WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION DHL Operations B.V. and DHL International GmbH v. Diversified Home Loans Case No. D2010-0097 1. The Parties
The Complainants are DHL Operations B.V., Netherlands and DHL International GmbH, Germany, both represented by Jonas Rechtsanwaltsgesellschaft mbH, Germany.
The Respondent is Diversified Home Loans of Fallbrook, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2010. On January 22, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On January 29, 2010, GoD, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain name. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 February 1, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 21, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 22, 2010.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on March 2, 2010. 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 companies are members of the DHL group, a global market leader in the international express and logistics industry which was founded almost 40 years ago in San Francisco, United States of America. The DHL group is the world's largest express provider and its activities include supply logistics, warehousing, distribution logistics, global airfreight and ocean freight, project freight forwarding and European overland transport service. The Complainants and their affiliated companies are the legal holders of numerous trademarks worldwide which comprise the designation DHL, including for example German trademark number 2065293 in class 39, registered May 19, 1994 and held in the name of the first Complainant. The Respondent registered the disputed domain name on February 12, 2004 and as at the date of this Decision the associated web page displayed a standard web server parking page. 5. Parties' Contentions A. Complainants
The Complainants contend that the disputed domain name is confusingly similar to trademarks in which they own rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainants assert that they have been well known within Germany, Europe, USA and internationally as the owner of wordwide trademark registrations of DHL for years and note that it was accepted by the panel in DHL Operations B.V. v. Ali Kazempour, WIPO Case No. D2004-1094, that the DHL marks are “notorious all over the world”. The Complainants state that the disputed domain name is a combination of the Complainants' famous trademark with the possessive pronoun “my”, separated by a hyphen and that this combination does not prevent the disputed domain name from being confusingly similar to the Complainants' trademark, rather, it enforces the confusion as it focuses attention on the trademark element.
The Complainants assert that the Respondent has not been using either the disputed domain name or a name corresponding thereto in connection with a bona fide offering of goods and services, nor is the Respondent generally known by the disputed domain name. The Complainants submit that the Respondent does not own any rights in the name or mark DHL and that the Complainants have not permitted the Respondent to use their well-known DHL trademarks, whether by licence or otherwise, express or implied, or to apply for the registration of the disputed domain name. The Complainants state that, in contrast, the evident aim of Respondent's use of the disputed domain name is to misleadingly divert consumers and to abuse the distinctiveness and reputation of the Complainants' famous DHL trademark.
The Complainants assert that their trademarks have been widely used by their internationally operating groups for many years and thus are well-known throughout the world. The Complainants submit that it is therefore inconceivable that the registration of the disputed domain name was made without full knowledge of the existence of the Complainants and their marks. The Complainants point out that according to past UDRP decisions bad faith may be inferred from the registration of a well-known mark on the basis that it would be difficult, perhaps impossible, for the Respondent to use the disputed domain name as the name of any business, product or service for which it would be commercially useful without violating the Complainants' rights. The Complainants argue that the non-use of the disputed domain name in combination with the absence of legitimate interest reveals that it was registered in bad faith and that the Respondent's failure to respond to the Complainants' cease and desist letter constitutes further evidence that the disputed domain name was not only registered but is also used in bad faith. B. Respondent
The Respondent did not reply to the Complainants' contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainants are required under paragraph 4(a)(i) of the Policy to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights. The Panel accepts that the Complainants have established that they have rights in the trademark DHL by virtue of their international portfolio of registered trademarks including the German trademark listed in the Factual Background section above. The disputed domain name adds the generic word “my” as a prefix to this trademark along with a hyphen. The Panel accepts that the Complainants' trademark is well-known on a worldwide basis and that the addition of the generic word and hyphen as a prefix in the disputed domain name are insufficient to dispel the confusion between it and the Complainants' trademark. The Panel also agrees that the particular prefix “my-” may intensify the confusing similarity as this prefix is widely used on the Internet in combination with a trademark to create a personal identification of consumers with a product or service, Ferrero S.p.A. v. Mr. Jean-François Legendre, WIPO Case No. D2000-1534. In these circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainants have rights and that the requirements of paragraph 4(a)(i) of the Policy have therefore been met by the Complainants. B. Rights or Legitimate Interests
The Complainants are required under paragraph 4(a)(ii) of the Policy to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a disputed 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.
The Complainants assert that they have not given any express or implied permission to the Respondent to apply for or use a domain name incorporating their well-known trademark and that accordingly the Respondent can have no rights or legitimate interests in the disputed domain name.
The Panel is satisfied that the Complainants have made a prima facie showing of the Respondent's lack of rights or legitimate interests in that the Respondent does not appear to be known by the disputed domain name and has not been authorised by the Complainants to use their trademark in any manner whatsoever. Furthermore, given the Respondent's incorporation in the disputed domain name of a trademark which is well-known on a global basis and is indelibly associated with the Complainants' group of companies, the Panel cannot conceive of any possible right or legitimate interest which the Respondent could have in the disputed domain name.
Accordingly, the burden shifts to the Respondent to prove that it has rights and legitimate interests in the disputed domain name. The Respondent has chosen not to respond to the Complainants' contentions nor to provide any evidence of such rights or legitimate interests, even though appropriately informed of these proceedings. However, it has not escaped the Panel's notice that the initials for the Respondent's name, Diversified Home Loans, would also spell DHL in acronym format. While the Respondent has not actually indicated that this is the reason behind its registration of the disputed domain name, in any event, as this Panel found in Prada S.A. v. Minidisco,WIPO Case No. D2002-0923, even if legitimate interests can be established in the name of an organization this does not mean such interests may always be established in any relative acronym. In these circumstances the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainants have therefore met the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainants are required under paragraph 4(a)(iii) of the Policy to prove that the Respondent has registered and used the disputed domain name in bad faith.
With regard to registration in bad faith, the Complainants assert that it is inconceivable that the registration of the disputed domain name was made without full knowledge of the existence of the Complainants and their trademarks. The Panel agrees that, given the incorporation of the Complainants' DHL trademark which is globally well-known in the disputed domain name, it is inconceivable that the Respondent could have registered the disputed domain name without being aware of the Complainants' rights. In light of the Respondent's presumed knowledge of the Complainants' rights, it is reasonable to infer that the Respondent could not have registered the disputed domain name without the intention to target these rights in some manner. Furthermore, the Panel agrees with the Complainants that it would be extremely difficult, if not impossible, for the Respondent to use the disputed domain name as the name of any business, product or service for which it would be commercially useful without violating the Complainants' rights. The Panel therefore finds that the disputed domain name was registered in bad faith.
The Complainants' case regarding use in bad faith is that the Respondent has parked the disputed domain name and thus is effectively engaged in “passive holding” within the terms originally established by Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The concept of “passive holding” typically implies complete inaction on the part of the Respondent characterised by a failure to direct the domain name under dispute to any active website. In the present case there is a slightly different situation, namely that the Respondent has directed the disputed domain name to a web server parking page which appears to relate to a managed hosting/software service. The Panel agrees with the Complainants that this is equivalent to “passive holding” because the associated web site is evidently a standard holding page for a third party service. It could not in any sense be described as an active site provided by the Respondent itself.
In Telstra, the learned administrative panel noted that the question as to which circumstances of “passive holding” may constitute use in bad faith cannot be answered in the abstract. This question may only be determined on the basis of the particular facts of each case. A panel should give close attention to all the circumstances of the Respondent's behaviour and a remedy can be obtained under the Policy only if those circumstances show that the Respondent's passive holding amounts to acting in bad faith. With this approach in mind, the Panel has identified the following circumstances as material to the issue in the present case:
(i) the Complainants' trademark has a strong reputation, is highly distinctive and is widely known on a global basis; in addition, it is registered in the jurisdiction where the Respondent is based;
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name, nor can the Panel conceive of any such good faith use;
(iii) the Respondent has failed to respond to the Complainants' reasonable attempts to correspond with it regarding its registration and use of the disputed domain name;
(iv) taking into account the nature of the disputed domain name and in particular the “my-” prefix employed therein alongside the Complainants' mark, which in the Panel's view would inevitably associate the disputed domain name closely with the Complainants' group of companies in the minds of consumers, the Panel cannot conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainants' rights under trademark law; and
(v) there is nothing in the restricted action of the Respondent in pointing the disputed domain name to a web server parking page for a third party hosting/software service which could be considered to be a good faith use.
In all of these circumstances the Panel finds that the manner in which the disputed domain name is being used constitutes use in bad faith. The requirements of paragraph 4(a)(iii) of the Policy have therefore been met by the Complainants. 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 second named Complainant as requested by the Complainants.
Andrew D. S. Lothian
Sole Panelist
Date: March 8, 2010
Full & Egal Universal Law Academy