is clear that by virtue of their long-standing use that an unrelated entity or person using a domain name containing or comprising as a material part Complainants’ Trademark is likely to lead to members of the public being confused and deceived.
Complainants submit that the Domain Name is a combination of the descriptive element “Uruguay” and the characterizing name “drmartens” and that the addition of the descriptive term “Uruguay” does not prevent likelihood of confusion in the minds of Internet users. This submission has merit. The Domain Name is at least confusingly similar to Complainants’ Trademark in so far as it incorporates “Dr Martens” in its entirety with the addition of a geographical description, namely “Uruguay”, which fails to distinguish the Domain Name from Complainants’ Trademark.
As noted above, Complainants assert that Respondent has been using the Domain Name in an online store using trademarks, logos and product images of Complainants in a fraudulent and unauthorized way. This statement is not challenged by Respondent. The conduct is likely to confuse and deceive consumers as to the true nature of the goods they are purchasing and the origin of those goods. Further, the overall impression must be that the Domain Name is necessarily connected in some way to Complainants and/or Complainants’ Trademark.
On this basis, the Panel finds:
a) Complainants have rights in respect of Complainants’ Trademark.
b) The Domain Name is identical to or confusingly similar to Complainants’ Trademark.
Accordingly, the Panel is satisfied that the first element of the Policy has been met.
As noted above, Complainants contend that Respondent has been using the Domain Name in an online store using trademarks, logos and product images of Complainants. It is not difficult to infer, in the absence of any denial that through these activities Respondent is using or has used a deliberately similar version of Complainants’ Trademark and Complainants’ significant goodwill and reputation to attract Internet traffic.
The Panel concludes that the Domain Name has been employed as a means of improperly diverting Internet customers. In those circumstances, it is difficult to see how Respondent’s conduct could be characterized as legitimate and thus permissible.
On this basis, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
The Panel is satisfied that the second element of the Policy has been met.
Having reached the view that Respondent has attempted to attract Internet users to its or others websites for commercial gain, thereby creating a likelihood of confusion with Complainants and/or Complainants’ Trademark, in the absence of any explanation from Respondent the Panel finds that it registered and used the Domain Name in bad faith. That is, so as to take advantage of Internet users who may wish to purchase Complainants’ genuine and well-known branded goods.
Further, the Panel is satisfied that bad faith registration is supported by the fact that Complainants’ Trademark significantly pre-dated Respondent’s registration of the Domain Name and in light of the long-established use and reputation in, inter-alia, Uruguay that Respondent knew or ought to have known of Complainants’ prior rights.
The Panel thus has no difficulty in concluding that the third element of the Policy has been met.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <drmartensuruguay.com> be transferred to Complainants.
Clive L. Elliott QC
Sole Panelist
Date: August 15, 2014