WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DHL Operations B.V. v. zhangyl
Case No. D2007-1653
1. The Parties
The Complainant is DHL Operations B.V., Amsterdam, Netherlands, represented by Jonas Rechtsanwaltsgesellschaft mbH, Germany.
The Respondent is zhangyl, Dongguan, Guangdong, China.
2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2007. On November 12, 2007, the Center transmitted by email to OnlineNic, Inc. d/b/a China-C a request for registrar verification in connection with the domain name at issue. Following a couple of reminders which the Center sent to OnlineNic, Inc. d/b/a/ China-C, on November 19, 2007, the latter transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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 20, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 10, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 11, 2007.
The Center appointed Francine Tan as the sole panelist in this matter on December 21, 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.
4. Factual Background
The Complainant is involved in the supply of logistics, warehousing, distribution logistics, global airfreight and ocean freight, project freight forwarding and overland transport services. The Complainant’s trading name in short is “DHL”. In 2003, the Complainant merged with one of the largest companies in Germany, Deutsche Post AG. The latter was privatized in 1995 after it had held the monopoly in postal services. The DHL brand was further strengthened by Deutsche Post World Net’s acquisition in 2005 of Exel, a company which primarily offers transport and logistics solutions for key customers. The Complainant is therefore a recognized global market leader in international express, overland transport, ocean and air freight, and DHL is now one of the major logistics brands worldwide.
One of the Complainant’s core business areas is in the international transportation of documents and goods. The Complainant has a business presence in nearly every country worldwide and is widely recognized by the public by the use of its prominent yellow-coloured trucks and airplanes bearing the sign “DHL”.
The Complainant and its affiliated companies own numerous trademarks worldwide (including China in which the Respondent is located) which consist of or contain the designation “DHL”. These trademarks relate, inter alia, to the provision of various services, namely transportation of documents, goods and parcels by land, sea and air, express courier services, packaging, storage of goods in depots, delivery of goods, freighting, shipping, customs brokerage services and the forwarding of cargo. The marks are also registered in respect of goods such as sacks for transporting packages and documents, cardboard and paper boxes used for packaging, adhesive labels, stationery, cardboard tubes and envelopes, wall hangings such as maps, posters and calendars, and promotional clothing.
The Complainant’s affiliate companies also own various domain names which include the mark “DHL”. The domain is registered by the Complainant’s parent company, Deutsche Post AG. This website has links to the different DHL country sites. In China, the Complainant operates in various business locations which can be seen on its official website at “www.cn.”.
The Complainant sent the Respondent a cease and desist letter on June 20, 2007 but the latter did not respond.
5. Parties’ Contentions
A. Complainant
The Complaint is based on the following:
(1) The domain name is identical and/or confusingly similar to the Complainant’s trademarks, domain names and company names.
It is commonly accepted that generic top level domains such as “.name” or “.com” do not add any distinctiveness to the domain name as they are required simply for the registration of the domain name. Therefore, the generic top level domains should not be taken into account in assessing the identity or similarity between the disputed domain name and the Complainant’s marks. The disputed domain name consists entirely of the Complainant’s trademark “DHL” and Internet users would be confused and misled into thinking that the domain name belongs to the Complainant.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name, and this is supported by the following facts:
(a) Before the Complainant became aware of the Respondent’s registration of the disputed domain name, the Respondent had not been using either the domain name or any similar name in connection with a bona fide offering of goods or services.
(b) At that time, neither the Respondent nor any other entity unconnected to the Complainant was generally known by the domain name .
(c) Neither the Respondent nor any other entity unconnected to the Complainant used the disputed domain name for any legitimate, non-commercial or fair purpose.
(d) 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 trademark to apply for the registration of the domain name in dispute. The Respondent cannot therefore be considered to have any legitimate interest in the name “dhl”.
(3) The domain name was registered and is being used in bad faith, as evidenced by the following:
(a) Neither the Respondent nor any other person unconnected to the Complainant had a legitimate interest in registering the domain name .
(b) The Complainant’s trademarks, domain names and company name “DHL” have been widely used by the Complainant for many years and are thus well known throughout the world. It is therefore inconceivable that the registration for the disputed domain name was made without the knowledge of the existence of the Complainant and its trademarks. Several UDRP panel decisions have stated that bad faith may be inferred from the registration of a well-known mark. (See The Caravan Club v. Mrgsale, NAF Case No. FA95314; DHL Operations B.V. v. Ali Kazempour, WIPO Case No. D2004-1094; Axel Springer AG v. AUTOBILD.COM, WIPO Case No. D2005-0554.)
(c) The Respondent failed to respond to the Complainant’s cease and desist letter. An inference can be made from this that the registration and use of the domain name has been in bad faith. (See NFL Properties, Inc. et al. v. BBC Ab, WIPO Case No. D2000-0147.)
(d) The Respondent’s use of the disputed domain name with the intention to attract Internet users to his website by creating a likelihood of confusion with the Complainant’s “DHL” trademarks.
The most obvious evidence of bad faith registration and use can be found in the fact that the website at “www.” is an imitation and virtual copy of the Complainant’s official website. The colours, logos, style, design and pictures on the Respondent’s website are identical to those used on the Complainant’s website.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy stipulates that the Complainant has to prove that:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant 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.
The Respondent has in this case failed to submit a Response. The Panel shall therefore decide this case on the basis of the Complainant’s assertions and draw such inferences as it considers apt pursuant to paragraph 14(b) of the Rules.
A. Identical or Confusingly Similar
In this case, the Complainant has indeed shown that it owns rights in the mark “DHL”.
The only difference between the domain name and the mark “DHL” is the inclusion of the “.name” suffix. It is well-established in many panel decisions that suffixes such as “.com”, “.org” or “.net” should not be taken into account when considering the issue whether a domain name is identical or confusingly similar to a trademark. The relevant portion of the domain name to be considered is therefore only “dhl”.
Accordingly, the Panel finds that the domain name is identical to the Complainant’s mark “DHL”.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out how one may demonstrate one’s rights or legitimate interests in a domain name, namely, as follows:
(i) before any notice of this dispute, the Respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(ii) the Respondent has been commonly known by the domain name, even if it has not acquired any trademark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark.
For the purposes of paragraph 4(a)(ii) of the Policy, it is sufficient for the Complainant to show a prima facie case, after which the burden of proof is shifted onto the Respondent. However, in this case, the Respondent failed to respond to the Complaint or participate in these proceedings. The Respondent would presumably be in the best position to prove that it has a legitimate interest in the domain name, but has failed not only to refute the Complainant’s assertions but has also failed to respond to the Complainant’s cease and desist letter.
On the other hand, what has been submitted by the Complainant indicates that the Respondent’s website is an imitation of the Complainant’s website. It can be inferred therefore that the Respondent had knowledge of the Complainant’s trademarks when it registered the domain name. The Panel is of the view that the choice of the domain name cannot be easily explained away and therefore finds that this is a case of misappropriation of the Complainant’s trademark. The circumstances are such that the Panel cannot but conclude that the Respondent has no right or legitimate interest in the domain name; the Respondent’s website is misleading and Internet users would be led to believe that the website is that of the Complainant.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies a list of circumstances which, if found to be present, shall be evidence of bad faith registration and use. Of these, the Panel considers that the following are present in this case:
(i) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(ii) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
The Panel agrees with the position taken in earlier panel decisions that the registration of a domain name that is obviously connected with a well-known trademark by someone who has no connection whatsoever with the trademark suggests opportunistic bad faith. (See, for instance, Veuve Clicquot Ponsardin, Maison Fond�e en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.)
In this case, the Respondent very likely knew of the Complainant’s trademark and reputation in the relevant industry and took advantage of this with a view to disrupt the Complainant’s business and/or to attract Internet users to its website for commercial gain. There can be no plausible explanation whatsoever for the Respondent’s choice of domain name and manner in which the website at “www.” was presented.
The actions of the Respondent appear clearly to be deliberate and the Panel therefore has no difficulty in concluding that the domain name 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 transferred to the Complainant.
Francine Tan
Sole Panelist
Dated: January 10, 2008
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