The Complainant is DPDgroup International Services GmbH & Co. KG, Germany, represented by Fidal, France.
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States of America (“United States”) / Peter Lucas, PR Home, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2021. On April 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 19, 2021, 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 April 20, 2021 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 April 20, 2021. 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 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 26, 2021. The Center appointed George R. F. Souter as the sole panelist in this matter on June 3, 2021. 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 has been offering postal and delivery services since 1977 under its DPD trademark, and has circa 32,000 pick-up points in 230 countries. Details of an extensive portfolio of trademark registrations of its DPD trademark have been supplied to the Panel. These include International Registration No. 1217471, in classes 9, 16, 35, 39 and 42, registered on March 28, 2014. The disputed domain name was registered on February 27, 2021, and resolves to a website which offers complimentary services to those offered by the Complainant. 5. Parties’ Contentions A. Complainant The Complainant alleges that the disputed domain name is confusingly similar to its DPD trademark, containing the Complainant’s DPD trademark in its entirety, together with merely descriptive or non-distinctive elements, namely the words “global” and “logistic”. The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain name, in particular that the Respondent, so far as the Complainant is aware, is not generally known by the disputed domain name, and that the Complainant has never granted the Respondent permission to use its DPD trademark in a domain name, or otherwise. The Complainant alleges that the disputed domain name was registered in bad faith, and is being used in bad faith in connection with a website offering services complementary to those offered by the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (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 is satisfied from the information provided that the Complainant has sufficient rights in its DPD trademark for the purposes of these proceedings. It is well-established in prior decisions under the UDRP, with which the Panel agrees, that a generic Top-Level Domain (“gTLD”) is generally irrelevant when comparing a trademark with a disputed domain name. Accordingly, the Panel considers the gTLD “.com” to be irrelevant in the circumstances of the present case, and so finds. The Complainant’s DPD trademark is clearly recognizable in the disputed domain name, and the additional words “global” and “logistic” following it do not prevent a finding of confusing similarity between the Complainant’s DPD trademark and the disputed domain name. In the Panel’s opinion, the disputed domain name is clearly confusingly similar to the Complainant’s trademark, and the Panel so finds. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy. The Panel considers the submissions put forward by the Complainant, including the Respondent not being generally known by the disputed domain name and the Complainant never granting the Respondent permission to use its DPD trademark, as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain names to rebut this prima facie case. Furthermore, the nature of the disputed domain name, incorporating the Complainant’s widely-known DPD trademark and two dictionary terms related to the Complainant’s area of business, cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.5.1. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name can lead, in appropriate circumstances, to a finding of registration of a disputed domain name in bad faith. The circumstance of the present case, in which the Panel regards it as self-evident that the Complainant’s DPD trademark was deliberately appropriated in the disputed domain name, are such that the Panel concludes that a finding of registration in bad faith is justified, and so finds. The website operated under the disputed domain name exhibits features which, in the Panel’s opinion, would serve to imply that the website is operated by the Complainant, or with its consent, which would, in the Panel’s opinion, serve to induce confusion on the part of users. Further, it is well-established in prior decisions under the Policy, that the use of a website under a disputed domain name in connection with a website impersonating a complainant and appearing to provide the goods and services offered by the complainant, or similar goods and services, constitutes use of the disputed domain name in bad faith. In the Panel’s opinion, in the circumstances of the present case, the offering of services complementary to those offered by the Complainant via a website that impersonates the Complainant, including the use of a logo device of the Complainant, is a clear example of use in bad faith, and so finds. Accordingly, the Panel finds that the Complainant has satisfied the requirements 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 George R. F. Souter
Sole Panelist
Date: June 17, 2021
Full & Egal Universal Law Academy