WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

“Dr. Martens” International Trading GmbH ,“Dr. Maertens”

Marketing GmbH v. Robert Stewart, Hush IP LLC

Case No. D2017-0863

1. The Parties

The Complainants are “Dr. Martens” International Trading GmbH of Graefelfing, Germany; “Dr. Maertens” Marketing GmbH of Seeshaupt, Germany, represented by Beetz & Partner, Germany.

The Respondent is Robert Stewart, Hush IP LLC of Phoenix, Arizona, United States of America (“US”).

2. The Domain Name and Registrar

The disputed domain name <buy-dr-martens.com> is registered with PSI-USA, Inc. dba Domain Robot (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2017. On April 28, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 2, 2017, 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 (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 May 5, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 25, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 29, 2017.

The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on June 9, 2017. 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. Factual Background

The Complainants are in the business of manufacturing and selling footwear, clothing and accessories which they identify with the trademark DR. MARTENS. The goods are available through retailers in different parts of the world, as well as online at the website “www.drmartens.com”.

The Complainants own several trademark registrations for the word mark DR. MARTENS including, among others, the following:

European Union registration No. 59147 dated March 3, 1999, covering various goods particularly footwear and clothing in class 25 and retail services in class 35;

Australian registration No. 500799 dated December 5, 1988, in class 25;

Australian registration No. 652619 dated February 8, 1995, in class 35;

Canadian registration No. 420485 dated December 10, 1993, in class 25;

Canadian registration No. 625884 dated November 18, 2004 in class 35;

US registration No. 1454323 dated August 25, 1987, in class 25 and

International registration No. 575311 dated July 18, 1991, in class 25.

The disputed domain name <buy-dr-martens.com> was registered on November 19, 2014.

The disputed domain name is used to host a parking website with links to advertisements for the sale of footwear, particularly boots, and of Dr. Martens footwear on websites which are not authorized by the Complainants.

5. Parties’ Contentions

A. Complainants

The Complainants assert (i) that the disputed domain name <buy-dr-martens.com> is identical or confusingly similar to the mark DR. MARTENS in which the Complainants have rights; (ii) that the Respondent has no rights of legitimate interests in respect of the disputed domain name; and (iii) that the Respondent has registered and uses the disputed domain name in bad faith.

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 1950s.

The Respondent is suspected to be using the disputed domain name as a pay-per-click (“PPC”) site using as a keyword “dr-martens”, as shown in the print of keyword hits of “dr-martens” annexed to the Complaint.

The Respondent is linking the disputed domain name <buy-dr-martens.com> with unauthorized websites which are selling competitor and DR. MARTENS footwear without being authorized by the Complainants or their licensees.

The Complainants’ trademark DR. MARTENS is a widely and well-known trademark and the Respondent has combined it in the disputed domain name with the further element “buy” and some hyphens. The Respondent’s awareness of the Complainants’ trademark DR. MARTENS at the time of registration of the disputed domain name suggests opportunistic bad faith registration.

The Respondent is clearly making a false representation that it and/or its website have a sponsorship, approval or association with the original DR. MARTENS trademark owners and licensees, which is not the case.

The Respondent is passing off the Complainants’ goodwill and reputation in the DR. MARTENS trademark to confuse Internet users for commercial gain.

Finally, the Complainants request the Panel to order the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that a complainant must prove each of the following three elements to obtain an order for the disputed domain name to be transferred:

(i) the disputed domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;

(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.

On the basis of the evidence introduced by the Complainants, the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel considers that under the Policy the disputed domain name <buy-dr-martens.com> is identical and confusingly similar to the trademark DR. MARTENS in which the Complainants have rights.

The Complainants’ trademark is totally included in the disputed domain name. The inclusion of the non-distinctive word “buy” and the added two hyphens in the disputed domain name <buy-dr-martens.com> are clearly insufficient to avoid confusion in the minds of Internet users.

The word “buy” is a mere proposition that the offered products should be bought and does not constitute a distinctive feature in the disputed domain name.

Pursuant to section 1.11 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) the Top-Level Domain (“TLD”) “.com”, is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.

Therefore, the Complaint has succeeded on this first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The second element that the Complainants must prove pursuant to paragraph 4(a)(ii) of the Policy is that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Policy in paragraph 4(a) sets out various ways in which a respondent may demonstrate rights or legitimate interests in a domain name.

Although the Policy states that a complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative, i.e., that a respondent has no rights or legitimate interests in a domain name. It has therefore become generally accepted under the Policy that, once a complainant has presented a prima facie showing of a respondent’s lack of rights or legitimate interests in a domain name, the burden of production of evidence therefore shifts to the respondent. The respondent must then produce evidence to demonstrate its rights or legitimate interests in the domain name in order to refute the prima facie case.

The Complainants have not in any way granted Respondent rights to use their mark, and are in no way affiliated with the Respondent. Neither has the Respondent asserted any rights or legitimate interests in the disputed domain name. This is sufficient for the Panel to conclude that the Complainants have made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. See GGG Filmproduktion und Vertrieb e.K. v. E4 Group and Frank Jensen, WIPO Case No. D2006-1177. Thus, the burden of production of evidence has effectively been shifted to the Respondent, who did not reply to the Complainants’ contentions and, therefore, has not made such showing. Thus, the Complainants are deemed to have satisfied the second element (see section 2.1 of the WIPO Overview 3.0).

Additionally, there is no evidence that the Respondent is commonly known as or identified by the disputed domain name <buy-dr-martens.com>. Furthermore, there is no evidence showing that the Respondent operates a business or any other organization under the disputed domain name.

In view of the foregoing, and in absence of a plausible explanation from the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

In accordance with paragraph 4(a)(iii) of the Policy, the third element that a complainant must prove is that the domain name has been registered and is being used in bad faith.

The Policy in paragraph 4(b) sets out various circumstances, which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith.

The well-known character of the Complainants’ trademark DR. MARTENS has been recognized by UDRP panels in prior cases (see “Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. DomainWhois Protection Service / wuqomgfeng, WIPO Case No. D2012-138 (<buydrmartenshoes.com>) and “Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. Above.com DomainPrivacy/Transure Enterprpise Ltd, WIPO Case No. D2009-1253 (<drmartenshoes.com>)).

It is well accepted that the inclusion of well-known marks in a domain name constitutes evidence of bad faith, particularly when the products offered through the website to which the disputed domain name relates are similar to the products produced and marketed under the mark of the trademark owner.

The disputed domain name <buy-dr-martenes.com> includes the Complainants’ well-known DR. MARTENS trademark as the only distinctive feature therein. Clearly, this suggests to Internet users a relationship with the Complainants, which does not exist.

Therefore, the Panel considers that the Respondent registered and uses the disputed domain name with the intention to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademarks of the Complainants as to source, sponsorship, affiliation, or endorsement of its website or location, as per paragraph 4(b)(iv) of the Policy.

It is more than likely that the Respondent is illegitimately profiting from the goodwill and fame associated with the Complainants’ well-known trademark DR. MARTENS by accruing click-through fees for each redirected and confused Internet user. (See “Dr.Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. Above.com Domain Privacy/Transure Enterprpise Ltd, WIPO Case No. D2009-1253).

In view of the cumulative circumstances of the case, and in absence of a rebuttal by the Respondent, the Panel finds that the Respondent both registered and is using the disputed domain name in bad faith and that the Complainants have therefore made out the third element under the Policy.

7. Decision

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 name <buy-dr-martens.com> be transferred to the Complainants.

Miguel B. O’Farrell
Sole Panelist
Date: June 22, 2017