WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deutsche Post AG v. Liu Shen
Case No. D2008-0294
1. The Parties
Complainant is Deutsche Post AG, Bonn, Germany, represented by Jonas Rechtsanwaltsgesellschaft mbH of Germany.
Respondent is Liu Shen, Beijing, China.
2. The Domain Name and Registrar
The disputed domain name registered with HiChina Web Solutions Limited.
3. Procedural History
The Complaint (including a supported request that English be the language of proceedings, at least if no objection is forthcoming from Respondent) was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2008. On February 29, 2008, the Center transmitted by email to HiChina Web Solutions Limited a request for registrar verification in connection with the domain name at issue. On March 3, 2008, HiChina Web Solutions Limited transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant, providing the contact details and confirming the language of the registration agreement as Chinese. 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 Respondent of the Complaint in both Chinese and English, noting that if Respondent does have language difficulties with the Complaint this should be made known to the Center otherwise the administrative proceeding will proceed on the basis that Respondent has no objection to Complainant’s request that English be the language of proceedings. No objections to Complainant’s language request was forthcoming from Respondent. The proceedings thus commenced on March 7, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 27, 2008. Respondent did not file a Response with the Center.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on April 4, 2008. 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.
The Panel is satisfied in all of the circumstances, pursuant to its discretion under paragraph 11 of the Rules, that English is an appropriate language for the present proceedings.
4. Factual Background
Complainant is Deutsche Post AG, a stock corporation having its seat and principal place of business in Bonn, Germany. Complainant’s company was registered on September 14, 1994 and the subject of its business is the provision of services in the field of communication, transport and logistics, in particular postal services.
Complainant is the sole legal holder of numerous trademarks worldwide which consist in the designation “Deutsche Post” or contains this designation as a significant component. Complainant’s trademark DEUTSCHE POST is registered in Germany, the United States of America, Australia, the European Community, China, Switzerland and Argentina.
Complainant is also the owner of various domain names including the mark DEUTSCHE POST such as , , , , , , and .
Complainant is Germany’s only universal provider of postal services. In the letter mail sector, Complainant is the leading service provider in Europe and a market leader in Germany in the area of direct marketing. Complainant is also the head of the world’s largest logistics Group – Deutsche Post World Net. Its integrated Deutsche Post, DHL and Postbank companies offer worldwide transportation services of goods, information and payments.
5. Parties’ Contentions
A. Complainant
Identical or Confusingly Similar
Complainant contends that the disputed domain name is identical to Complainant’s trademark DEUTSCHE POST for the following reasons:
1. The addition of the gTLDs such as “.com’, “.net” or “.mobi” has no distinguishing capacity in the context of domain name and does not alter the value of the trademark represented in a domain name.
2. The fact that Respondent’s domain name does not have a space between the terms “Deutsche” and “Post” does not affect the finding of identity as previous UDRP panel decisions have held that a missing space in no way diminishes the risk of confusion where the terms are used as a domain name.
3. The disputed domain name fully incorporates Complainant’s trademark DEUTSCHE POST and according to previous UDRP cases, the disputed domain name is virtually identical to the highly distinctive DEUTSCHE POST marks in which Complainant has exclusive rights. Consequently, Internet users will be confused and misled into thinking that the disputed domain name belongs to Complainant and that by typing the domain name in the address line of the browser they will be linked to the website of Complainant when in fact they are not.
Rights or Legitimate Interests
Complainant contends that Respondent does not have rights or legitimate interests in the disputed domain name for the following reasons:
1. Before Respondent became aware of the present dispute, Respondent had not used, or made demonstrable preparations to use the domain name or any name corresponding to the domain name in connection with a bona fide offering of goods and services.
2. By the time Respondent was made aware of the present dispute, Respondent or any other person not connected to Complainant has not been commonly known under the domain name .
3. Neither did Respondent or any other person not connected to Complainant use the domain name for any legitimate, non-commercial or fair purpose.
4. Respondent does not own any rights in the name or mark DEUTSCHE POST. Complainant has not licensed or otherwise permitted Respondent to use its company name or trademarks or to apply for the registration of the domain name in dispute. Thus, Respondent should not be considered as having any legitimate interest in the distinctive worldwide trading name, company name and trademark DEUTSCHE POST.
Registered and Used in Bad Faith
Complainant contends that the disputed domain name has been registered and is being used by Respondent in bad faith for the following reasons:
1. The disputed domain name was created on September 26, 2006. Neither Respondent nor any other person not connected to Complainant had a legitimate interest in registering Complainant’s famous trademark DEUTSCHE POST.
2. Complainant’s DEUTSCHE POST marks have been widely used by Complainant and its internationally operating group for many years and thus are well known throughout the world. Therefore, it is inconceivable that the registration for was made without full knowledge of the existence of Complainant and its marks. Given this, Complainant contends that it is obvious that disputed domain name was registered in bad faith.
3. Respondent has failed to respond to Complainant’s cease and desist letter of February 25, 2008. According to previous UDRP cases, “Respondent’s failure to respond to the inquiries of Complainant or to the Notification of Complaint and Commencement of Administrative Proceeding sent by the Center supports the inference that the registration and the use of the domain name has been in bad faith.” See NFL Properties, Inc. et al.v. BBC Ab,WIPO Case No. D2000-0147.
4. According to the WhoIs data for the disputed domain name, Respondent failed to indicate a complete and valid postal address in Beijing and previous UDRP cases have held that the fact that Respondent has used incomplete contact information about his post address and a non-existing fax number when registering the domain name is also an indication of bad faith. See CC Computer Consultants GmbH and WAFA Kunststoffechnik GnbH v. APG Solutions & Technologies,WIPO Case No. D2005-0609.
5. There is a lack of any plausible actual or contemplated active use of the disputed domain name by Respondent that would not be illegitimate and this is again indicative of bad faith registration and use of the domain name.
B. Respondent
Respondent did not respond to Complainant’s contentions in the Complaint.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, Complainant must establish that each of the three following elements is satisfied:
1. the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
2. Respondent has no rights or legitimate interests in respect of the domain name; and
3. the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with Complainant to establish that all these three elements are satisfied in this proceeding.
Pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:
A. Identical or Confusingly Similar
Complainant has produced substantial evidence to demonstrate that it has registered trademark rights in the DEUTSCHE POST marks in many countries throughout the world.
In assessing the degree of similarity between Complainant’s trademark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between Complainant’s mark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned and in this case, the average consumer is the Internet user seeking to purchase or download information about Complainant’s postal and delivery services.
The disputed domain name comprises (a) an exact reproduction of Complainant’s DEUTSCHE POST marks and (b) the top level domain suffix “.mobi”. The word “deutschepost” is the dominant and the distinctive element of Complainant’s mark and it has been reproduced in its entirety in the disputed domain name. The Panel accepts Complainant’s contention that neither the addition of the suffix ‘.mobi’ nor the absence of a spacing between “deutsche” and “post” will serve to distinguish the disputed domain name from Complainants DEUTSCHE POST marks and prevent the disputed domain name from being identical or confusingly similar to Complainant’s distinctive and widely known DEUTSCHE POST marks.
Bearing in mind the following factors, in particular (a) the widespread reputation of the Complainant’s trademark; (b) the distinctive character of the Complainant’s DEUTSCHE POST marks; (c) the dominant component of the disputed domain name; and (d) the visual, aural and similarities between them, the Panel therefore finds that the disputed domain name is confusingly similar to a trademark or service mark in which Complainant has rights.
The Panel finds for Complainant on the first part of the test.
B. Rights or Legitimate Interests
The Panel finds that Complainant has established a prima facie case of Respondent’s lack of rights or legitimate interests to the disputed domain name.
The Panel finds that the following circumstances are indicative of Respondent’s lack of rights or legitimate interests in the disputed domain name:
(i) The designation “Deutsche Post” in Complainant’s trademark is a word distinctively associated with Complainant and unless Respondent is associated or affiliated to Complainant, there is no plausible reason for Respondent to choose such a designation for its domain name. It is also highly unlikely that Respondent has chosen the designation to describe its goods and services since the disputed domain name is not linked to any active website;
(ii) Respondent has not provided evidence of a legitimate use of the domain name or reasons to justify the choice of the word “Deutsche Post” in its business operations or choice of domain name;
(iii) Complainant has not licensed or otherwise permitted Respondent to use its trademark or to apply for or use any domain name incorporating the trademark; and
(iv) The DEUTSCHE POST marks incorporate a designation which is widely known especially in the sector of postal delivery and logistics services in many countries including China. Consequently, it is not one that traders would legitimately choose unless the purpose is to create an impression of an association with Complainant.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Respondent has not participated in this proceeding and has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name. In accordance with the Rules paragraph 14, the Panel thus draws such inferences as she considers appropriate, which are that Respondent is unable to show cause that he has rights or legitimate interests to the said domain name.
The Panel finds for Complainant on the second part of the test.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.
First, the Panel finds that Complainant enjoys a widespread reputation in its DEUTSCHE POST trademarks with regard to its postal delivery and logistic services. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcend national borders. Therefore, the Panel finds that it is not conceivable that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the domain name. Consequently, in the absence of contrary evidence from Respondent, the Panel finds that the DEUTSCHE POST trademarks are not those that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. Thus, it would have been pertinent for Respondent to provide an explanation of its choice in the disputed domain name. However, Respondent has chosen not to respond to Complainant’s allegations in the Complaint and this leads the Panel to conclude that the disputed domain name was registered by Respondent in bad faith with the intent to create an impression of an association with Complainant and its products and services.
Second, Complainant has also adduced evidence to prove that by using a confusingly similar disputed domain name, it is plausible to conclude that Respondent intends to attract, for commercial gain, Internet users to its website, although at the present time no active links have been made to the disputed domain name. On the issue of whether passive holding of domain names constitute use in bad faith, the WIPO Overview of WIPO Panel Views on Selected UDRP Question states that “the lack of active use of the domain name does not as such prevent a finding of bad faith. The Panel must examine all the circumstances of the case to determine whether respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.” Thus, under the appropriate circumstances, passive holding of a disputed domain name may still constitute use of the domain name in bad faith by Respondent. The Panel finds that the circumstances of the present case warrants such a conclusion.
Given the widespread reputation of Complainant’s DEUTSCHE POST trademarks, the compelling conclusion is that Respondent, by choosing to register and use a domain name which is confusingly similar to Complainant’s widely known and distinctive trademarks, intended to ride on the goodwill of Complainant’s trademarks in an attempt to exploit, for commercial gain, Internet traffic destined for Complainant. This fact coupled with the fact that Respondent has failed to respond to Complainant’s cease and desist letter of February 25, 2008 and that Respondent failed to indicate a complete and valid postal address in Beijing are indicative of bad faith use of the disputed domain name. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent are indicative of registration and use of the disputed domain name in bad faith.
The Panel finds for Complainant on the third part of the test.
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 Complainant.
Susanna H.S. Leong
Sole Panelist
Dated: April 18, 2008
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