The Complainant is DPDgroup International Services GmbH & Co. KG of Aschaffenburg, Germany, represented by Fidal, France.
The Respondent is Domain Admin, Privacy Protect, LLC of Burlington, Massachusetts, United States of America (“United States”) / Richard Bothne of Reno, Nevada of United States. 2. The Domain Name and Registrar
The disputed domain name (‘the Domain Name’) is registered with Shinjiru Technology Sdn Bhd (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2018. On November 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 13, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 15, 2018, 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 November 15, 2018.
The Center verified that the Complaint together with the amendment 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 November 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 11, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 12, 2018.
The Center appointed Dawn Osborne as the sole panelist in this matter on December 20, 2018. 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 the owner of, inter alia, the International trade mark DPD No. 1217471 registered in March 2014 for parcel delivery services and has the domain name registered in 1991. It also has trade mark registrations for its box logo.
The Domain Name registered in 2018 resolves to a web site offering competing services unconnected with the Complainant using the Complainant’s trademark and box logo. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarised as follows:
The Complainant is the owner of, inter alia, the International trade mark DPD No. 1217471 registered in March 2014 for parcel delivery services and has the domain name registered in 1991. It also has trade mark registrations for its box logo.
The Domain Name registered in 2018 is confusingly similar to the Complainant’s DPD trade mark adding only the descriptive term “partner” and the generic Top-Level Domain (“gTLD”) .com, which are not sufficient to distinguish the Domain Name from the Complainant’s mark.
The Respondent has no rights or legitimate interests in the Domain Name, is not commonly known by the Domain Name and has not been authorised by the Complainant. The Domain Name points to a page using the Complainant’s name and box logo and this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. This is registration and use in bad faith intentionally attempting to attract for commercial gain Internet users to its web site by creating confusion with the Complainant’s web site. The contact us section of the web site allows customers to contact DPD Partner allowing the possibility of phishing.
The Complainant requests cancellation of the Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Domain Name in this Complaint combines the Complainant’s DPD mark (registered as an International mark for parcel delivery services from 2014), the generic term “partner” and the gTLD “.com”.
The addition of a generic term such as “partner” does not prevent confusing similarity between the Domain Name and the Complainant’s DPD mark under Policy paragraph 4(a)(i) and nor does the addition of the gTLD .com. See section 1.8 and 1.11.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which the Complainant has rights for the purpose of the Policy. B. Rights or Legitimate Interests
The Respondent does not appear to be commonly known by the Domain Name. The Complainant has not authorised the Respondent to use the Complainant’s mark. The use of the Domain Name is apparently for commercial gain and so cannot be legitimate noncommercial or fair use.
UDRP panels have found that a respondent is not using a domain name for a bona fide offering of goods or services if it uses it for a web site competing with the Complainant under its mark.
It is clear from the evidence that the Respondent has used the site attached to the Domain Name to point to competing services which are not connected with the Complainant. The usage of the Complainant’s DPD mark and its box logo which has a reputation in relation to parcel delivery services by the Respondent for similar services as the Complainant is not fair as the site does not make it clear that there is no commercial connection with the Complainant. As such it cannot amount to the bona fide offering of services.
The Respondent has not answered this Complaint and has not provided any legitimate reason why it should be able to use the Complainant’s trade marks in this way. As such the Panelist finds that the Respondent does not have rights or a legitimate interests in the Domain Name and that the Complainant has satisfied the second limb of the Policy. C. Registration and Use in Bad Faith
As determined above the Respondent's use of its site is commercial and it is using the site to make profit from competing services not associated with the Complainant in a confusing manner. It seems clear that the use of the Complainant’s mark in the Domain Name and the use of the Complainant’s box logo is an attempt to cause people to associate the web site at the Domain Name with the Complainant and its business and services. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to his web site by creating likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the web site. This also appears designed to disrupt the business of a competitor.
As such, the Panel believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith under paragraphs 4 (b)(iii) and (iv) and has satisfied the third limb 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 cancelled.
Dawn Osborne
Sole Panelist
Date: December 20, 2018
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