The Complainants are “Dr. Martens” International Trading GmbH of Graefelfing, Germany and “Dr. Maertens” Marketing GmbH of Seeshaupt, Germany, represented by Beetz & Partner, Germany.
The Respondents are Domain Administrator, See PrivacyGuardian.org of Phoenix, Arizona, United States of America (“United States”) and Angie Arendt of Lawrenceville, Georgia, United States.
The disputed domain names <best-drmartens.com>, <drmartens-online.com> and <drmartens-onsale.com> are registered with NameSilo, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2018. On February 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 2, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 12, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 14, 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 the Respondent of the Complaint, and the proceedings commenced on February 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 14, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 15, 2018.
The Center appointed Alistair Payne as the sole panelist in this matter on March 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.
The Complainant manufactures and sells footwear, clothing and accessories under the “Dr. Martens” brand and mark throughout the world via a network of retailers and online through its website at “www.drmartens.com”. The Complainant owns trade mark registrations in numerous countries worldwide for its “Dr. Martens” mark, including United States trade mark No. 1454323 registered on August 25, 1987.
The disputed domain names were registered in the period November – December 2017 and each of the disputed domain names appears to resolve to a parking site.
The Complainant submits that it owns registered trade mark rights in its DR. MARTENS mark as set out above and that its mark is wholly contained in each of the disputed domain names. The fact that the disputed domain names contain respectively the additional elements “best”, “onsale” and “online” does not in any way distinguish each of the disputed domain names as according to the Complainant these are simply descriptive terms that are intended to attract consumers to purchase products at the website to which each of the disputed domain names resolve.
The Complainant asserts that its DR. MARTENS mark is very well-known and since having been first used in the 1950’s in relation to shoes is now a famous and international brand. It says that it has not authorised the Respondent’s use of its mark and its use in the disputed domain names is likely to mislead and deceive consumers into believing that he has a sponsorship, approval or affiliation with the Complainant, its licensees or mark, when this is not the case. The Complainant says that the Respondent has no right or legitimate interest to the DR. MARTENS mark and that its uses is likely to tarnish the Complainant’s mark and is unfair or detrimental to the Complainant’s rights.
As far as registration and use in bad faith is concerned, the Complainant submits that considering that its DR. MARTENS mark is so well-known, the Respondent must have been aware of it upon registration of the disputed domain names and that accordingly such registration was undertaken in opportunistic bad faith. The Complainant says further that it is likely that the Respondent is using the disputed domain names to intentionally attract Internet users for commercial gain by creating a likelihood of confusion with the Complainants’ trade marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites. The Complainant says that the Respondent is doing so by accruing click through fees for each redirected and confused Internet user.
The Respondent did not reply to the Complainant’s contentions.
The Complainant has demonstrated that it owns trade mark registrations in numerous countries worldwide for its DR. MARTENS mark, including United States trade mark No. 1454323 registered on August 25, 1987.
Each of the disputed domain names wholly incorporates the Complainant’s DR. MARTENS mark and adds to it a modifier such as respectively the words “best”, “online” or “onsale” together with a hyphen as appropriate. Each of these terms are common English words that are used in each case as a descriptor in relation to the Complainant’s DR. MARTENS mark. Accordingly, none of these terms serve to distinguish the disputed domain names from the Complainant’s mark and the Panel finds that each of the disputed domain names are confusingly similar to the Complainant’s DR. MARTENS mark. As a result the Complaint succeeds under this element of the Policy.
The Complainant says that it has not authorised the Respondent’s use of its mark and that the Respondent’s use of its mark in the disputed domain names is likely to mislead and deceive consumers into believing that the Respondent is sponsored or approved by or has an affiliation with the Complainant or its licensees when this is not the case. The Complainant also submits that the DR. MARTENS mark, having been used
world-wide since the 1950’s, has a very considerable degree of renown attaching to it and that the Respondent chose each of the disputed domain names knowingly and for its own purposes.
The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in each of the disputed domain names. There is no evidence that the Complainant has authorised or licensed the Respondent’s use of its DR. MARTENS mark and, considering the degree of renown attaching to the Complainant’s mark following its long use in many countries, it seems extremely unlikely that the Respondent is commonly known by the name “Dr Martens”, or for the reasons further set out under section C below, that it chose to incorporate the mark into each of the disputed domain names without any prior knowledge of the Complainant’s rights or for bona fide noncommercial reasons.
As the Complainant has made out a prima facie case under this element of the Policy and as the Respondent has failed to rebut this case, the Panel finds that the Complaint has succeeded in demonstrating that the Respondent has no rights or legitimate interests in the disputed domain names and that the Complaint also succeeds under this element of the Policy.
By the date of registration of the disputed domain names in late 2017, the DR. MARTENS mark had been in use worldwide for more than 60 years. On this basis and considering also that the DR. MARTENS mark is quite a distinctive mark and through use has developed a significant degree of renown, the Panel finds it more likely than not that the Respondent was well aware of the Complainant’s mark when it registered each of the disputed domain names.
The Panel notes that each of the disputed domain names resolves to a parking site. This amounts to a passive holding and the factors usually reviewed by panels in this regard are set out at paragraph 3.3 of the WIPO Overview of WIPO Panel View on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). In view of the very significant degree of international repute attaching to the DR. MARTENS mark, the failure of the Respondent to submit a response or to provide evidence of contemplated good faith use, the Respondent’s use of a privacy service to hide its identity, the recent registration of the disputed domain names and the fact that the key distinctive element in each disputed domain name is the DR. MARTENS mark in the manner as discussed under section A above, the Panel is of the view that the Respondent’s registration and passive holding of each of the disputed domain names is more likely than not to have been in bad faith. Accordingly, the Panel finds that the Complaint also succeeds under this element of the Policy.
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 names <best-drmartens.com>, <drmartens-online.com> and <drmartens-onsale.com> be transferred to the Complainant.
Alistair Payne
Sole Panelist
Date: April 4, 2018