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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr Martens International Trading GmbH, Dr Maertens Marketing GmbH, GFM GmbH Trademarks, R Griggs Group Limited v. Witold Dobroczynski
Case No. D2002-0428
1. The Parties
1.1 The Complainants are (1) Dr Martens International Trading GmbH of Seeholzenstrasse 1, D-82166 Graefelfing, Germany, (2) Dr Maertens Marketing GmbH of An Der Ach 3, D-82404 Seeshaupt, Germany, (3) GFM GmbH Trademarks of An Der Ach 3, D-82402 Seeshaupt, Germany and (4) R Griggs Group Limited, Nene Park, Station Road, Irthlingborough, Northamptonshire NN9 5QG United Kingdom.
The Respondent is Witold Dobroczynski of 44 Kilburn High Road, London NW6, United Kingdom.
2. The Domain Name(s) and Registrar
2.1 The domain names in issue are <docmartensdrmartens.com>, <drmartens-airwair.com> and <airwairdrmartens.com> (the "Domain Names"). The Registrar is CORE Internet Council of Registrars ("CORE").
3. Procedural History
3.1 The Complaint was received by WIPO Arbitration and Mediation Center (the "Center") by e-mail on May 3, 2002, and in hard copy on May 7, 2002. An Amendment to the Complaint was received by the Center on May 22, 2002.
3.2 On May 7, 2002, the Center transmitted via e-mail to CORE a request for Registrar verification in connection with the Complaint. On May 13, 2002, CORE transmitted via e-mail its verification response confirming that the Respondent is the registrant of the Domain Names.
3.3 The Complaint was notified to the Respondent on May 31, 2002, in accordance with the rules applicable to The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN"). No Response to the Complaint was received by the Center by the due date (June 20, 2002). Notification of Respondent Default was served on June 21, 2002.
3.4 A Panel was constituted on July 15, 2002, with a single panelist, Nick Gardner. A Statement of Acceptance and Declaration of Impartiality and Independence has been filed by the Panelist.
3.5 The date scheduled for the Panel to render its decision is July 29, 2002.
3.6 The Complainant is represented by Kirsten Parry, Solicitor, 57 Lincoln's Inn Fields, London, WC2A 3LS, United Kingdom. The Respondent is underrepresented.
4. Factual Background
4.1 The facts according to the Complainant are as set out below.
4.2 The First Complainant and Second Complainant are the joint registered proprietors of the DOCTOR MARTENS and DOC MARTENS trade marks worldwide. The Third Complainant is the registered proprietor of the DR MARTENS AIRWAIR trade mark worldwide. The Fourth Complainant is the registered proprietor of the AIRWAIR trade mark worldwide.
4.3 Since 1960 the Fourth Complainant has been the exclusive licensee of the trade marks registered by the other Complainants in the UK and is currently the worldwide exclusive licensee of these marks. The Fourth Complainant manufactures DR MARTENS footwear and together with its affiliate companies, distribute and sells this range of footwear worldwide.
4.4 The first pair of DR MARTENS boots were manufactured on April 1, 1960, and the Fourth Complainant has been manufacturing footwear by reference to that name continually since that date. It has also introduced a range of clothing and accessories all sold under the DR MARTENS name.
4.5 In 2001 the Fourth Complainant and its affiliates spent Ј117,984 on advertising and promotion in the United Kingdom and the worldwide average spent is Ј2.8 million.
4.6 DR MARTENS boots and shoes enjoy a high profile as a result of the fact that they are worn by high profile bands and individual stars as well as the wider public. As a result of their huge popularity and the investment in advertising and promotion by the Fourth Complainant, the DR MARTENS brand has become one of the best-known brands in the world.
4.7 Upon becoming aware of the registration of the Domain Names by the Respondent, the Fourth Complainant instructed its lawyers to write to the Respondent setting out its rights in the DR MARTENS, DOC MARTENS and DR MARTEN AIRWAIR names and inviting the Respondent to select alternative domain names which did not bear such close proximity to its trade marks. This letter was dated September 28, 2001. No response was received to this letter. Further letters were sent on January 17, 2002, and February 4, 2002, but no responses to these were received.
5. Parties’ Contentions
5.1 The Complainants’ contentions are set out below.
5.2 The Domain Names are identical to the DOC MARTENS, DR MARTENS, DR MARTEN AIRWAIR and AIRWAIR marks.
5.3 Regarding the <drmartens-airwair.com> Domain Name, the Third and Fourth Complainants have worldwide rights in respect of the DR MARTENS AIRWAIR name which is identical to this Domain Name. In addition, the First, Second and Fourth Complainants have worldwide rights in respect of the DR MARTENS mark which is identical to the first half of the Domain Name and the Fourth Complainant has worldwide rights in the AIRWAIR mark which is identical to the second half of the Domain Name.
5.4 Regarding the <docmartensdrmartens.com> Domain Name, this is a combination of two of the First and Second Complainants registered marks – DOC MARTENS and DR MARTENS. Consequently, the First, Second and Fourth Complainants have worldwide rights in respect of marks which are identical to the Domain Name. In addition, the Third Complainant and the Fourth Complainant (as exclusive licensee) have worldwide rights in respect of the DR MARTENS AIRWAIR mark which is confusingly similar to this domain name.
5.5 Regarding the <airwairdrmartens.com> Domain Name, the Third and Fourth Complainants have worldwide rights in respect of the DR MARTENS AIRWAIR name which is identical to the Domain Name save for the reversal in the order of the words.
5.6 The names DR MARTENS and AIRWAIR are not generic and would not be chosen by a trader otherwise than to create an impression of an association with the Complainants. The Complainants have not licensed or otherwise permitted the Respondent to use these marks or apply for any domain names incorporating them.
5.7 The Domain Names have been registered in bad faith. In this respect the Complainants submit that:
- The Respondent must have been aware of the repute of the Complainants marks. By virtue of their widespread use and reputation, members of the public and persons in the industry would believe that the entity owning the Domain Names was one of the Complainants or was in some way associated or connected with one of the Complainants.
- Any realistic use of the Domain Names would misrepresent an association with the Complainants and their goodwill resulting in passing off and trade mark infringement.
- Any use by the Respondent would be to intentionally attract commercial gain from internet users to its website by creating a likely confusion with the Complainants' marks as to the source, sponsorship, affiliation, or endorsement of its website and of the products and services put on its website.
- The Complainants' registrations for its marks in countries including the UK and the US precede the registration of the Domain Names by the Respondents and the Respondent should be held to have constructive notice of the marks at the time of registration.
- The Respondent's failure to operate a website at the Domain Names is evidence that the Respondent does not intend to use them for bona fide purposes.
- Regarding bad faith use, the Complainants refer to the Panel to the decision of the English Court of Appeal in One In a Million Limited wherein in was held that a threat to infringe a well known trade mark by registration as a domain name was sufficient use for the purposes of the UK Trade Marks Act 1994.
5.8 The Respondent has not provided any submissions to this Panel.
6. Discussion and Findings
6.1 The Panel has reviewed the Complaint and the documents annexed to the Complaint. In the light of this material, the Panel finds as set out below.
6.2 The Complainants (either as registered proprietors (or, in the case of the Fourth Complainant, as exclusive licensee) have extensive rights in the names DR MARTENS, DOC MARTENS, DR MARTENS AIRWAIR and AIRWAIR by virtue of their use of these names and numerous trade mark registrations. The Domain Names are identical or confusingly similar to the Complainants' registered marks.
6.3 There is no evidence to show that the Respondent had any legitimate basis to register the Domain Names or any intent to use them in any manner unconnected with the Complainants' business. Absent such evidence, the Panel concludes that the Complainants are correct and that the Domain Names were registered in bad faith. The circumstances set out at paragraph 4(b) of the Policy which illustrate bad faith are expressed to be "without limitation". It is clear that registration of a domain name alone (or "passive" domain name holding), can support a determination of bad faith use (see the 'Telstra' decision, WIPO Case No. D2000-0003 and the numerous later cases to similar effect).
6.4 Accordingly, the Panel directs that all three of the Domain Names be transferred to the Fourth Complainant, R Griggs Group Limited.
7.1 In the light of the above findings, the Panel's decision is as set out below.
7.2 The Domain Names are identical or confusingly similar to the trade marks in which the Complainants have rights within the meaning of paragraph 4(a)(i) of the Policy.
7.3 The Respondent has no rights or legitimate interests in respect of the Domain Names within the meaning of paragraph 4(a)(ii) of the Policy.
7.4 The Domain Names have been registered and are being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
7.5 Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the Domain Names be transferred to the fourth Complainant, R Griggs Group Limited.
Dated: July 29, 2002