The Complainant is DSV A/S of Hedehusene, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Dawson Anabelle, Dawson of London, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed Domain Name is registered with NetRegistry Pty Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 10, 2016. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 12, 2016, the Registrar 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" 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 paragraphs 2 and 4 of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 15, 2016. In accordance with paragraph 5 of the Rules, the due date for Response was March 6, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 7, 2016.
The Center appointed Brigitte Joppich as the sole panelist in this matter on March 18, 2016. 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 paragraph 7 of the Rules. 4. Factual Background
The Complainant is a Danish transport and logistics company offering transport services worldwide by road, air, sea and train. It has offices in more than 70 countries and had 23,000 employees and revenue of EUR 6.5 billion in 2014. It is listed on the NASDAQ Copenhagen stock exchange and is included in the C20 index as one of the 20 most actively traded shares.
The Complainant owns rights in the trademark DSV & design through numerous trademark registrations in various countries, inter alia Community trademark registration no. 005358098, registered on January 31, 2008 in classes 36, 39 and 42 (hereinafter referred to as the "DSV Mark"). In addition, the Complainant also registered several corresponding domain names, inter alia .
The disputed domain name was registered on November 3, 2015 and was used in connection with an unauthorized website which was an exact copy of the Complainant's actual website. The disputed domain name currently resolves to a blank page.
The Complainant sent a cease and desist letter to the Respondent on December 23, 2015 and reminders on January 4, 2016 and January 8, 2016, which remained unanswered. 5. Parties' Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case.
(1) The disputed domain name is confusingly similar to the Complainant's DSV Mark as it fully includes such mark and as the additional generic word "logistics", the hyphen and the generic Top-Level-Domain ("gTLD") ".com" are not sufficient to hinder a finding of confusing similarity under the Policy. The Complainant argues that the fact that the disputed domain name includes the term "logistics", which is closely linked to the Complainant, strengthens the similarity between the disputed domain name and the DSV Mark.
(2) The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant contends that the Respondent is not sponsored by or affiliated with the Complainant in any way, that the Complainant has not given the Respondent permission to use the Complainant's trademark in any manner, in particular not in domain names, that the Respondent is not commonly known by the disputed domain name, and that the Respondent's use of the disputed domain name to redirect Internet users to a website that copied and attempted to duplicate the Complainant's official website by copying the design, color scheme, pictures and text found on the Complainant's website is no bona fide use under the Policy.
(3) The Complainant contends that the disputed domain name was registered and is being used in bad faith. With regard to bad faith registration, the Complainant argues that by registering the Complainant's well-established DSV Mark in connection with the generic term "logistics", which describes the Complainant's business, the Respondent demonstrated a knowledge of and familiarity with the Complainant's brand and business. In addition, the Complainant contends that it is not possible to conceive a plausible situation in which the Respondent would have been unaware of the Complainant and its DSV Mark as the website previously found at the disputed domain name had purposely been designed to serve as an exact replica of the Complainant's website. With regard to bad faith use, the Complainant states that the Respondent created a likelihood of confusion with the Complainant and its trademarks by using a confusingly similar domain name to host a website which was an exact copy of the Complainant's actual website and that the Respondent took the website down following receipt of the Complainant's cease-and-desist letter. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed domain name is identical or confusingly similar to the Complainant's trademark; 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 disputed domain name fully incorporates the Complainant's DSV Mark and is confusingly similar to such mark. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of hyphens or generic terms, such as "logistics". Likewise, the fact that the Complainant's DSV Mark includes additional graphical elements does not hinder a finding of confusing similarity under the Policy (cf. Sweeps Vacuum & Repair Center, Inc. v. Nett Corp.,WIPO Case No. D2001-0031; EFG Bank European Financial Group SA v. Jacob Foundation,WIPO Case No. D2000-0036; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner,WIPO Case No. D2001-1447; Sydney Markets Limited v. Nick Rakis trading as Shell Information Systems,WIPO Case No. D2001-0932).
Therefore, the Panel finds that the Complainant satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.:
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among UDRP panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the respondent's rights or legitimate interests in the disputed domain name will then shift to the respondent.
The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent did not deny these assertions in any way and therefore failed to prove any rights or legitimate interests in the disputed domain name.
Based on the evidence before the Panel, the Panel cannot find any rights or legitimate interests of the Respondent either. In particular, the Respondent's use of the disputed domain name to forward Internet users to a website which is an exact copy of Complainant's actual website is no bona fide use under the Policy.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which can be evidence of the registration and use of the disputed domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or 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 the 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 disputed 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 the respondent's website or location or of a product or service on its website or location.
The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant and its rights in the DSV Mark as it used the disputed domain name in connection with a website which is a copy of the Complainant's website and contains all elements of the Complainant's branding, including the stylized DSV Mark.
As to bad faith use, by fully incorporating the DSV Mark into the disputed domain name and by using such disputed domain name in connection with a copy of the Complainant's website the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant's website to its own for commercial gain as set out under paragraph 4(b)(iv) of the Policy. The Panel is therefore satisfied that the Respondent also used the disputed domain name in bad faith. The fact that the disputed domain name no longer resolves to an active website does not impact the Panel's findings. If anything the Panel considers this to be further existence of bad faith.
Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant satisfied the requirements of paragraph 4(a)(iii) of the Policy. 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.
Brigitte Joppich
Sole Panelist
Date: April 1, 2016
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