Complainant is DPDgroup International Services GmbH & Co. KG., Germany, represented by Fidal, France.
Respondent is Whois Privacy Protection Foundation, Netherlands / Aurelius Mark, Romania. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2019. On November 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 25, 2019, 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 Complainant on November 25, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on November 25, 2019. 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 Respondent of the Complaint, and the proceedings commenced on November 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 16, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 23, 2019. The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on January 3, 2020. 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 Complainant is part of an international group of companies operating an international parcel delivery business established in 1977. Complainant operates 32,000 parcel pickup points in 230 countries worldwide. Complainant and its related entities own a large number of trademarks incorporating the DPD mark, including the following: - International trademark registration No. 761146 for DPD (stylized mark), registered on May 26, 2001 for services in classes 36 and 39; Complainant has registered a substantial portfolio of domain names incorporating the Mark, and operates its primary business website at “www.dpd.com,” registered on March 20, 1991. The Domain Name was registered by Respondent on October 29, 2019. It currently does not resolve to an active website, but the record contains screenshots of a previous website operated by “DPD Escrow & Delivery Services.” 5. Parties’ Contentions A. Complainant Complainant’s submissions may be summarized as follows: Under the first element, Complainant alleges that it has trademark rights in the DPD mark based on numerous trademark registrations around the world, and its portfolio of domain names including those for “dpd” and “dpdgroup.” The words “dpd-delivery.net” does not distinguish the Domain Name from Complainant’s marks. The addition of the term “delivery” merely serves to heighten confusion with Complainant’s domain names, websites and the delivery services offered by Complainant. Therefore, the Domain Name combines Complainant’s mark in its entirety with an additional term and is confusingly similar to Complainant’s mark both phonetically and conceptually. Under the second element, Complainant alleges that, to its knowledge, Respondent is not commonly known under the name “dpd-delivery.net” nor offering a bone fide offer of products or services. To Complainant’s knowledge, Respondent does not make any use of a business name nor have trademark rights to the DPD mark. Complainant has not authorized, licensed, permitted or otherwise granted consent to Respondent’s use of the DPD mark in the Domain Name. Complainant has no relationship with Respondent. Respondent is using the Domain Name in an attempt to impersonate Complainant. Therefore, Respondent has no rights or legitimate interests in the Domain Name. Under the third element, Complainant alleges that the Domain Name has been used by Respondent in bad faith. Respondent’s website reproduces Complainant’s trademarks and graphic layout including red and gray colors and square block shapes. The website content, by offering delivery and freight forwarding services, constitutes identity theft. Respondent’s website is secured and is automatically translated into multiple languages, further misleading Internet users. Respondent has engaged in fraudulently selling escrow services and attempted phishing. Complainant’s business was established in 1977 and operates in 230 countries worldwide, and the Domain Name was registered many years after the establishment of Complainant’s trademark portfolio. In light of Complainant’s reputation, it is obvious that Respondent had knowledge of Complainant and Complainant’s website at the time that the Domain Name was registered. Previous UDRP panels have found that Complainant’s DPD mark is distinctive, and clearly Respondent did not chose the Domain Name by coincidence, but deliberately to divert Internet users to its own website, on which similar services are offered. Such actions indicate opportunistic bad faith. Complainant is informed that Respondent has, on at least one occasion, requested prepayment for a fake order. The use of Complainant’s marks is intended to give credibility to Respondent’s scams and phishing operations. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Given the facts in the case file and Respondent’s failure to file a Response, the Panel accepts as true the contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) Respondent has registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar Complainant has provided evidence establishing that it has trademark rights in the DPD mark through use and registration in a large number of jurisdictions, thereby satisfying the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1. In comparing the DPD mark with the Domain Name, the Panel finds that the Domain Name is confusingly similar with the DPD mark, since the Domain Name contains the term “DPD” in its entirety. The addition of the dictionary term “delivery” does not prevent a finding of confusing similarity as Complainant’s Mark is clearly recognizable within the Domain Name. In fact, the addition of “delivery” only affirms the confusing similarity with Complainant’s DPD mark, which is well-established and distinctive for delivery services. It is the well-established view of UDRP panels that the addition of the generic Top-Level Domain (“gTLD”) to the Domain Name does not prevent the Domain Name from being confusingly similar to Complainant’s trademark (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder). The Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the Domain Name. The Panel finds that there is no evidence that Respondent is commonly known by the Domain Name or is using the Mark with permission of Complainant. Rather, the case materials contain Complainant’s express assertion that such permission does not exist. Complainant’s rights in Mark predate the registration of the Domain Name by more than 20 years. The circumstances and evidence indicate that Respondent has no rights or legitimate interests in the Domain Name. The nature of the Domain Name, adding a descriptive term to Complainant’s Mark, cannot constitute fair use because it effectively impersonates or suggests sponsorship or endorsement by Complainant, the trademark owner (see WIPO Overview 3.0, section 2.5.1). In fact, the addition of “delivery” only increases the risk of affiliation with Complainant’s DPD mark, which is well-established and distinctive for delivery services. Respondent, in failing to file a Response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. There is no information available that would support a finding of a fair use of the Domain Name. The Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith The Panel finds that evidence in the record demonstrates that Respondent chose the Domain Name for the purpose of impersonating or attempting to create an association with Complainant. Complainant’s rights in the DPD mark predate the 2019 registration of the Domain Name by decades. The Domain Name contains Complainant’s DPD mark in its entirety with the addition of a non-distinctive term, thereby attempting to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s DPD mark. The Panel agrees with the finding by a previous panel that “Complainant’s DPD mark is not a common abbreviation or combination of letters and as a result enjoys a level of distinctiveness in relation to the services for which it is used by the Complainant.” (see DPDgroup International Services GmbH & Co. KG v. Eden Crowin, WIPO Case No. D2018-0887). The Panel finds that such a registration creates a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4. Having established that the Domain Name was registered in bad faith, the Panel next turns to the issue of whether Respondent has engaged in bad faith use of the Domain Name. Considering the totality of the circumstances, the Panel finds that the Domain Name has also been used in bad faith. In particular, the Panel finds that the website to which the Domain Name resolved clearly attempts to impersonate Complainant by identifying the purported operator of the website as “DPD Escrow & Delivery Services”, through which Respondent offered services identical and similar with those of Complainant. The record contains evidence that the Domain Name was used in an apparent attempt to defraud a purchaser. Respondent has failed to file any Response or provide any evidence of actual or contemplated good-faith use, and the Domain Name was registered using a proxy service to conceal Respondent’s identity. In the view of the Panel, all the circumstances taken together, indicate that Respondent registered and used the Domain Name in bad faith. The Panel finds that Complainant has established the third element under paragraph 4(a) 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, Ingrīda Kariņa-Bērziņa
- German trademark registration No. 2052500 for DPD DIRECT PARCEL DISTRIBUTION (stylized mark) registered on December 20, 1993 for services in classes 36 and 39.
Sole Panelist
Date: January 4, 2020
Full & Egal Universal Law Academy