WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DHL Operations B.V. v. ZLEX
Case No. D2007-1612
1. The Parties
The Complainant is DHL Operations B.V., Amsterdam, Netherlands, represented by Jonas Rechtsanwaltsgesellschaft mbH, Germany.
The Respondent is ZLEX, Guangzhou, China.
2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Web Solutions Limited.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2007. On November 2, 2007, the Center transmitted by email to HiChina Web Solutions Limited a request for registrar verification in connection with the domain name at issue. On November 5, 2007, HiChina Web Solutions Limited transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 9, 2007 along with a Language of Proceeding Request. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 13, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 3, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 4, 2007.
The Center appointed Adam Samuel as the sole panelist in this matter on December 10, 2007. 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.
As a preliminary matter, the Panel has to rule on the Complainant’s request for English to be the Language of the Proceedings. Article 11 of the Rules deals with this subject. It provides:
“(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
Article 11(a) gives the Panel a discretion to rule that the Language of the Proceedings be other than that of the Registration Agreement. In this case, the Registration Agreement is in Chinese. The Centre has notified the Complaint and Complaint Notification document to the Respondent using communications in Chinese. The Respondent has not raised any objection to the proceedings being held in English. The domain name in dispute currently resolves to a website which is predominantly in English. All these factors suggest that the use of English would not prejudice the Respondent’s ability to defend itself in these proceedings. It would serve no useful purpose to insist on the Complainant translating all its papers into Chinese when a Chinese Respondent has shown no interest in participating in the procedure and raised no objection to the use of English. For these reasons, the Panel grants the Complainant’s request for English to be the Language of the Proceedings.
4. Factual Background
The Complainant owns a German trademark registration 2065293 which dates back to May 18, 1992, European Community Trademark registrations 3865136 and 3056421 for DHL both from 2003. The domain name in issue was registered on November 16, 2006.
5. Parties’ Contentions
A. Complainant
What follows in this section are the Complainant’s submissions. To avoid repetition, the Panel has not begun each new point with a statement that “the Complainant submits”. It does not follow from this that the Panel necessarily accepts each and every point or considers it necessary to express an opinion on any particular argument.
The Complainant runs various services transporting a variety of objects using the trademark name DHL and various other terms including those letters. It owns trademark registrations for DHL in Germany and the European Community. Its sister companies own trademark registrations for DHL. It and its sister companies own trademarks for expressions including the letters, “dhl”. The Complainant’s affiliates and parent company own various domain names including the mark DHL. The Complainant operates worldwide including China using this mark.
The domain name in issue is confusing similar to the DHL mark in that it reproduces the mark with the letters “dg” and a hyphen in front of it followed by the generic top level domain “.com”. The latter is a technical requirement of the domain name system and should not be taken into account when assessing “confusing similarity”. The hyphen separating “dg” from the Complainant’s trademark prevents Internet users from perceiving the second level domain as a combined five-letter-sign but will clearly recognize the DHL mark as such. Internet users will be confused into thinking that the domain name was associated with the Complainant.
Before the Complainant became aware of the domain name, the Respondent had not been using it or any similar name in connection with a bona fide offering of goods and services in good faith. Neither the Respondent nor any other person not connected to the Complainant was using the domain name in issue for any legitimate non-commercial or fair use. The Respondent does not own any rights in the name or mark DHL. The Complainant has not licensed or otherwise permitted the Respondent to use its company name or trademarks or to apply for the registration of the domain name in dispute.
Before the registration of the domain name in issue, the Complainant’s trademarks had been widely used by the Complainant for many years and were well-known around the world. It is inconceivable that the registration was done without full knowledge of the Complainant and its DHL trademarks. The Respondent also failed to respond to a cease and desist letter. The website available through the domain name is virtually identical to the Complainant’s official website. It uses the same logos, colours, style, design, construction and pictures of the Complainant. It also shows the trademark DEUTSCHE POST WORLD NET which is registered by the Complainant’s parent company. All this shows that the only imaginable purpose of the registration and use of the contested domain name was and is to produce confusion among Internet users and to promote the incorrect belief that the contested domain belongs to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, the Complainant must prove that
(i) the domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has produced evidence that it owns the registration of the German trademark DHL. The only issue then under this heading is whether the addition of the letters “dg” and a hyphen to the front of this well-known trademark prevent the domain name in issue from being confusingly similar to the mark. The suffix “.com” is irrelevant for this purpose since it is a technical requirement of the domain name system.
The use of the hyphen ensures that the Complainant’s trademark is presented in isolation from the rest of the domain name. The letters, “dg”, appear to have no significance independently of the Complainant’s trademark. The DHL mark itself is very well-known worldwide. The addition of “dg-” leaves the domain name in issue still looking confusingly like the Complainant’s mark. For all these reasons, the Panel concludes that the domain name is confusingly similar to the Complainant’s mark DHL.
B. Rights or Legitimate Interests
There is no evidence that the Complainant has authorized the Respondent to use any of its trademarks. There is no evidence that the Respondent has rights or legitimate interests in the name “dhl”. The absence of any ordinary meaning for the word would suggest otherwise.
For these reasons, and in the absence of evidence to the contrary or any Response in this case, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the domain name in issue.
C. Registered and Used in Bad Faith
Annex 11 to the Complaint contains a reproduction of the website to which the domain name in dispute resolved at the time when the original complaint was filed. It contains a clear reproduction of the Complainant’s DHL mark along with the DEUTSCHE POST service mark which belongs to the Complainant’s parent company. The page layout would suggest to casual Internet visitors that the page was associated with DHL. Without any explanation from the Respondent, one must assume that this was the purpose of the website. The Respondent clearly knew about the DHL mark since it was reproducing it and its owner and was using them in both the domain name and the website to which it resolved to create confusion among Internet users as to its connections or lack of them with the Complainant. This is use in bad faith.
In 2006, when the domain name was registered, the DHL trademark was known worldwide. The Respondent’s subsequent use of the domain name suggests that it knew about the trademark at the time of registration. There is an indication at the bottom of the webpage in Annex 11 that the design of the site dated back to 2006 the year in which the registration occurred. The notoriety of the trademark and the subsequent use to which the disputed domain name was put suggests strongly registration and use in bad faith.
For all these reasons, the Panel concludes that the domain name in issue was registered and is being used in bad faith.
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 domain name, be cancelled as requested by the Complainant.
Adam Samuel
Sole Panelist
Dated: December 12, 2007
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