"Dr Martens" International Trading GmbH and "Dr Maertens" Marketing GmbH v. Deborah Jordan
Claim Number: FA1209001461350
Complainant is "Dr Martens" International Trading GmbH and "Dr Maertens" Marketing GmbH (“Complainant”), represented by Merrit Jones of Bryan Cave LLP, California, USA. Respondent is deborah Jordan (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <drmartensboots.us> and <drmartensshoes.us>, registered with Godaddy.Com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 5, 2012; the National Arbitration Forum received payment on September 5, 2012. A hard copy of the Complaint was also received on September 5, 2012.
On September 6, 2012, Godaddy.Com, Inc. confirmed by e-mail to the National Arbitration Forum that the <drmartensboots.us> and <drmartensshoes.us> domain names are registered with Godaddy.Com, Inc. and that Respondent is the current registrant of the names. Godaddy.Com, Inc. has verified that Respondent is bound by the Godaddy.Com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On September 12, 2012, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 2, 2012 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 10, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <drmartensboots.us> and <drmartensshoes.us> domain names are confusingly similar to Complainant’s DR. MARTENS mark.
2. Respondent does not have any rights or legitimate interests in the <drmartensboots.us> and <drmartensshoes.us> domain names.
3. Respondent registered and used the <drmartensboots.us> and <drmartensshoes.us> domain names in bad faith.
B. Respondent failed to submit a timely Response in this proceeding.
Complainant first sold its DR. MARTENS brand of footwear, clothing and accessories in 1960. Complainant owns trademark registrations with the United States Patent and Trademark Office ("USPTO") for the DR. MARTENS mark (e.g. Reg. No. 1,454,323 issued Aug. 18, 1987).
Respondent used the <drmartensboots.us> and <drmartensshoes.us> domain names as phishing sites in order to defraud customers who place orders on the websites and whose credit cards are charged, but who never receive their merchandise.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Preliminary Issue: Multiple Complainants
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are two Complainants in this matter: "Dr Martens" International Trading GmbH and "Dr Maertens" Marketing GmbH. Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Organizing Comm. for the 2010 Olympic and Paralymic Games and Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
Here, the Panel notes that the two Complainants have the same address, the same contact information, and the same legal representative. In the absence of any contention or information to the contrary, the Panel finds that there is a sufficient nexus between the two Complainants, and elects to treat them as a single entity in this proceeding. Thus, the Complainants will be collectively referred to as “Complainant.”
The Panel finds that Complainant’s trademark registrations are sufficient for it to establish rights in the DR. MARTENS mark under Policy ¶ 4(a)(i). See Check Into Cash, Inc. v. Questar, FA 1024235 (Nat. Arb. Forum Aug. 13, 2007) (“Complainant has established rights in the CHECK INTO CASH mark through registration with the USPTO.”).
Respondent’s <drmartensboots.us> and <drmartensshoes.us> domain names contain the entire DR. MARTENS mark, absent the period and the space, along with the descriptive terms “shoes” or “boots” and the country-code top-level domain (“ccTLD”) “.us.” The Panel notes that prior panels have found that the removal of punctuation and spaces, as well as the addition of a ccTLD, does not distinguish a domain name from a mark. See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark); see also Circuit City Stores, Inc. v. Leeds, FA 139662 (Nat. Arb. Forum Feb. 2, 2003) (finding the <circuitcitystores.us> domain name to be confusingly similar to the CIRCUIT CITY mark because spaces are not allowed in domain names and the presence of a top-level domain like “.us” is “inconsequential to a Policy ¶ 4(a)(i) analysis”). Prior Panels have also held that the addition of terms describing a complainant’s products is insignificant. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under UDRP ¶ 4(a)(i) because the appended term related directly to the complainant’s business). Accordingly, the Panel finds that Respondent’s <drmartensboots.us> and <drmartensshoes.us> domain names are confusingly similar to Complainant’s DR. MARTENS mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent does not have trademark rights to the DR. MARTENS mark. There is no evidence indicating that Respondent has trademark rights encompassing the disputed domain names or variations thereof. Therefore, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names under Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name).
Complainant asserts that Respondent has not been sponsored or licensed by Complainant to use the DR. MARTENS mark. The WHOIS information identifies the registrant of the <drmartensboots.us> and <drmartensshoes.us> domain names as “deborah Jordan,” which is not similar to the disputed domain names. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(iii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under UDRP ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”).
Complainant argues under its Policy ¶ 4(a)(iii) section that Respondent was using the disputed domain names for a phishing scam by advertising the sale of Complainant’s products but never delivering the products after a customer had paid for them with a credit card. The Panel finds that Respondent has engaged in a phishing scheme by falsely advertising Complainant’s products for purchase and gaining access to Internet users’ credit card information. This is not a bona fide offering of goods or services or a noncommercial or fair use of the disputed domain names. See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel notes that the examples of bad faith registration and use prescribed in Policy ¶ 4(b) are intended to be illustrative and not exhaustive. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that UDRP ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith). Thus, the Panel finds bad faith beyond the parameters of Policy ¶ 4(b). See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he [UDRP] expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).
Respondent used the disputed domain names as phishing sites in order to defraud customers, who place orders on the websites and whose credit cards are charged, but who never receive merchandise. The Panel finds that this is evidence that Respondent registered and is used the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the DR. MARTENS mark when it registered the disputed domain names. The Panel agrees, based on Respondent’s use of the disputed domain names, and finds this to be further evidence of Respondent’s bad faith. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <drmartensboots.us> and <drmartensshoes.us> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 17, 2012
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