Monday, May 1, 2017

Doc Martens gives a cybersquatter the boot

Image result for doc martens logoIn “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v., Inc., WIPO Case No. D2017-0246 (David Taylor, April 10, 2017), the Panel ordered the transfer of to the owner of the famous DOC MARTENS trademark. This case was interesting for two reasons. First, while the Respondent appears to be the registrar GoDaddy,Inc., it is not (more on that later), and second, I find it fascinating that in the balance of cost/benefit ratio, an entity would pursue any domain ending with the .xyz extension, especially where such domain is not being actively used, as was the case here. Have you ever sought out a .xyz domain name? I didn't think so, which begs the question of what harm Complainant was suffering to justify the effort and expense to pursue this infringement. Sales of footwear must be good, or its lawyers must be bored, for Complainant to prioritize going after this domain.

Turning to the merits and the three elements to prove in order to prevail in a UDRP dispute, the case was pretty straightforward. Complainant owns many trademarks with DOC MARTENS or DR. MARTENS, which it uses in connection with footwear and clothing. Given that the disputed domain matches Complainant's mark exactly, with the mere addition of the .xyz extension, which "is generally disregarded under the identity or confusing similarity test as it is a functional element," the Panel readily found that the disputed domain is identical or confusingly similar to a mark in which Complainant has rights.

Turning to the second element, whether Respondent has rights or legitimate interest in the disputed domain, Complainant failed to prove (as it alleged) that the disputed domain was used as a link farm to websites selling competing goods. But, since the domain name did not resolve to an active website, and "taking into account the overall circumstances of this case.. Respondent's lack of use of the Domain Name is a strong indication of its lack of rights or legitimate interests." In other words, something stinks in Denmark, so the Panel decided to let Complainant off the hook for its failure of proof. And here we have a great example of why WIPO is a great forum for complainants.

As to the final factor, whether the disputed domain was registered and used in bad faith, Complainant did a better job and made the Panel's job easier to find this element satisfied. As to registration, since "Complainant's registered trade mark rights in DOC MARTENS... significantly predate the registration date of the Domain Name by at least 15 years...[t]he Panel is therefore of the view that the Respondent registered the Domain Name in full knowledge of the Complainant's trade mark rights and, on balance, with the intention of taking advantage of such rights." Bad faith use was found based on the facts that (1) the disputed domain was not being actively used, (2) Complainant owns a well-known trademark, (3) Respondent filed no response to the Complaint, and (4) Respondent concealed its identity. As to the last point, Respondent was not actually GoDaddy Inc., the registrar involved in the matter, but Respondent entered as its registration details information nearly identical to its registrar. One would think that GoDaddy would have in place some sort of mechanism to prevent registrations of domain names through its website where the registrant claims to be an iteration of GoDaddy itself (in this case Respondent claimed to be, Inc.). It will be interesting to see if future cases have similar iterations in respondent names--something to look out for.

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