The Complainants are DPDgroup International Service GmbH & Co. KG and DPDgroup UK Limited, United Kingdom (or “UK”), represented by Browne Jacobson LLP, United Kingdom.
The Respondent is Patel Pankaj, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2020. On June 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 19, 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 June 21, 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 amended Complaint on June 22, 2020. On the same date, the Center received an email communication from the Respondent. The Center verified that the Complaint together with the amended 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 June 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 14, 2020. On July 16, 2020, the Center received an email communication from the Respondent in which it requested an extension to submit a response. On the same date, the Center notified the Parties that it will commence the process to appoint the Administrative Panel. The Respondent submitted a response on July 17, 2020. The Center appointed Nick J. Gardner as the sole panelist in this matter on July 24, 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 Complainants are a global parcel delivery service headquartered in Germany. They comprise the German parent company and its UK subsidiary. The parent company owns the trademarks identified below and the UK company is licenced to use these trademarks in the UK. The Complainants are a very substantial organisation – in the UK they operate more than 8,000 vehicles from 65 locations and deliver over 250 million parcels a year. The parent company owns numerous trademark registrations for the DPD word and associated device marks across multiple jurisdictions, including, inter alia: (i) European Union Trade Mark DPD in stylised form, registration No. 012722427, registered on August 14, 2014 (the “DPD trademark”) (ii) European Union Trade Mark DPD GROUP with an associated logo, registration No. 013720636, registered on June 8, 2015 (the “DPD Group trademark”) The Complainants also own an extensive number of “dpd” domain names, including The Respondent is an individual based in the United Kingdom. The Disputed Domain Name was registered on September 6, 2019. The Disputed Domain Name is linked to a website (the “Respondent’s Website”) which comprises a single page. That page is a screenshot copy of one of the Complainants’ own web pages but with various generally derogatory additions having been made to the page. Thus by way of example underneath the Complainants’ DPD logo some text reading “Delays Problems Despair” has been introduced. Various other changes of a similar nature have been made elsewhere on the page. Towards the bottom of the page text has been added which reads “This is not the website of DPD Group UK. this is a non-commercial parody site. Any ‘Person’ making ‘Unjustified Threats’ to myself or the service providers will find themselves at the receiving end of a Sec 21 Proceedings. This is a non-commercial website, any claim of ‘Passing Off’ will be seen as malicious as it would be in direct violation of the principle set out in the Jif Lemon Case. OK Mr LAWYERS”. The Complainants previously complained by email to the Registrar about the content of the Respondent’s Website and received in reply an email from the Respondent making broadly the same points as are made in the Response (see below). 5. Parties’ Contentions A. Complainant The Complainant’s contentions can be summarized as follows. The Complainant says that the Disputed Domain Name is identical or confusingly similar to its DPD trademark and DPD Group trademark. The Complainant also relies upon unregistered trademark rights it says it has in the term DPD or DPD Group but the Panel has not found it necessary to consider these. The Complainant says the Respondent has no rights or legitimate interests in the term “DPD” or “DPD Group UK”. It says it is notable that the Disputed Domain Name does not incorporate a term such as “sucks” which is commonly used to notify Internet users that the website they are about to enter is not that of the owner of the trade mark it contains, but rather a website used for the purposes of criticism. As described in section 2.5.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), in order to demonstrate a legitimate fair use, the consensus of UDRP panels is that the Respondent’s use of the disputed domain name must not be misleading as to its source or sponsorship, and must not be a pretext for tarnishment. It discusses the applicable principles in some detail. These are addressed by the Panel below. The Complainants also say that the Disputed Domain Name was registered and is being used in bad faith. They say the inclusion of the DPD trademark and the DPD Group trademark in the Disputed Domain Name without the inclusion of any effective distinguishing modifier was calculated to confuse and mislead Internet users to the Respondent’s Website and this is bad faith. B. Respondent Although the Response was provided outside the required time limit the Panel will in its discretion to admit it. The Response is expressed in very emotive terms. It contains argument based on the Respondent’s apparent views as to English legal principles relating to trademark and copyright law. For reasons discussed below the Panel considers these to be of no relevance and the Panel does not propose to repeat them here. The essential point the Respondent makes is that the Respondent’s Website is a genuine noncommercial criticism or parody website and he is entitled to use the Disputed Domain Name to link to such a website. The Respondent also complains that the Policy is likely to be unfair and that he apprehends the Panel will be biased against him. Thus for example he says “The complainant’s complaint to WIPO is a vexatious and malicious complaint made in bad faith in an attempt to reverse hijack the domain name in the hope that the complainant will encounter a racially biased administrator who will ignore the law and give the all white gang my property. The complainant and their lawyer live in their white privileged world of colonialism stealing coloured people’s time and property because coloured lives don’t matter to them. Well I can’t breathe which is the whole reason I started my parody website”. He also accuses the Complainants of seeking to mislead the Center or the Panel by misquoting or misrepresenting various items, although he does not specify exactly what items he means in this context. 6. Discussion and Findings Procedural Matters The Panel considers it is appropriate to allow this complaint to be brought by both complainants – see WIPO Overview 3.0 at section 4.11.1: “In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation”. The Panel considers both (i) and (ii) are satisfied in the present factual situation. Substantive Matters To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that: (i) the Disputed Domain Name is identical with 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 Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel finds that the Complainant has trademark rights in the DPD trademark and the DPD Group trademark. The Disputed Domain Name is confusingly similar to the DPD Group trademark. It does not matter that this trademark includes a logo. Similarity between a domain name and a device mark which includes words or letters is a readily accepted principle where the words or letters comprise a prominent part of the trademark in question – see for example EFG Bank European Financial Group SA v Jacob Foundation,WIPO Case No. D2000-0036; and Sweeps Vacuum & Repair Centre, Inc. v Nett Corp,WIPO Case No. D2001-0031. It is also established that the addition of a term (such as here the geographic designation “uk”) to the Disputed Domain Name would not prevent a finding of confusing similarity under the first element (section 1.8 of the WIPO Overview 3.0); furthermore, it is well established that the generic Top-Level Domain (“gTLD”), in this case “.com, is not generally taken into account for the purpose of determining whether a domain name is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429. The Panel also notes that the DPD trademark is plainly recognizable in the Disputed Domain Name. Accordingly, the Panel finds the Disputed Domain Name is confusingly similar to the Complainants’ trademark. Therefore, the first condition of paragraph 4(a) of the Policy has been fulfilled. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Names: (i) before any notice to the Respondent of the dispute, 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) the Respondent has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or (iii) the Respondent is 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. (i) and (ii) are clearly not relevant. The question for the Panel is whether (iii) applies. The Complainants have not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the DPD Group trademark. The Complainants have prior rights in the DPD Group trademark which precede the Respondent’s registration of the Disputed Domain Name. The Complainants have therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Names and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Names (see for example Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003 0455). The Response asserts that the Disputed Domain Name is being used noncommercially and is linked to a “parody” website and that this suffices to establish a legitimate interest. The Panel accepts that the Respondent’s use is noncommercial but that alone does not establish a legitimate interest – it is necessary to consider how the Disputed Domain Name is used, with the fact that the use is noncommercial being only part of the assessment required. The Panel takes the view that the Respondent’s Website is in substance a criticism site directed at the Complainant. The Panel has considered this and had regard to the position set out in WIPO Overview 3.0, section 2.6, as follows: “2.6 Does a criticism site support respondent rights or legitimate interests? As noted above, UDRP jurisprudence recognizes that the use of a domain name for fair use such as non-commercial free speech would in principle support a respondent’s claim to a legitimate interest under the Policy. 2.6.1 To support fair use under UDRP paragraph 4(c)(iii), the respondent’s criticism must be genuine and noncommercial; in a number of UDRP decisions where a respondent argues that its domain name is being used for free speech purposes the panel has found this to be primarily a pretext for cybersquatting, commercial activity, or tarnishment. 2.6.2 Panels find that even a general right to legitimate criticism does not necessarily extend to registering or using a domain name identical to a trademark (i.e. 2.6.3 Where the domain name is not identical to the complainant’s trademark, but it comprises the mark plus a derogatory term (e.g., In the present case, the Panel notes that the Disputed Domain Name is in effect identical to the DPD Group trademark. Accordingly the Panel considers that section 2.6.3 does not apply and there exists an “impermissible risk of user confusion” similar to that described in section 2.6.2 of the WIPO Overview 3.0 (above). Accordingly, the Panel does not consider that any legitimate interests arise in this respect. The Panel notes that had the Disputed Domain Names combined the DPD or DPD Group trademark with a manifestly derogatory term different considerations would have arisen (see section 2.6.3 of WIPO Overview 3.0, above) and the result would not necessarily have been the same. The Panel has considered the points made in the Response. The Respondent appears to be under the mistaken impression that questions of trademark or copyright law are relevant to determining the outcome of this case. That is not strictly correct. There is a threshold question as to whether the Complainant has rights in a trademark (see above) but the issue then is as to the application of the terms of the Policy. The terms of the Policy are freestanding and independent of questions of national trademark or copyright law (though they bear some conceptual similarities to the former). The Respondent accepted the applicability of those terms when he registered the Disputed Domain Name. Accordingly, the Respondent’s submissions as to the relevance of copyright or trademark law principles are not accepted; The Panel notes for completeness that even if the principles the respondent relies upon were applicable the Panel would still have reached he same conclusion, noting that the Disputed Domain Name is in substance the same as the name of the Complainant’s UK company.. The Panel therefore finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the Disputed Domain Name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Names and the second condition of paragraph 4(a) of the Policy has been fulfilled. C. Registered and Used in Bad Faith In the present case, it was manifestly a deliberate decision by the Respondent to use the DPD Group trademark as the main element of the Disputed Domain Name. This was clearly part of a deliberate plan to publish material that was critical of the Complainant. The Panel notes that rather curiously the Respondent has not explained what his motives were in publishing the Respondent’s Website. The Panel infers the Respondent is likely a dissatisfied customer of the Complainants. The Panel has no means of assessing whether or not any of the criticisms implicitly contained in the content of the Respondent’s Website have any basis in fact nor is it the function of the Panel to do so. The Panel does not consider that this matters. Whether or not the Respondent is entitled to criticise the Complainant by publicising material such as that which is found on the Respondent’s Website is not a matter for the Policy. What however the Policy is directed at is using, as part of this activity, a domain name which is identical or confusingly similar to the Complainant’s trademark and which would be likely to be taken to be that of the Complainant. That is what is happening in the present case and is misleading and likely to attract visitors who are searching for the Complainant’s business. That, in the opinion of the Panel, amounts to bad faith registration and use. The Panel again notes that had the Disputed Domain Name combined the DPD trademark or DPD Group trademark with a manifestly derogatory term different considerations would have arisen and the result would not necessarily have been the same. The Panel notes that the Complainants also appear to accept this is the case (see above). The Panel also does not consider that the wording the Respondent’s Website contains as to it being a “parody” site (see above) alters the above analysis which hinges on the Disputed Domain Name being in substance identical to the Complainant’s trademark. In the present case for the reasons explained above the Panel concludes the overall circumstances point to bad faith and the disclaimer does not cure that bad faith. As a result, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled. 7. Alleged Bias In view of the manner in which the Response has been expressed (see above) the Panel confirms that its decision is based entirely upon the applicability of the Policy to the Disputed Domain Name having regard to the content of the Respondent’s Website. The Respondent’s identity or ethnicity has no role in the Panel’s decision – in fact, the Panel has no idea who the actual Respondent is aside from his name (which may or may not be accurate, as so far as the Panel is aware, there are no screenings done by registrars to ascertain the accuracy of registrant information). As noted above had the Disputed Domain Name contained an appropriate modifying term the Panel would likely have reached a different conclusion. The Panel has also been unable to identify any manner in which the Complainants have sought to mislead the Panel and rejects this allegation by the Respondent. 8. 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 Names Nick J. Gardner
Sole Panelist
Date: August 10, 2020
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