The Complainants are Dr. Martens International Trading GmbH of Gräfelfing, Germany, and Dr. Maertens Marketing GmbH of Seeshaupt, Germany, represented by Beetz & Partner, Patent-und Rechtsanwälte, Germany.
The Respondent is Oak Park, Margaret S. of Chicago, Illinois, United States of America.
The disputed domain name <drmartens.me> is registered with GoDaddy.Com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on July 25, 2011, and in hardcopy on August 9, 2011. On July 25, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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, approved by the doMEn d.o.o (“doMEn”) (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy approved by the doMEn d.o.o (“doMEn”)(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 August 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 11, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 15, 2011.
The Center appointed David Perkins as the sole panelist in this matter on September 26, 2011. 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.
4.A.1 The Complainants are Dr. Martens International Trading GmbH (Complainant (1)) and Dr. Martens Marketing GmbH (Complainant (2)).
The “Dr. Martens” trademark
4.A.2 The Complainants are the proprietors of the following registered trademarks
Countries | Reg. No. | Marks | Classes of Goods and Services | Dates of Application and Registration |
|
European Community |
CTM 59147 |
DR. MARTENS |
14, 16, 18, 25, 35 and 37 |
April 1, 1996 March 3, 1999 |
|
United States of America |
1,798,791 |
DR. MARTENS |
25 |
March 14, 1990 October 12, 1993 |
|
United States of America |
2,838,397 |
DR. MARTENS |
35 |
June 26, 2002 May 4, 2004 |
|
United States of America |
1,454,323 |
DR. MARTENS |
25 |
June 9, 1983 August 25, 1987 |
|
United States of America |
2,397,734 |
DOC MARTENS |
25 |
October 18, 1999 October 24, 2000 |
|
Canada |
420,485 |
DR. MARTENS |
25 |
December 17, 1990 December 10, 1993 |
|
Canada |
625,884 |
DR. MARTENS |
35 |
June 25, 2002 November 18, 2004 |
4.A.3 The distinctive and well-known DR. MARTENS boots and shoes were first sold in the 1950s. DR. MARTENS branded footwear, clothing and accessories is sold worldwide through retailers and also online through the “Dr. Martens” website located at “www.drmartens.com”. That domain name was created in March 1999. Exhibited to the Complaint are articles describing the history of the famous footwear and the development of the Complainants’ business from its inception.
4.B.1 In the absence of a Response, nothing is known of the Respondent except what is set out in the Complaint. That is as follows. First, the disputed domain was created on January 10, 2011.
4.B.2 Second, the disputed domain name resolves to a website which features links to advertisements for footwear. Those feature not only the Complainants’ “Dr. Martens” footwear, but also brands which compete with the Complainants. For example, Ranger, Chucks, Sneakers and Clarks.
The disputed domain name is identical to six of the seven Complainants’ registered trademarks set out in paragraph 4.A.2 above. Only the period / full stop between “Dr” and “Martens” has been omitted. As to the seventh registration, “Doc” is an alternative abbreviation to “Dr” for “doctor”.
5.A.2.1 The Complainants’ case is that the Respondent’s use of the disputed domain name is likely to mislead and deceive consumers into believing that the Respondent has a sponsorship, affiliation or association with them, which is not the case. That use is, the Complainants say, an illegitimate, commercial and unfair use of the disputed domain name to misleadingly divert consumers and tarnish its well-known DR. MARTENS trademark. Consequently, the Complainants’ case is that the Respondent has no rights to or legitimate interests in the disputed domain name.
5.A.2.2 In this respect, the Complainants cite two decisions under the Policy where the respondent was held to have no such rights or interests in the disputed domain names <drmartenshoes.com>
Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Above.com Domain Privacy/Transure Enterprise Ltd, WIPO Case No. D2009-1253 and <doctormartinshoes.com>, Dr Martens v. PrivacyProtect.org, WIPO Case No. D2010-1342..
5.A.3.1 The Complainants’ case is that the Respondent’s use of the disputed domain name falls within paragraph 4(b)(iv) of the Policy. This is based on the links to competitor footwear at the website to which the domain name resolves: see, paragraph 4.B.2 above.
5.A.3.2 The Complainants also assert that likely receipt of click-through revenue by the Respondent from such use of the website constitutes “commercial gain” for the purposes of that paragraph of the Policy. In that respect, the Complaint cites the decisions in Axcan Pharma Inc. v. BWI Domain Manager c/o Domain Manager, NAF Claim No. 1217153 and McLaughlin Gormley King Company v. BWI Domains c/o Domain Manager, NAF Claim No.1230837. In the former, the disputed domain name was identical to the complainant’s CANASA trademark for its pharmaceutical products and resolved to a website containing hyperlinks, some of which competed with the complainant’s pharmaceutical business from which links the respondent received click-through revenue from each redirected Internet user. In the second case, the complainant manufactured and sold internationally pesticides under is MGK trademark The disputed domain name <mgk.info> was identical to that trademark and resolved to a website with links to the complainant’s competitors in the pesticides industry. Again, the respondent received click-through revenue from that website. In both cases, findings of registration and use in bad faith were made.
5.A.3.3 Furthermore, given the notoriety of the DR. MARTENS trademark, the Complainants say it is inconceivable that the Respondent did not know of that trademark when registering the identical disputed domain name in January 2011. Consequently, such is, the Complainants say, opportunistic bad faith on the part of the Respondent of the type found in a number of cases decided under the Policy, including Bell South Intellectual Property Corporation v. Serena, Axel , WIPO Case No. D2006-0007 where the disputed domain name was <bellsouthvoip.com>.
As noted above, no Response has been filed.
6.1 The Policy paragraph 4(a) provides that the Complainants must prove each of the following in order to succeed in an administrative proceeding
(i) that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) that the Respondent 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.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interest in the disputed domain name.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.
6.5 The Complainants have demonstrated rights in the registered DR. MARTENS and DOC MARTENS trademarks. They have also produced evidence relating to the very well-known reputation of those trademarks.
6.6. But for the period / full stop in the Complainants’ DR. MARTENS trademark, the disputed domain name is identical to the trademark. Accordingly, the Complaint satisfies the requirements of paragraph 4(a)(i) of the Policy.
6.7 In the absence of a Response, there is no evidence that the Respondent could demonstrate such rights or legitimate interests under paragraph 4(c) of the Policy.
6.8 Since the website to which the disputed domain name resolves contains links to competitor footwear brands as well as to the Complainants’ DR. MARTENS brand, this is a clear case where Internet users may be misleadingly diverted to such other footwear and the DR. MARTENS trademark could potentially be tarnished. This does not, in the Panel’s view, fall into the category of cases where the Respondent is using the Complainant’s trademark as a bona fide reseller of the Complainant’s products subject to compliance with the so-called Oki Data principles (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (WIPO Overview 2.0”), section 2.3).
6.9 In the circumstances, the Complaint meets the requirement of paragraph 4(a)(ii) of the Policy.
6.10 In the Panel’s view, the facts in this case fall within paragraphs 4(b)(iv) of the Policy and conclusively demonstrate bad faith registration and use of the disputed domain name. This is based on the facts set out in paragraphs 4.B.2 and 5.A.3 above. Accordingly, the requirements of paragraph 4(a)(iii) of the Policy are met by the Complainants.
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 <drmartens.me> be transferred to the Complainants.
David Perkins
Sole Panelist
Dated: October 4, 2011