Westmore · UDRP DecisionDrmartensukstore.com
The Panel ordered transfer of drmartensukstore.com after finding all three UDRP elements satisfied. The domain wholly incorporated the DR. MARTENS mark with the descriptive terms “uk” and “store,” suggesting a United Kingdom Dr. Martens webstore. The Respondent was not authorized to use the mark, did not respond, and used the domain for a website displaying the Complainants’ word and logo marks and products appearing identical or very similar to their products. The Panel found this was not a bona fide activity and constituted intentional attraction of Internet users for commercial gain through confusion under paragraph 4(b)(iv) of the Policy.
The timeline behind drmartensukstore.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind drmartensukstore.com — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
The decision illustrates how a domain combining an entire trademark with a geographic abbreviation and a retail term can increase, rather than reduce, confusion when it suggests an official national webstore. The associated website’s replication of word and logo marks and display of closely similar products supplied strong evidence against legitimate interests and supported commercial-confusion bad faith under paragraph 4(b)(iv).
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION “Dr. Martens” International Trading GmbH / “Dr. Maertens” Marketing GmbH v. Joan Mitchell Case No. D2018-0226 1. The Parties 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 Respondent is Joan Mitchell of Fallon, Montana, United States of America (“United States”). 2. The Domain Name and Registrar The disputed domain name <drmartensukstore.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”). 3. Procedural History 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 name. On February 3, 2018, 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 February 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 8, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 9, 2018. The Center appointed Alistair Payne as the sole panelist in this matter on March 21, 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. 4. Factual Background 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 name was registered on December 25, 2017 and resolves to a website that features the “Dr. Martens” word and logo marks and appears to be selling products that are identical or similar to the Complainant’s products as sold on its own website. 5. Parties’ Contentions A. Complainant 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 the disputed domain name. The fact that the disputed domain name contains respectively the additional elements “uk” and “store” does not in any way prevent a likelihood of confusion or distinguish the disputed domain name according to the Complainant. It rather says that these terms are used descriptively as a sales proposition that the products on offer could be bought or derived from the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) and that the term “store” is a synonym for “shop” and indicates a place where the goods can be purchased. 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 the Respondent is using the disputed domain name for an on-line shop selling footwear and accessories with the DR. MARTENS mark on them and that it believes that the Respondent is selling counterfeit products through the site. The Complainant says that the Respondent’s use of the disputed domain name 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 use in this way is unfair or detrimental to the Complainant’s rights and is an illegitimate commercial use that passes off and tarnishes the Complainant’s mark. None of this, says the Complainant, points to the Respondent having any rights or legitimate interests in the disputed domain name. 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 name and that accordingly such registration was undertaken in opportunistic bad faith. The Complainant says further that the Respondent is using the disputed domain name 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 linking the disputed domain name with unauthorised websites which are selling competitors’ and DR. MARTENS’ footwear without approval or a license of the respective trade mark owners. This says the Complainant amounts to registration and use in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar 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. The disputed domain name wholly incorporates the Complainant’s DR. MARTENS mark and adds to it the words “uk” and “store”. When read as an expression together, these words literally suggest that the disputed domain name is the “Dr. Martens” webstore for the United Kingdom. They are descriptive and in no way distinguish the disputed domain name from the Complainant’s mark. It follows that the Panel finds that the disputed domain name is confusingly similar to the Complainant’s DR. MARTENS mark and as a result the Complaint succeeds under this element of the Policy. B. Rights or Legitimate Interests The Complainant says that it has not authorised the Respondent’s use of its mark in the disputed domain name or otherwise and that the Respondent is using the disputed domain name for an online shop selling footwear and accessories with the DR. MARTENS mark on them and that it believes that the Respondent is selling counterfeit products through the site. It says that the Respondent’s use of its mark in the disputed domain name 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 worldwide since the 1950’s, has a very considerable degree of renown attaching to it and that the Respondent chose the disputed domain name knowingly and for its own commercial purposes. The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence that the Complainant has authorised or licensed the Respondent’s use of its DR. MARTENS mark. Considering the degree of renown attaching to the Complainant’s mark following its long and widespread use in many countries, it seems extremely unlikely that the Respondent is commonly known by the name DR. MARTENS. Further, the Respondent’s unauthorised use of the Complainant’s mark, not only in the disputed domain but also on the website to which it resolves, together with the Complainant’s logo mark and in the context of displaying products for sale that look extremely like the Complainant’s products is not a bona fide business activity. There is no indication that the Respondent is a bona fide reseller of the Complainant’s products and in any event the Complainant asserts that it has not authorised the Respondent to make such a use of its marks. 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 and also for the reasons discussed under section C below, the Panel finds that the Complaint has succeeded in demonstrating that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complaint also succeeds under this element of the Policy. C. Registered and Used in Bad Faith By the date of registration of the disputed domain name on December 25, 2017, the evidence on the record is that 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 widespread 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 the disputed domain name. As noted under section B above the disputed domain name resolves to a website that makes use of the Complainant’s word and logo marks and appears to sell products that are identical or at least very similar to the Complainant’s products. In sum, the website at the disputed domain name is attempting to masquerade as either belonging to the Complainant, or as being authorised or licensed by the Complainant when, according to the Complainant this is not the case. Under paragraph 4(b)(iv) of the Policy, intentionally attempting to attract for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website amounts to evidence of registration and use in bad faith. This is precisely what the Respondent appears to have done in this case and the Panel finds that the Complainant has made out its case in terms of paragraph 4(b)(iv) of the Policy. As a consequence, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith and the Complaint also succeeds under this element of 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 <drmartensukstore.com> be transferred to the Complainant. Alistair Payne Sole Panelist Date: April 3, 2018
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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