The Complainant is DHL International GmbH of Bonn, Germany, represented by T&G Law Firm LLC, Viet Nam.
The Respondent is Minh Nguyen Van of Ha Noi, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name (“Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2017. On September 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 12, 2017, 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 the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 19, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 9, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 10, 2017.
The Center appointed Nicholas Smith as the sole panelist in this matter on October 17, 2017. 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 a postal and logistics company founded in California, United States of America in 1969 and now part of the Deutsche Post DHL Group. It operates in over 220 countries with a workforce exceeding 350,000 employees. In Viet Nam, the location of the Respondent, the Complainant has traded since 2006 under the name DHL-VNPT Express Ltd and has over 40,000 square meters of warehouse space and 670 employees.
In Viet Nam the Complainant has registered, inter alia, a device mark for DHL (the “DHL Mark”) with registration no. 4-0059021-000 and registration date December 9, 2004 for goods and services in classes 16, 20, 35, 36, 38, 39 and 42. The DHL Mark is depicted below.
The Domain Name was created on March 8, 2016. It currently resolves to a website (“Respondent’s Website”), written in a mixture of English and Vietnamese, that purports to offer postal and logistics services under the Complainant’s DHL brand. The Respondent’s Website reproduces the DHL Mark and appears to assert that it is the official website of DHL Viet Nam. It includes photographs of employees wearing the Complainant’s uniforms and transport vehicles (vans, trucks and airplanes) displaying the DHL Mark. The Vietnamese term “chuyen phat nhanh”, contained in the Domain Name, can be translated into English as “express delivery”; hence the Vietnamese meaning of the Domain Name would be “express delivery DHL”. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Name is confusingly similar to the Complainant’s DHL Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the DHL Mark. It holds several registrations for the DHL Mark around the world and in Viet Nam. Additionally many prior UDRP panels have found the DHL Mark to be well-known internationally. The Domain Name consists of the DHL Mark in its entirety with the addition of the words “chuyen phat nhanh” meaning “express delivery”. This addition does not serve to distinguish the Domain Name from the DHL Mark.
The Respondent is not commonly known by the Domain Name nor has it conducted a legitimate business under the Domain Name. The Complainant has not authorized or licensed the Respondent to use the DHL Mark. There is no noncommercial use of the Domain Name. The Domain Name is used by the Respondent to operate a website that falsely displays the DHL Mark and purports to operate a delivery service under the DHL brand. This use does not amount to a bona fide offering of goods and services from the Domain Name.
Given the reputation of the Complainant’s well-known DHL Mark and the prominent display of the DHL Mark on the Respondent’s Website, it is inconceivable that the Respondent registered the Domain Name unaware of the Complainant’s rights. The Domain Name revolves to a website which appears to offer delivery and logistics services under the Complainant’s DHL Mark. By using the Domain Name, the Respondent is attempting to intentionally attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s DHL Mark. This conduct amounts to registration and use of the Domain Name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the DHL Mark, having registrations for the DHL Mark as a trade mark throughout the world, including in Viet Nam, where the Respondent is based.
UDRP panels “have repeatedly held that the addition of a generic word to a recognized mark creates a confusing similarity between the domain name and the mark of the [c]omplainant”. Bank of Nova Scotia v. Whois Protection,WIPO Case No. D2007-0884. See also Valero Energy Corporation, Valero Marketing and Supply Company v. Domain Name Proxy, LLC, Navigation Catalyst Systems, Inc.,WIPO Case No. D2011-1227.
The Domain Name consists of the letters “dhl”, being the dominant element of the DHL Mark and the only element reproducible in a Domain Name and the prefix “chuyen phat nhanh” meaning “express delivery”. The generic prefix “chuyen phat nhanh” does not operate to distinguish the Domain Name from the DHL Mark in any significant way, especially given that the descriptive term relates to a service provided by the Complainant. The Panel finds that the Domain Name is confusingly similar to the Complainant’s DHL Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 (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 are making 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.” (Policy, paragraph 4(c))
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the DHL Mark or a mark similar to the DHL Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use.
The Domain Name links to the Respondent’s Website, which, without the permission of the Complainant:
(a) prominently displays the Complainant’s DHL Mark, potentially indicating that the Respondent is in some way connected with the Complainant; and
(b) offers services that appear to directly compete with the Complainant’s logistics and delivery services.
Such use is not a bona fide offering of goods or services. The use of a domain name that contains the Complainant’s DHL Mark to advertise logistics and delivery services in competition with the Complainant does not amount to a bona fide offering of goods or services.
The Complainant has established a prima facie case that the Respondent lacks rights or interests in the Domain Name. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name’s registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) The Respondent has registered the Domain Name in order to prevent the owner of the trade mark 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 Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site 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 the Respondent’s website or location.
The Panel finds that it is likely that the Respondent was aware of the Complainant and its reputation in the DHL Mark at the time of the Domain Name was registered. The Respondent’s Website reproduces the DHL Mark and purports to offer services in direct competition with the Complainant. Furthermore it is improbable that a person would register a domain name meaning “DHL express delivery” without the knowledge of the Complainant, who provides express delivery services under the name “DHL”. In the circumstances, the registration of the Domain Name in awareness of the DHL Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.
The Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website. The Respondent has used the Domain Name to operate a website that sells services in direct competition with the Complainant while purporting to be the Complainant or closely connected to the Complainant. It therefore is likely to receive revenue from Internet users who happen to come across the Respondent’s Website by means of confusion with the DHL Mark and then purchase the Respondent’s services.
For the reasons set out above, the Panel also finds that the Respondent has used the Domain Name in bad faith. Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under 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 Domain Name be transferred to the Complainant.
Nicholas Smith
Sole Panelist
Date: October 20, 2017
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