The Complainant is DPDgroup International Services GmbH & Co. KG., Germany, represented by Fidal, France.
The Respondent is Host Master, 1337 Services LLC, Saint Kitts and Nevis. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2020. On March 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 3, 2020, 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 10, 2020 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 March 11, 2020. 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 March 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 13, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 15, 2020. The Center appointed Assen Alexiev as the sole panelist in this matter on May 7, 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 an international parcel delivery network, and is the second-largest operator in the courier express parcel market in Europe. It has been operating since 1977, and has 32,000 pickup points in 230 countries. The Complainant is the owner of the following trademark registrations of the sign DPD (the “DPD trademark”): - the International trademark DPD with registration No. 761146, registered on May 26, 2001 for services in International Classes 36 and 39; and - the International trademark DPD with registration No. 1217471, registered on March 28, 2014 for goods and services in International Classes 9, 16, 35, 39, and 42. The Complainant is also the registrant of the domain name The disputed domain name was registered on January 9, 2020. It resolves to a website that offers transportation and logistics services. 5. Parties’ Contentions A. Complainant The Complainant submits that the disputed domain name is confusingly similar to the DPD trademark, as the addition of the word “transports” does not distinguish the disputed domain name from the trademark but heightens potential Internet user confusion with the Complainant and its postal and delivery services offered under the DPD trademark. According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name, as the Respondent is not commonly known under it and has no trademark rights in it, the Complainant has not consented to the Respondent’s use of the DPD trademark in the disputed domain name, and there is no relationship between the Parties. The Complainant adds that the Respondent is not making a bona fide offering of goods or services, but is deliberately creating confusion with the Complainant’s business by using the Complainant’s identity, reproducing the DPD trademark without authorization and taking ownership of the Complainant’s services. The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant points out that the disputed domain name was registered many years after the Complainant registered and started using the DPD trademark. According to it, in light of the Complainant’s reputation and the scope of its operations, the Respondent must have had knowledge of the Complainant and of the DPD trademark at the time the disputed domain name was registered, and the Respondent chose the disputed domain name in order to divert Internet users to its website for its own commercial purposes. The Complainant further points out that the Respondent’s website at the disputed domain name is a confusing imitation of the Complainant’s corporate website, reproducing without authorization the DPD trademark and the look and feel of the Complaint’s website and promoting services complementary to those of the Complainant. According to the Complainant, the Respondent thus engages in identity theft with the aim to create confusion with the Complainant in order to give credibility to its scam and phishing operations. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the Respondent has registered and is using the disputed domain name in bad faith. In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case. By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name …” The Respondent however did not submit a Response in this proceeding. A. Identical or Confusingly Similar The Complainant has provided evidence and has thus established its rights in the DPD trademark. The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain name. The relevant part of the disputed domain name is therefore the sequence “dpdtransports”. It consists of the elements “dpd” and “transports”. The “dpd” element is identical to the DPD trademark and dominates in the disputed domain name, while the addition to it of the dictionary word “transports” does not sufficiently distinguish the disputed domain name from the DPD trademark, which remains clearly recognizable in it. Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity under the first element. See section 1.8 of WIPO Overview 3.0. In view of the above, the Panel finds that the disputed domain name is confusingly similar to the DPD trademark in which the Complainant has rights. B. Rights or Legitimate Interests While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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 domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0. The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that it has no relationship with the Respondent and the disputed domain name was registered without its consent, and the Respondent has no trademark rights in the disputed domain name. It notes that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, but is using it to impersonate the Complainant through the design and content of the website at the disputed domain name. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not disputed the above statements of the Complainant; it has not alleged that it has rights or legitimate interests in the disputed domain name, and has not submitted any evidence for such rights or legitimate interests. The disputed domain name incorporates the DPD trademark in combination with the word “transports”. This makes it confusingly similar to the DPD trademark and to the courier services offered by the Complainant under the DPD trademark. The confusion is only increased by the content of the website at the disputed domain name, which offers shipping and logistics services that are similar or complementary to those of the Complainant, and which website has a similar look and feel to the Complainant’s website. In view of the above, and in the absence of any denial by the Respondent or evidence to the contrary, the Panel is satisfied that it is more likely than not that the Respondent, being aware of the goodwill of the Complainant’s DPD trademark, has registered and used the disputed domain name to impersonate the Complainant for commercial gain by misleading Internet users that the disputed domain name and the associated website belong to the Complainant, and to offer them services that are similar or related to the services of the Complainant. In the Panel’s view, such conduct does not give rise to rights or legitimate interests of the Respondent in the disputed domain name. Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy lists four illustrative 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 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 your website or location or of a product or service on your website or location.” The Respondent has registered the disputed domain name many years after the Complainant registered the DPD trademark and started using it in relation to its services, which have now achieved a global scope. The disputed domain name incorporates the DPD trademark in combination with the word “transports”, which makes it confusingly similar to the trademark and to the courier services offered by the Complainant under it. The confusion is increased by the content of the website at the disputed domain name, which offers services that are similar or complementary to those of the Complainant, and has a similar look and feel to the Complainant’s website. As submitted by the Complainant, the Respondent also uses the disputed domain name for email addresses, indicated on the associated website, and these email addresses may further confuse Internet users. The Respondent does not deny any of the above. Taking the above into account, and in the absence of any evidence to the contrary, the Panel is satisfied that it is more likely than not that the Respondent was aware of the Complainant’s DPD trademark and of its goodwill when it registered the disputed domain name, and that the Respondent has registered and used the disputed domain name targeting the DPD trademark in an attempt to impersonate the Complainant for commercial gain by misleading and attracting Internet users to the Respondent’s website and creating a likelihood of confusion with the DPD trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, the services offered on it and the email addresses indicated on this website. Therefore, the Panel finds that the disputed domain name has been registered and used in bad faith. 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 Assen Alexiev
Sole Panelist
Date: May 18, 2020
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