The Complainant is DPDgroup International Services GmBH & Co. KG, Germany, represented by Fidal, Paris, France.
The Respondent is Larry Siomon, Nigeria. 2. The Domain Name and Registrar
The disputed 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 March 26, 2019. On March 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 27, 2019, 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 March 28, 2019 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 the same date.
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 April 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 23, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 29, 2019.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on May 14, 2019. 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.
On May 23, 2019, the Complainant submitted a further amendment to the Complaint, requesting that the remedy be changed from cancellation to transfer of the disputed domain name. By Procedural Order No. 1 the Respondent was notified of this request on May 27, 2019, and provided with the opportunity to comment by May 31, 2019. The Respondent’s reply was received on May 28, 2019 stating “if you want the domain you have to pay for it.”. 4. Factual Background
The Complainant is engaged in the parcels delivery business in Germany. It holds numerous trademarks internationally of which the following are sufficiently representative for the purposes of this proceeding:
DPD, stylised, International Trademark, registered March 28, 2014, registration number 1217471, in classes 9, 16, 35, 39, 42;
DPD GROUP, stylised with design, International Trademark, registered August 25, 2015, registration number 1271522, in class 39.
The Complainant is also the owner of the domain name , registered in 1991, and numerous other domain names many of which comprise or incorporate the trademark DPD.
Nothing is known about the Respondent. According to the Registrar, the disputed domain name appears to have been registered on November 17, 2018. It has resolved to a website displaying pages about the delivery of parcels, a form where a customer’s parcel tracking ID and password can be entered, and a form where delivery instructions can be modified. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The words “services” and “delivery” appended to the Complainant’s trademark do not avoid confusion with the trademark but are likely to add to the confusion by their allusion to the parcel delivery and postal services of the Complainant.
The Complainant says the Respondent does not have rights or legitimate interests in respect of the disputed domain name. The Respondent has no relationship with the Complainant and has not been authorized to use the Complainant’s name or trademark. The Respondent is not believed to be commonly known by the disputed domain name and is not making a bona fide offering of goods or services. The Respondent does not have a business name or trademark that includes the term “DPD”.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The Respondent has used the Complainant’s trademark, logo and colour scheme on a website having the look and feel of the Complainant’s own website and in an alleged phishing operation. The Respondent is creating confusion with the Complainant’s identity, history and services. The Respondent’s website has several paragraphs of text referring to the Complainant’s trademark, history and services as though they belong to the Respondent.
The Complainant says that on January 7, 2019, a cease and desist letter was sent to the Registrar, with no positive outcome.
The Complainant has cited previous decisions under the UDRP concerning itself or related companies.
The Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply formally to the Complainant’s contentions.
In an informal email reply to Procedural Order No. 1, the Respondent said, in entirety, “if you want the domain you have to pay for it”. 6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith”.
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute. A. Identical or Confusingly Similar
The Complainant has produced copies of documentary evidence of its rights in the registered trademarks DPD and DPD GROUP.
The disputed domain name , disregarding the generic Top-Level Domain (“gTLD”) “.com”, features prominently the Complainant’s trademark or trademark element DPD and is to that extent found to be confusingly similar to the trademark. The additional words “services” and “delivery” in the disputed domain name pertain to the Complainant’s business of delivery services and are found not to detract from confusing similarity. Accordingly the Panel finds for the Complainant under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has stated a prima facie case to the effect that it has no relationship with the Respondent, who has not been authorized to use the Complainant’s name or trademark. The Respondent is not believed to be commonly known by the disputed domain name and is not using it in connection with a bona fide offering of goods or services. According to the Complainant’s monitoring, the Respondent has never had a trademark incorporating “dpd”.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
“(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 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 Respondent has not responded and has not asserted rights or legitimate interests in the disputed domain name with reference to paragraphs 4(c)(i), (ii) or (iii) of the Policy or otherwise.
The Panel finds on balance that the Respondent does not have rights or legitimate interests in the disputed domain name and finds for the Complainant under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found alternatively by the Panel. In the present case, paragraph 4(b)(iv) of the Policy is pertinent.
Screen captures of the website to which the disputed domain name has resolved show pages displaying the Complainant’s trademark and logo as they appear in the Complainant’s trademark registration documents and displayed on the Complainant’s website, including the same colours and characteristic font style. The first page of the screen capture shows a picture of a passenger aircraft and text panels, not shown in full, headed “Never miss a parcel” and “Make in-flight changes”. The second page shows a picture of a delivery van emblazoned with the Complainant’s logo and trademark, above four paragraphs purporting to describe a world-wide delivery network. A visit by the Panel to the Respondent’s website, as is permitted under section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), revealed more of the website, including a purported facility to “Track Your Parcel” that required the completion of boxes labelled “Tracking ID” and “Password”.
The Complainant’s own website similarly provides parcel tracking facilities and describes its delivery services.
On the evidence, the Respondent is attempting to attract Internet users to his website in the expectation that some visitors will associate the disputed domain name with the Complainant’s trademark by confusion. On arrival at the Respondent’s website, users attempting to track an authentic parcel may be induced to disclose their tracking ID and password to the Respondent, a form of deception commonly known as phishing. The Panel does not know or need to know what the Respondent intends to do with the confidential information so gained (despite advice to the contrary, some people use the same password extensively), but it may reasonably be inferred that the Respondent has invested in the disputed domain name and the construction of its website for the purpose of some ultimate gain. On the evidence, and on the balance of probabilities, the Respondent is found to have used the disputed domain name with intent to attract Internet users for commercial gain by confusion within the meaning of paragraph 4(b)(iv) of the Policy. The Respondent is furthermore found, on the balance of probabilities, to have registered the disputed domain name for the purpose for which it has been used.
Accordingly the Panel finds registration and use of the disputed domain name in bad faith in the terms 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.
Dr. Clive N.A. Trotman
Sole Panelist
Date: June 3, 2019
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