“Dr. Martens” International Trading GmbH , “Dr. Maertens” Marketing GmbH v. Julien Corroy
Case No. D2015-1710
1. The Parties The Complainants are “Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH of Graefelfing, Germany and Seeshaupt, Germany, respectively, represented by Beetz & Partner, Germany.
The Respondent is Julien Corroy of Dakar, Senegal and Paris, France.
2. The Domain Name and Registrar The disputed domain name is registered with Gandi SAS (the “Registrar”).
3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2015. At this date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 28, 2015, 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.
On October 9, 2015 the Center informed that the Complaint had been submitted in English whereas, according to the Registrar, the language of the registration agreement for the disputed domain name was French. The Center requested the Complainants to provide: 1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or 2) submit the Complaint translated into French; or 3) submit a request for English to be the language of the administrative proceedings. In this communication, the Center also informed the Respondent that without any objection from him until October 14, 2015, the language of proceeding would be English. The Complainants requested English to be the language of the proceedings on October 12, 2015. The Respondent did not oppose. The Center, however, communicated with the Parties in both English and French.
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 October 20, 2015. The Complaint was sent at this date to the Respondent by mail, fax and email (the one provided by the Registrant, e.g., “[…]@gmail.com”). In accordance with the Rules, paragraph 5, the due date for the original Response was November 9, 2015. The Respondent acknowledged receipt of the Complaint on November 9, 2015. He also submitted a 20 days extension request to the Center and asked to forward him the Complaint and annex to another address email, e.g., “[…]@yahoo.fr”. The Center answered on November 11, 2015 by transferring the documents to the Respondent to the new email address and granted him an automatic 4-days extension. The Response due date was November 15, 2015. Nevertheless, on November 15, 2015 the Respondent reiterated his extension request, request which was submitted to the Complainants and which was refused from them. Finally, the Center decided to maintain the date of November 15, 2015 to file the Response. On the same date, the Respondent submitted his Response in French. Then, on November 19, 2015, the Respondent submitted to the Center a same Response, but more detailed and including further annexes.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on November 23, 2015. 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.
On December 14, 2015, the Panel directed the Center to issue an administrative Panel Order No. 1, inviting (1) the Respondent to “provide a duly signed letter – on the paper letterhead of Dr Martens herself – confirming her involvement in the website project alleged to be hosted at the disputed domain name ” by no later than December 18, 2015, and (2) the Complainant to react to the Respondent’s submission, if any, no later than December 21, 2015. On December 18 and 21, 2015, the Respondent sent an email to the Center, to which the Complainant responded on December 22, 2015.
4. Factual Background The Complainants in this proceeding, seated in Germany, have been for several years the right holders (either jointly or solely held by “Dr. Martens” International Trading GmbH) of numerous verbal trademarks consisting of the term “Dr. Martens”, notably in Australia (No. 500799 with a priority date as of December 5, 1988, and No. 652619 with a priority date as of February 8, 1995), CTM (No. 000059147, with a priority date as of March 25, 1996), United States of America (No. 1 454 323 with a priority date as of June 9, 1983), Canada (No. 420485 with a priority date as of December 17, 1990, and No. 625884 with a priority date as of November 18, 2004) and International (No. 575311, registered on July 18, 1991). All these marks have been registered in particular but not only under classes 25 and 35 of the Nice Classification with regards to footwear, clothing and accessories.
The Complainants commercialize their trademarks through the website “www.drmartens.com”.
The Respondent registered the disputed domain name on September 14, 2015. This domain name has never been active so far. The Respondent explains that the disputed domain name is meant to provide medical information, especially to African people and regarding HIV, thanks to the support and cooperation of Dr. A.-F.MARTENS, which would explain the chosen name for the disputed domain name.
Following the above referred Panel Order No. 1, the Respondent sent an email on December 18, 2015, written in French, in which he argued that he did not have easy access to the Internet due to regular travels in the Northern part of Senegal and surrounding countries. Arguing to currently be in Mauritania, the Respondent invited the Center to exactly let him know what the content of Dr. Martens declaration should be. On December 21, 2015, the Respondent reiterated such request. On December 22, 2015, the Complainants argued that, assuming that the disputed domain name would indeed be supported by Mrs A.-F. MARTENS, Mrs MARTENS did not appear to be qualified as a doctor and was thus not entitled to refer to herself as “Dr”.
5. Parties’ Contentions A. The Complainant The Complainants first allege that the disputed domain name is phonetically and visually identical to their DR. MARTENS trademarks.
The Complainants further consider that the Respondent has no rights or legitimate interest in the disputed domain name. The Complainants did neither authorize nor license any right to the Respondent with regards to their DR. MARTENS trademarks. In acting in this manner, the Respondent causes confusion as to the identity behind the disputed domain name. The Complainants argue that the Internet users will believe or are likely to believe that the disputed domain name is registered to, operated or authorized by, or otherwise connected with them. Indeed, the Complainants argue that the Respondent was using the disputed domain name as a parking website for links to footwear sites selling “Dr. Martens” products but also for footwear of the Complainants’ direct competitors.
The Complainants claim that the Respondent intentionally attempted to attract Internet users for commercial gain, by profiting off the goodwill associated to their DR. MARTENS trademarks. The Complainants finally allege that the Respondent was obviously aware of their rights upon the mark DR. MARTENS when he registered the disputed domain name. Consequently, the Complainants conclude that the disputed domain name has been registered and is being used in bad faith.
B. The Respondent The Respondent strongly opposes the Complainants’ arguments.
First, the Respondent argues that the Complainants have no rights regarding the term “Dr. Martens” in Africa.
Then, he considers that the Complainants did not succeed in demonstrating that the Complainants’ DR. MARTENS trademarks would amount to well-known trademark, especially in Africa, all the more than the Complainants would not market their products in Africa.
Finally, the Respondent indicates that the Complainants are acting in bad faith when they argue that the disputed domain name would have been used as a parking website for links to footwear selling sites for “Dr. Martens” products and for the Complainants’ direct competitors, since there is no element in the file that would support such line of arguments.
6. Discussion and Findings Paragraph 15(a) of the Rules instructs this Panel to “[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Pursuant to paragraph 4(a) of the Policy, the Complainant 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 the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and
(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.
A. Procedural issues
Two issues need to be assessed by the Panel prior to turning to the merits.
First, while the Complaint was submitted in English, it turns out that the registration agreement was in French, so that French would ordinarily be the governing language of the proceedings. In response to the notification sent by the Center on October 9, 2015, the Complainants however requested English to be the language of the proceedings, to which the Respondent did not oppose. Considering the fact that the Respondent proves to understand the English language and did not oppose for it to be the language of the proceedings, the Panel accepts to render the decision in English.
Second, the Response was sent by the Respondent to the Center on November 15, 2015 in French, before being completed on November 21, 2015, including with regards to Annexes. The Panel sees no reason to object to the submission of the Response in French, which is the language of the registration agreement, but shall however rendered its decision in English as stated above. The Panel considers that, the Response having been submitted prior to its appointment, the Response and its Annexes shall be taken into account to rule on the merits of the case.
According to the Policy, paragraph 4(a)(i), the Complainants have to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainants prove to be the holder of numerous verbal trademarks DR. MARTENS. The disputed domain name wholly incorporates the Complainants’ mark. The only difference between the Complainants’ mark and the disputed domain name is the addition of the new generic Top-Level Domain (“gTLD”) “.xyz”. Moreover, the mere absence of the point “.” in the disputed domain name does obviously not exclude the likelihood of confusion resulting from the incorporation of the trademark DR. MARTENS in its entirety in the disputed domain name.
UDRP panels widely agree that incorporating a trademark into a domain name is sufficient to establish that a domain name is identical or confusingly similar to a registered trademark for purpose of the Policy (see, e.g.,Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002 0358; and F. Hoffmann-La Roche AG v. Relish Enterprises, WIPO Case No. D2007 1629), as the mere addition of a gTLD does not serve to differentiate the domain name from the mark (see, e.g., Al Jazeera Media Network v. James Harden, WIPO Case No. DTV2014-0003).
As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied.
C. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainants have to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
As the panel stated in Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, demonstrating that the respondent has no rights or legitimate interests in the domain name “would require complainant to prove a negative, a difficult, if not impossible, task”. Thus, in that decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion”. Following that decision, subsequent UDRP panels developed a consensus view that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, it is the respondent’s burden to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied to paragraph 4(a)(ii) of the Policy (see, e.g., paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
The Complainants argue that they would have no business or other relationships with the Respondent. As a result, the Complainants would thus have made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name.
To support their claims, the Complainants further allege that the disputed domain name would be linked to a parking website consisting of links to competitors’ products notably. They however do not provide the Panel with any supporting evidence to that effect, as the only related piece of evidence consists of a print screen of the web page of the disputed domain name which mentions that is not available.
On his side, the Respondent explains that the registration of the disputed domain name would have been made to offer medical information to African people regarding HIV. The purpose of the choice of the disputed domain name would relate to the Doctor A.-F. Martens, a doctor that proves to have worked for several years in Africa, notably in Senegal, and who has notably participated to a document concerning a National forum of HIV researches in 1999.
Considering the absence of any written documents to support such line of arguments, the Panel nevertheless deemed it fair to offer the Respondent an opportunity to provide such document. The Center’s Panel Order No. 1 thus clearly invited the Respondent to “provide a duly signed letter – on the paper letterhead of Dr. Martens herself – confirming her involvement in the website project alleged to be hosted at the disputed domain name ”. The Panel Order could not be clearer, and there was no reason for the Respondent to try and once again argue that he was not in a position to submit a response within the granted deadline and to request the Center to clarify what would have been expected from Mrs. Martens. It is in any case obviously up to a party to make sure that it will be in a position to proceed in due course and take the required measures to that effect.
This absence of any evidence and constant attempts made by the Respondent to gain time raises serious doubts as to the reasons why the Respondent would have chosen the particular disputed domain name to provide HIV information to the public rather than a more generic one. This is all the more true than the Respondent also appears according to the WhoIs database to be located in Paris, where the Complainants have been distributing their products for decades. Several UDRP panels have already acknowledged the widespread reputation enjoyed by the Complainants’ trademarks (see, for instance, Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Chen Fangwei, WIPO Case No. DPW2014-0001; “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Domain Admin, WIPO Case No. DTV2011-0021). Considering that UDRP panels consider it desirable that their decisions are consistent with prior panel decisions dealing with similar fact situations (see paragraph 4.1, WIPO Overview 2.0) and the location of the Respondent in Paris, the Panel sees no reason to deviate from such finding.
In spite of his lengthy explanations regarding preparations of an information portal website for months, the Respondent did not provide any supporting evidence but a copy of the LinkedIn webpage of Dr A.-F. Martens and did not seize the opportunity to do so notwithstanding the deadline granted to him by December 18, 2015.
Absent any demonstrable preparations to use the disputed domain name, and considering the widespread reputation of the Complainants’ trademarks, notably in France where the Respondent appears to have an address, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled.
D. Registered and Used in Bad Faith
For a complaint to succeed, a UDRP panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
Bad faith requires the Respondent to be aware of the Complainant’s trademarks. In the present case, considering the fact that the Respondent is not only located in Senegal, but also in Paris where the Complainants’ products are widely distributed, one finds it hard to imagine that the Respondent would not have been aware of the Complainant’s trademarks.
Although the Respondent provides some explanations for having chosen the disputed domain name, he only did so after having been granted a substantial extension of deadline to respond, without any supporting evidence. Notwithstanding the fact that the Respondent was granted an additional deadline to provide such evidence, clearly circumscribed and defined by the Center, the Respondent did not do so and once again attempted to delay the proceedings. As a result, the Panel has no difficulty in ruling that the Respondent has used the disputed domain name in bad faith, all the more than the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith (see paragraph 3.2 of WIPO Overview 2.0) which, in the present case, has been demonstrated by the Respondent’s constant attempts to delay the proceedings without providing any supporting evidence to the Panel notwithstanding the opportunities granted to do so.
Consequently, the Panel finds that the disputed domain name has been registered and is being used in bad faith under the paragraph 4(a)(iii) of the Policy.
7. Decision 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 be transferred to the Complainants.1
Date: December 23, 2015
1 Further emails were submitted by the Respondent on December 24, 26 and 28. Considering that the deadline granted to the Respondent expired on December 18, 2015 and that the drafted decision was submitted to the Center on December 23, 2015, these emails will be disregarded.