The Complainant is DPDgroup International Services GmbH & Co. KG, Germany, represented by Fidal, France.
The Respondent is Rene Freitag, Germany. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2019, in English. On December 19, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 23, 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 Registrar also indicated that the language of the Registration Agreement was German. The Center sent an email communication to the Complainant in English and German on January 6, 2020, notifying the Complainant of a deficiency in the Complaint and providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center sent an email communication in both English and German, inviting the Complainant to provide sufficient evidence of an agreement between the Parties for English to be the language of the proceedings, or a Complaint translated into German, or a request for English to be the language of the proceedings. Similarly, the Respondent was invited to submit either its agreement that English be the language of the proceedings or its arguments that the language of the proceedings be German. The Complainant filed an amendment to the Complaint on January 15, 2020, and submitted its arguments for English to be the language of the proceedings. The Respondent did not reply to the Center’s invitation. 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 in both English and German, and the proceedings commenced on January 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 11, 2020. The Center appointed Torsten Bettinger as the sole panelist in this matter on February 17, 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 The Complainant is part of an international corporate group that operates an international parcel and postal services business. The Complainant owns a substantial portfolio of trademarks that incorporate the DPD mark and dates from as early as 2001. In particular, the portfolio includes International Trademark Registration Number 1217471, registered on March 28, 2014, which contains the acronym DPD in fancy font as the key element of the mark. The abbreviation DPD stands for “Dynamic Parcel Distribution”. In addition, the Complainant also owns numerous domain names featuring the DPD mark, including the domain name The disputed domain name was registered on August 12, 2019, and resolves to a website offering car transporter services under the commercial designation “DPD Dynamic Parcel Distribution”. 5. Parties’ Contentions A. The Complainant The Complainant submits that it owns registered trademark rights in the DPD mark as set out above. With regard to the requirement of identity or confusing similarity between the trademark and the disputed domain name pursuant to paragraph 4(a)(i) of the Policy, the Complainant asserts: - that the addition of the word “logistics” does not distinguish the disputed domain name from the Complainant’s DPD mark but enhances the potential degree of confusion; and, - that as a result, the disputed domain name is confusingly similar to the DPD mark in which it has registered rights. With regard to the Respondent having no rights or legitimate interests in the disputed domain name, the Complainant submitted that: - the Respondent is not commonly known under the “dpd-logistics.com” name and is not offering bona fide products or services; - the Respondent, to the best of the Complainant’s knowledge, does not make any use of a business name or trademark composed of the DPD sign and has no rights in the DPD mark; - the Complainant has not authorized, licensed, or otherwise given consent to the Respondent to use the DPD mark; - the Respondent has no business relationship with the Complainant; and, - the Respondent seeks to confuse Internet users arriving at the website to which the disputed domain name resolves, into thinking that it is the Complainant’s website or a website associated with it. Finally, with regard to the disputed domain name having been registered and being used in bad faith, the Complainant argues that: - the website reproduces without authority the Complainant’s trademark DPD, as well as its graphic layout composed of red and grey colors and square block forms, and the overall look and feel of the Complainant’s website, and thus attempts to confuse Internet users into thinking that they have arrived at the Complainant’s website; - in light of the Complainant’s reputation and scope of its operation, it is obvious that the Respondent had knowledge of both the Complainant and its trademark at the time the disputed domain name was registered; - the Respondent attempts to make use of the reputation of the Complainant as the disputed domain name is obviously connected with the well-known name DPD in the field of parcel and postal services; and, - the Respondent has intentionally attempted to attract, for commercial gain, Internet users to access the Respondent’s website in the belief that they are accessing the website of the Complainant or that the Respondent is associated or affiliated with the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has demonstrated that it owns registered trademarks containing the acronym DPD as the key element of the mark in the European Union and many other countries since at least 2001. As a result, the Panel finds that the Complainant has demonstrated that it owns registered rights in its DPD mark for the purposes of the Policy. It is well established that the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the trademark is used or other marketing and use factors usually considered in trademark infringement cases. (See section 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). Here the disputed domain name wholly incorporates the DPD mark and adds to it the dictionary word “logistics”. There is consensus among the UDRP panels that the addition of merely descriptive wording to a trademark in a domain name does not distinguish a domain name from a trademark and therefore does not prevent a finding of confusing similarity between a domain name and a complainant’s trademark under the first element of the UDRP. (See, for instance, Facebook, Inc. v. Sleek Names, SL Names, VSAUDHA,WIPO Case No. D2015-0547 (“The disputed domain names contain as a first and/or dominant element the Complainant’s famous trademark FACEBOOK, combined with a variety of descriptive terms, for example, ‘account’, ‘password’, ‘hacker’, ‘analytics’, ‘survey’… [et cetera]. The addition of these terms do not serve to distinguish the disputed domain names in any material way.”); see also, for instance, Dropbox, Inc. v. Mohd Shariq, Techinspire,WIPO Case No. D2016-1194 (“The domain name Finally, it has been long established under the UDRP that the generic Top Level Domain (“gTLD”) designations such as “.com”, “.net”, and “.org” are typically not to be taken into account when assessing the issue of identity or confusing similarity, except in certain cases where the applicable gTLD suffix may itself form part of the relevant trademark (see section 1.11 of WIPO Overview 3.0). For the foregoing reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark DPD in which the Complainant has rights. B. Rights or Legitimate Interests A respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements: “(i) before any notice to you [the Respondent] 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 [the Respondent] (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 [the Respondent] 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 Complainant provided evidence that the disputed domain name resolves to a website that offers car transport services and asserted that the Complainant has not authorized the Respondent to use its trademark DPD or the disputed domain name. These assertions are sufficient to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. The Respondent chose not to contest the Complainant’s allegations and has failed to come forward with any evidence to refute the Complainant’s prima facie showing that the Respondent lacks rights or legitimate interests. The Panel therefore accepts these allegations as undisputed facts. In light of the fact that the Respondent uses the disputed domain name to resolve to a website offering car transportation services under the designation “DPD Dynamic Parcel Distribution”, which is solely connected with the Complainant’s postal and delivery services, the Panel concludes that the Respondent registered the disputed domain name to seek an impression of an association with the Complainant and finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel therefore concludes that the Complainant has satisfied the second element of the Policy set forth by paragraph 4(a)(ii). C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, 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 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 the Complainant, for valuable consideration in excess of 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 the Respondent’s website or location. The Complainant holds trademark registrations for the logo mark DPD containing the acronym DPD as the key element of the trademark in the European Union and many other countries since at least 2001. The Complainant’s trademark DPD is distinctive and connected with the Complainant’s postal and delivery services. The disputed domain name was registered in August 2019, many years after the Complainant commenced registering its international trademark portfolio of marks incorporating the DPD mark. The Complainant’s DPD mark is not a common abbreviation or combination of letters used in connection with the postal and delivery services and as a result enjoys distinctiveness in relation to the services for which it is used by the Complainant. This and the fact that the website to which the disputed domain name resolves, refers to the Complainant’s business by the featuring the designation “DPD Dynamic Parcel Distribution” makes it inconceivable that that the Respondent coincidentally selected the disputed domain name without any knowledge of the Complainant and its trademark DPD. The Panel therefore concludes that the Respondent registered the disputed domain name in bad faith. The Complainant provided evidence that the Respondent used the disputed domain name to resolve to an active website offering transportation services under the designation “DPD Dynamic Parcel Distribution”, which is solely connected with the Complainant’s parcel and delivery services. This alone justifies the conclusion that the Complainant uses the disputed domain name with a view to confusing Internet users into thinking that that the Respondent’s website is the Complainant’s, or has some affiliation or connection with the Complainant, when this is not the case. Upon arriving at the Respondent’s website, Internet users seeing representations of the Complainant’s DPD mark and the designation “DPD Dynamic Parcel Distribution” are likely to think that they are at the Complainant’s website, or that the services being promoted have been authorized or approved by the Complainant. This alone justifies the conclusion that the Respondent has set out to use the disputed domain name in order to divert Internet users to its website for its own commercial purposes. The Panel draws this conclusion irrespective of the fact that, contrary to Complainant’s allegation, the record does not contain any evidence that the Respondent has used a graphical layout, look and feel, and overall color scheme which is similar to that of Complainant’s. For the above, the Panel finds that the Respondent’s registration and use is a case of cybersquatting and that therefore the Complainant has also satisfied its burden 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 disputed domain name Torsten Bettinger
Sole Panelist
Date: March 4, 2020
Full & Egal Universal Law Academy