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 Chen Fangwei of Nanchang, Jiangxi Province, China.
The disputed domain name <drmartens.pw> is registered with Shanghai Meicheng Technology Information Development Co., Ltd. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2014. On January 28, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 11, 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.
On February 17, 2014, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On February 18, 2014, Complainants requested that English be the language of the proceeding. Respondent did not comment on the language of the proceeding by the specified due date.
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 in both Chinese and English, and the proceeding commenced on February 24, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 16, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 17, 2014.
The Center appointed Yijun Tian as the sole panelist in this matter on March 20, 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.
In accordance with paragraph 10(c) of the Rules, the Panel extended the decision due date to April 14, 2014.
Complainant Dr. Martens International Trading GmbH is a company incorporated in Gräfelfing, Germany; and Complainant Dr. Maertens Marketing GmbH is a company incorporated in Seeshaupt, Germany. Complainants’ trademark DR. MARTENS is a famous international brand for footwear, clothing and accessories, particularly renowned for its distinctive shoes and boots, first sold in the late 1950’s. Dr. Martens products are available for sale at retailers throughout the world.
Complainants have exclusive rights in several DR. MARTENS trademarks (hereafter “DR. MARTENS Marks”). Complainants are the owners of well-known registered DR. MARTENS Marks globally, including the United States (since 1983), Australia (since 1988), European Union (since 1996) and international registration covering China (since 1991). It also owns the domain name <drmartens.com> to sell Dr. Martens products online.
Respondent is Chen Fangwei of Nanchang, Jiangxi Province, China. The disputed domain name <drmartens.pw> was registered by Respondent on June 15, 2013, long after the DR. MARTENS Marks became internationally famous.
Complainants are owner of well-known registered DR. MARTENS Marks globally (see Annex 3 to the Complaint), including the United States (since 1983), Australia (since 1988), the European Union (since 1996) and international registration covering China (since 1991). It also owns the domain name <drmartens.com> to sell Dr. Martens products online.
Dr. Martens is a famous international brand for footwear, clothing and accessories, particularly renowned for its distinctive shoes and boots, first sold in the late 1950’s. Dr. Martens products are available for sale at retailers throughout the world.
The disputed domain name <drmartens.pw> is phonetically and visually identical to Complainants’ trademarks.
Respondent has been using the disputed domain name as a parked website for links to unauthorized footwear selling sites for Dr. Martens products but also for footwear of third parties being direct competitors of Complainants. Respondent has never been authorized hereto.
Respondent is not entitled to use Complainants’ registered and well-protected trademarks as its domain name without being authorized hereto. This is a clear case of trademark infringement.
By choosing and using the disputed domain name, Respondent is likely to mislead and deceive consumers into believing that it has a sponsorship, affiliation or approval with the original DR. MARTENS Marks owners/licensees/customers when this is not the case. Respondent is clearly making of false representations that it and/or its website have a sponsorship, approval or association with Complainants.
The use of the disputed domain name and associated website by Respondent causes confusion as to the identity of the entity behind the disputed domain name/website. The Internet user seeing the disputed domain name will believe or be likely to believe that the disputed domain name is registered to, operated or authorized by, or otherwise connected with Complainants.
Respondent is using the disputed domain name as a platform for offering links to entities selling footwear showing Complainants’ marks. The links to “Dr. Martens” as offered on the website at the disputed domain name have never been authorized by Complainants or their licensees.
Respondent has no rights or legitimate interests to the DR. MARTENS Marks. Respondent has knowingly registered the disputed domain name with the intention of deceiving and misleading Internet visitors by creating a likelihood of confusion with Respondent’s website or of a product or service of Respondent’s website.
Respondent is clearly making illegitimate commercial use of the disputed domain name for commercial gain and to tarnish Complainants’ trademarks. Respondent is hereby passing off the trademark owners’ goodwill and reputation in the DR. MARTENS Marks and the “Dr. Martens” name.
By choosing the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online locations, by creating a likelihood of confusion with the Complainants’ trademarks as to the source, sponsorship or affiliation or endorsement of Respondent’s website or location.
Respondent is linking the disputed domain name with unauthorized websites which are selling competitors’ and Dr. Martens footwear, e.g. linking the disputed domain name with another third party’s website “www.fagbao.taobao.com”. No authorization has been given by the Complainants hereto. This linked website is being used in an unauthorized manner as well.
Respondent is likely to make an illegitimate commercial and unfair use of the disputed domain name with the clear intention for commercial gain misleading to divert Internet visitors and to tarnish the DR. MARTENS Marks.
Respondent does not have any rights nor legitimate interests in respect of the disputed domain name.
Respondent must have had knowledge of Complainants’ right to the DR. MARTENS Marks when it registered the disputed domain name, since Complainants’ trademarks are widely well-known trademarks.
Respondent acted in bad faith when registering the disputed domain name because, widespread and longstanding advertisement and marketing of goods and services under Complainants’ trademarks, the inclusion of the entire trademark in the disputed domain name and the identity of products implied by addition of a completely descriptive element, suggests knowledge of Complainants’ rights in the trademarks.
Former UDRP decisions show that Respondent’s awareness of Complainants’ trademark rights at the time of registration suggest opportunistic bad faith registration.
Since Respondent must have knowledge of Complainants’ rights in the DR. MARTENS Marks at the moment it registered the disputed domain name, and since Respondent has no rights or legitimate interests in the disputed domain name, it is established that the disputed domain name was registered in bad faith.
Respondent is intentionally attempting to attract Internet users for commercial gain. Respondent is creating a likelihood of confusion with Complainants’ trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. It is more than likely that Respondent is profiting of the goodwill associated with Complainants’ trademarks by accruing click-through fees for each redirected and confused Internet user. These circumstances support a finding of bad faith use pursuant to paragraph 4(b)(iv) of the Policy.
Respondent did not reply to Complainants’ contentions.
The language of the registration agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainants and Respondent to the effect that the language of the proceeding should be English. Complainants filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:
(a) Fact is that the Registrar is an ICANN Registrar and usually has knowledge of the English language;
(b) The website at the dispute domain name <drmartens.pw> has been used as a multi-lingual site;
(c) All documentation provided with the Complaint is in English. Therefore, it would make sense for practical as well as for legal reasons to conduct the proceeding in English.
Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances of the case. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states:
“in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and Complainants would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. Munhyunja, WIPO Case No. D2003-0585).
The Panel has taken into consideration the fact that Complainants are companies from Germany, and Complainants will be spared the burden of dealing with Chinese as the language of the proceeding. The Panel has also taken into consideration the facts that the website at the disputed domain name includes Latin characters “martens” and English word abbreviation “dr” (abbreviation of English word “doctor”) (Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).
On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence in the present proceeding to suggest that Respondent may have sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name <drmartens.pw > is registered in Latin characters and particularly in the English language, rather than Chinese script; (b) The content on the website at the disputed domain name is in multi-language, including English; (c) the website appears to have been directed to users worldwide, including both Chinese and English speakers; (d) the Center has notified Respondent of the proceeding in both Chinese and English, and Respondent has not objected to Complainants’ request that English be the language of the proceeding; and (e) the Center informed Respondent that it would accept a Response in either English or Chinese.
Considering these circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the Decision will be rendered in English.
Paragraph 4(a) of the Policy requires that Complainants must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainants have rights;
(ii) 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.
On the basis of the evidence introduced by Complainant and in particular with regards to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:
The Panel finds that Complainants have rights in the DR. MARTENS Marks acquired through registration. The DR. MARTENS Marks have been registered worldwide including in Australia, the United States, Canada, the European Union, and international registration covering China, and Complainants have a widespread reputation as a global company which manufactures footwear, clothing and accessories, particularly renowned for its distinctive shoes and boots.
The disputed domain name <drmartens.pw> comprises the DR. MARTENS Mark in its entirety. The disputed domain name only differs from Complainants’ trademarks by a top-level suffix of “.pw” to the DR. MARTENS Marks. This does not eliminate the identity or at least the confusing similarity between Complainants’ registered trademarks and the disputed domain name. WIPO Overview 2.0 states:
“The applicable top-level suffix in the domain name (e.g., “.com”) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark”. (paragraph 1.2).
Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
Generally a respondent “may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; PCCW-HKT DataCom Services Limited v. Yingke, ADNDRC Case No. HK0500065).
Mere addition of the descriptive term “.pw” as a suffix to Complainants’ trademarks fails to distinguish. (see ABB Asea Brown Boveri Ltd. v. A.B.B Transmission Engineering Co., Ltd., WIPO Case No. D2007-1466; Kabushiki Kaisha Toshiba dba Toshiba Corporation v. WUFACAI, WIPO Case No. D2006-0768).
Thus, the Panel finds that the suffix “.pw” is not sufficient to negate the confusing similarity between the disputed domain name and the DR. MARTENS Marks.
The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent has been known commonly by the disputed domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainants’ trademarks.
The overall burden of proof on this element rests with Complainants. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).
Complainants have rights in the DR. MARTENS Marks globally, including international registration covering China since 1991 which long precedes Respondent’s registration of the disputed domain name (June 15, 2013).
According to the Complaint, Complainants are the world’s leading company which manufactures a variety of footwear, clothing and accessories, particularly renowned for its distinctive shoes and boots, first sold in the late 1950’s. Dr. Martens products are available for sale at retailers throughout the world.
Moreover, Respondent is not an authorized dealer of Dr. Martens branded products. Complainants have therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:
(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the word “drmartens” in its business operation. There has been no evidence to show that Complainants have licensed or otherwise permitted Respondent to use the DR. MARTENS Marks or to apply for or use any domain name incorporating the DR. MARTENS Marks;
(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name <drmartens.pw> on June 15, 2013, long after the DR. MARTENS Marks became internationally famous. The disputed domain name is identical or confusingly similar to Complainant’s DR. MARTENS Marks.
(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainants, Respondent has been using the disputed domain name as a parked website for links to unauthorized footwear selling sites for Dr. Martens products but also for footwear of third parties being direct competitors of Complainants. Respondent is linking the disputed domain name with unauthorized websites which are selling competitors’ and Dr. Martens footwear, e.g. linking the disputed domain name with another third party’s website at “www.fagbao.taobao.com”, which is being used in an unauthorized manner as well.
The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to Complainants who are the owner of the trademark or service mark or to a competitor of Complainants, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.
The Panel finds that Complainants have a widespread reputation in the DR. MARTENS Marks with regard to its products. Complainants have registered its DR. MARTENS Marks internationally, including international registration covering China (since 1991). Moreover, Respondent advertised Dr. Martens products (e.g. “Genuine dr. martens Verkauf”) and linked the disputed domain name with unauthorized websites which are selling competitors’ and purported Dr. Martens footwear, e.g. linking the disputed domain name with the website “www.fagbao.taobao.com”. Respondent would not have advertised Dr. Martens products on the website at the disputed domain name if it was unaware of DR. MARTENS Marks’ reputation. In other words, it is not conceivable that Respondent would not have had actual notice of Complainants’ trademark rights at the time of the registration of the disputed domain name. The Panel also finds that the DR. MARTENS Marks not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainants. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Moreover, Respondent has chosen not to formally respond to Complainants’ allegations. According to the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”. (see also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787). Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with Complainants’ advertised Dr. Martens products branded products.
Complainants have adduced evidence to prove that by using a confusingly similar disputed domain name, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites” offering Complainant’s Dr. Martens branded products and services without authorization. Complainants claimed that Respondent is clearly making illegitimate commercial use of the disputed domain name for “commercial gain” and to tarnish Complainants’ trademarks.
To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. and Wal-Mart China Co. Ltd v. Liangchenyong, ADNDRC Case No. HKcc-0800008).
Given the widespread reputation of the DR. MARTENS Marks, the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainants, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the disputed domain name is resolved. In other words, Respondent has, through the use of a confusingly similar domain name, created a likelihood of confusion with the DR. MARTENS Marks. Noting also that apparently no clarification as to Respondent’s relationship to Complainants is made on the homepage of the disputed domain name, potential partners and end users are led to believe that the website at the disputed domain name <drmartens.pw> is either Complainants’ website or the website of official authorized partners of Complainants, which it is not. Moreover, Respondent has not responded formally to the Complaint. The Panel therefore concludes that the disputed domain name was used by Respondent in bad faith.
In summary, Respondent, by choosing to register and use a domain name which is confusingly similar to Complainants’ trademarks, intended to ride on the goodwill of Complainants’ trademarks in an attempt to exploit, for commercial gain, Internet users destined for Complainants. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website to which the disputed domain name resolves is indicative of registration and use of the disputed domain name in bad faith.
The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.
For all 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 <drmartens.pw> be transferred to Complainants.
Yijun Tian
Sole Panelist
Dated: April 10, 2014