The Complainant is DSV A/S of Hedehusene, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Domain Admin, Privacy Protection Service INC d/b/a, PrivacyP of Nobby Beach, Queensland, Australia / Darwin Ross, DSV of Essex, London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"). 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 25, 2015. On November 25, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 26, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 26, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 1, 2015. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed a further amendment to the Complaint on December 1, 2015.
The Center verified that the Complaint together with the amendments to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 2, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 22, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 23, 2015.
The Center appointed Christian Schalk as the sole panelist in this matter on December 30, 2015. 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 has reviewed the record and confirms the Complaint's compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with paragraph 2(a) and (b) of the Rules. The language of the proceedings is English. 4. Factual Background
The Complainant is a Danish transport and logistics company offering transport services worldwide by road, air, sea and train. With 23,000 employees it offers its services in more than 70 countries. The Complainant is often subject to press reports and apparently one of the bigger players in the transport industry.
The Complainant owns among others the following trademarks:
- European Community Trade Mark registration No. 5308098 for DSV, registered January 31, 2008, covering goods and services in International Classes 36, 39 and 42;
- Danish trademark registration No. VR 2006 03259 for DSV, registered October 9, 2006, covering goods and services in International Classes 36, 39 and 42;
- United States of America trademark registration No. 3594987 for DSV, registered March 24, 2009, covering goods and services in International Classes 36 and 39;
The Complainant also owns domain names featuring the Complainant's DSV mark such as the domain name .
The Respondent registered the disputed domain name on July 19, 2015. It resolves to a website which shows pictures of the Complainant's trucks, images of the Complainant's different types of services as well as photos of some of the Complainant's employees. The Complainant explains in this context that the pictures and videos shown on this website have been taken from the Complainant's original corporate website. In one case, a picture of one of the Complainant's managers is displayed but the name related to this person is the name of another manager of the Complainant.
The Complainant sent a cease-and-desist letter to the Respondent on October 23, 2015. A reminder was sent on November 8, 2015. The Respondent replied neither to the cease-and-desist letter nor to the reminder. 5. Parties' Contentions A. Complainant
The Complainant alleges that the disputed domain name is confusingly similar to its registered trademark DSV since the addition of the generic term "carry" does not have any impact on the overall impression of the dominant part of the disputed domain name. The Complainant fears in this context that there is a risk that its DSV mark is being diluted by being connected to a website owned by a third party. Internet users seeing the disputed domain name are likely to think that the disputed domain name is in some way connected to the Complainant which is in fact not the case.
The Complainant alleges also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant argues that the Respondent is not known by the disputed domain name or by a name corresponding to it. Furthermore, the Complainant did neither grant a license nor any other authorization to the Respondent to use its trademark DSV. The Complainant believes further that it is unlikely that the Respondent would have been unaware of the Complainant's legal rights in the name DSV at the time of the disputed domain name's registration and therefore, it is rather obvious that it is the fame of the Complainant's trademark that has motivated the Respondent to register the disputed domain name. The Complainant argues further that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services. The Complainant explains in this context that the Respondent has set up a website that is clearly imitating the Complainant, offering the same type of services as those offered by the Complainant since it displays several of the Complainant's own images, videos and web magazines. Therefore, the Complainant concludes that the Respondent is using the DSV trademark to mislead Internet users to a commercial website and to sponge off the Complainant's trademark. The Complainant adds further that the Respondent does not adequately and prominently disclose the relationship or lack thereof between the Parties and does therefore, convey the false impression that the Respondent is in some way connected to the Complainant.
Furthermore, the Complainant alleges that the disputed domain name was registered and is being used in bad faith. The Complainant explains that the Respondent never replied to its cease-and-desist letter. The Complainant cites in this context News Group Newspapers Limited and News Network Limited v. Momm Amed Ia,WIPO Case No. D2000-1623; Nike, Inc. v. Azumano Travel,WIPO Case No. D2000-1598 where the panels have considered the failure to respond to a cease-and-desist letter, or a simple attempt at contact, as relevant for finding for bad faith.
The Complainant believes also that the Respondent is using the disputed domain name to intentionally attract for commercial gain, Internet users to its website, by creating likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the website. In this context, the Complainant cites Aktiebolaget Electrolux v. Jose Manuel,WIPO Case No. D2010-2031 to support its arguments. The Complainant argues further that the disputed domain name is used by the Respondent for offering the same type of services as those offered by the Complainant. Potential visitors would be highly likely to assume that the disputed domain name is operated by the Complainant, which could risk causing damage to the DSV trademark. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Panel shall decide a 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 it deems applicable (paragraph 15(a) of the Rules). Pursuant to paragraph 4(a) of the Policy, the disputed domain name can be transferred only where the Complainant has proven each of the following three elements:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has established trademark rights in DSV. The disputed domain name is not identical to the Complainant's trademark. However, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark.
As it has been decided by previous UDRP panels, incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see for instance, Casa Editorial El Tiempo, S.A. v. Montanya Ltd,WIPO Case No. D2009-0103; T v. Francisco Gómez Ceballos,WIPO Case No. D2002-0717; Bayerische Motoren Werke AG v. ,WIPO Case No. D2002-0615; Compagnie Générale des Etablissement MICHELIN v. Lost in Space, SA,WIPO Case No. D2002-0504; Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047).
Furthermore, in accordance with many decisions rendered under the Policy, the addition of descriptive terms or numbers to a trademark is generally not a distinguishing feature (see Bellsouth Intellectual Property Corporation v. Freeworld and/or Luis,WIPO Case No. D2000-1807; Bellsouth Intellectual Property Corporation v. Henry Chan,WIPO Case No. D2004-0550; Canon U.S.A. Inc., Astro Business Solutions, Inc. and Canon Information Systems, Inc. v. Richard Sims,WIPO Case No. D2000-0819; Aventis, Aventis Pharma SA. v. John Smith,WIPO Case No. D2004-0565; Aventis, Aventis Pharma SA. v. John Smith,WIPO Case No. D2004-0624; and Toyota France and Toyota Motor Corporation v. Computer-Brain,WIPO Case No. D2002-0002).
In this case, the word "carry" is a common term in the English language. It describes to some extent the services of the Complainant, which consist of bringing goods from one place to another. Therefore, the addition of the term "carry" cannot avoid similarity nor does it add anything to avoid confusion with the Complainant's trademark. The only distinctive element of the disputed domain name consists of the term "DSV", which is identical to the Complainant's trademark.
In addition, the ".com" Top-Level Domain suffix in the disputed domain name does not affect the determination that the disputed domain name is confusingly similar with the DSV mark in which the Complainant has rights (see also Compagnie Générale des Etablissements Michelin v. Trendimg,WIPO Case No. D2010-0484; Köstrizer Schwarzbierbrauerei v. Macros-Telekom Corp.,WIPO Case No. D2001-0936; Laboratoire Pharmafarm (SAS) v. M. Sivaramakrishan,WIPO Case No. D2001-0615 and cases cited therein).
For all these reasons, the Panel finds that the Complainant has fulfilled the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Based on the submissions and materials filed in this case, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
The Respondent has not provided any evidence of circumstances specified in paragraph 4(c) of the Policy or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. Specifically, the Panel finds no evidence that the Respondent has been or is commonly known by the disputed domain name. The Respondent is neither affiliated with the Complainant nor has a license to use its trademark.
Given the Respondent's reference to the Complainant's transport services on the website to which the disputed domain name resolves, the Panel is convinced that the Respondent was aware of the Complainant when registering the disputed domain name and when it began using it.
The Respondent has not rebutted the Complainant's allegations and has not provided the Panel with any explanations as to the Respondent's rights or legitimate interests. On the contrary, it appears to the Panel that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services. The Respondent has directed the disputed domain name to its own website which feature images, videos and other elements which have apparently been copied from the Complainant's website. The Panel is convinced that the only reason for this behaviour is to create confusion among Internet users as to the nature of the website to which the disputed domain name resolves and to direct any online correspondence away from the Complainant to the Respondent. That creates the risk that Internet users who seek for the Complainant's services will not receive the attention and the services they usually expect from the Complainant. This can do serious harm to the Complainant's reputation. Furthermore, copying images, videos and other design elements from the Complainant and pasting them on the website to which the disputed domain name resolves does not amount to bona fide use of the disputed domain name in the context of the present case.
Therefore, the Panel believes that the disputed domain name has been registered by the Respondent only in order to capitalize on the Complainant's reputation and goodwill by redirecting Internet traffic intended for the Complainant away from it to the Respondent's website. Such behaviour cannot constitute a bona fide or legitimate use of the disputed domain name.
The Panel finds for these reasons that the Respondent has no rights or legitimate interests in the disputed domain name, and therefore, the requirement of paragraph 4(a)(ii) of the Policy is met. C. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Policy, paragraph 4(b) sets forth four non-exclusive circumstances, which evidence bad faith registration and use of domain names:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online 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.
According to the materials brought before the Panel, the Panel finds that the disputed domain name has been registered and is being used by the Respondent in bad faith in accordance with paragraph 4(b)(iv) of the Policy.
It is a principle considered under prior UDRP decisions (see, for instance, Carolina Herrera, Ltd. v. Alberto Rincon Garcia,WIPO Case No. D2002-0806; Six Continents Hotels, Inc. v. Seweryn Nowak,WIPO Case No. D2003-0022) and under the Policy (see paragraph 2), that a domain name registrant represents and warrants to the concerned registrar that to its knowledge, the registration of the disputed domain name will not infringe the rights of any third party.
Given the fact that the Respondent has copied images and videos from the Complainant's website and pasted them on the website to which the disputed domain name resolves and that the Respondent has even featured certain employees of the Complainant there, the Panel finds that the Respondent must have been well aware of the Complainant's trademark and its products when it registered the disputed domain name (see, Liseberg AB v. Administration Local Manage Technical,WIPO Case No. D2003-0864). Therefore, the Panel is convinced that the Respondent registered the disputed domain name in bad faith.
The Panel finds further, that the Respondent is also using the disputed domain name in bad faith.
The Respondent has directed the disputed domain name to a website which features design elements, pictures and videos of the Complainant's website including the Complainant's trademark DSV and the Complainant's company logo. This means that the services offered on this website are identical to the Complainant's services. Therefore, Internet users may easily believe that this website is either owned by the Complainant or at least somehow related to the Complainant. However, when such Internet users try to get in contact with the Complainant via email, they will be unaware of the fact that it is the Respondent who receives such communication. The Panel believes that the only reason for this is to profit from the Complainant's trademark and to use the disputed domain name in order to attract potential clients of the Complainant to the Respondent's competing services by directing Internet traffic away from the Complainant to the Respondent (see also Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912).
That could also seriously harm the Complainant's reputation among its clients if the Respondent would not provide the same level of quality of service as such clients are used from the Complainant. They would then certainly consider seeking for services of one of the Complainant's competitors. Therefore, the Panel is convinced that the Respondent's only purpose was to do harm to the Complainant's business and to attract for commercial gain Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website.
Furthermore, the Respondent apparently did neither reply to the cease-and-desist letter sent by the Complainant nor to the reminder but continued its bad faith use of the disputed domain name even after receipt of the Complainant's cease-and-desist letter. Such behaviour is considered by the Panel as further evidence of bad faith (see in this context also News Group Newspapers Limited and News Network Limited v. Momm Amed Ia,WIPO Case No. D2000-1623; see also Aktiebolaget Electrolux AB v. Domains by Proxy, Inc. / HSD LLC, Thomas Keith,WIPO Case No. D2010-0561).
In accordance with the material brought before the Panel, the United Kingdom address of the Respondent is the address of the Complainant's United Kingdom branch office. The Panel believes that the Respondent may have given such incorrect contact details to frustrate or at least to delay these proceedings (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
Given all the facts and circumstances of this case, the Panel finds that the disputed domain name was registered and is being used in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Christian Schalk
Sole Panelist
Date: January 11, 2016
Full & Egal Universal Law Academy