The Complainant is DPDgroup International Services GmbH & Co. KG., Germany, represented by Fidal., France.
The Respondent is Taylor Isaac, T.I., Dpd Express, United States of America. 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 29, 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 May 4, 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 May 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 3, 2021. The Center appointed Martin Michaus Romero as the sole panelist in this matter on June 12, 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 is one of the largest parcel delivery networks in Europe. The Complainant is owner of several DPD trademarks in several countries. In particular, it owns: International trademark registrations: a) No. 761146 registered on May 26, 2001 in classes 36 to 39 DPD and design. b) No. 1217471 registered on March 28, 2014, in classes 9, 16, 35, 39 and 42 DPD. c) No. 1271522 registered on 25, 2015 in classes 9, 16, 35, 39 and 42 DPDGROUP and design. The Complainant has registered and used various domain names incorporating the mark DPD, such as The disputed domain name The Complainant states in its Complaint that the Respondent: 1) Registered the disputed domain name which is identical to the Complainant’s well-known trademark DPD without the Complainant’s knowledge or authorization. 2) Registered the disputed domain name to create confusion amongst Internet users, that the disputed domain name is affiliated with the Complainant; 3) Has no rights or legitimate interests in the disputed domain name; and 4) Likely intended to confuse the Complainant’s customers or potential customers, considering the complete reproduction of the DPD trademark in the disputed domain name. Accordingly, the disputed domain name was selected, registered, and used by the Respondent in bad faith and not for a bona fide offering of goods or services, nor any fair use, but rather to mislead Internet users, disrupt the Complainant’s business, and affect the reputation of the DPD trademark. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Considering that the Respondent did not reply to the Complainant’s contentions, in order to determine whether the Complainant has met its burden as stated in paragraph 4(a) of the Policy, the Panel bases its Decision on the statements and documents submitted and in accordance with the Policy and the Rules. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: (i) that the disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has submitted evidence of its rights in the DPD trademark. The disputed domain name is confusingly similar to the Complainant’s trademark. The disputed domain name reproduces the Complainant’s trademark in its entirety with the addition of the words “express” and “track”. The words “express” and “track” have no effect on the overall impression of the dominant part of the disputed domain name and their addition do not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark. The Top-Level-Domain (“TLD”) suffix, “.com”, should be disregarded for the purposes of the confusing similarity test, as it is viewed as a standard registration requirement. See section 1.11.1 of the WIPO Overview of WIPO Panel views on selected UDRP questions, third edition (the WIPO Overview 3.0). The Panel finds that the Complainant satisfies paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Respondent has not received permission or authorization to use the Complainant’s trademark. The Respondent did not reply to the Complainant’s contentions, and therefore has not provided any evidence to demonstrate the contrary. It should be pointed out that nothing in the available record indicates that the Respondent is an individual, business, or corporation known by the name “DPD”. Furthermore, the Respondent is not using the disputed domain name for a bona fide offering of good or services, nor for a legitimate noncommercial or fair use that might give rise to rights or legitimate interests in the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name, has made demonstrable preparation to use it for a bona fide offering of good or services, owned a trademark or is making a legitimate noncommercial or fair use of the disputed domain name. The Panel finds that the Complainant has put forward a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, which the Respondent has not rebutted. Accordingly, the Panel finds that the Complainant satisfies paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith According to the evidence submitted by the Complainant, it is clear to the Panel that the registration and the use of the disputed domain name has been in bad faith, by including the DPD trademark, to intentionally attract Internet users for commercial gain. The inclusion of the terms “express” and “track” in the disputed domain name attempts to deceive or lead Internet users to believe that the disputed domain name is operated by the Complainant. The Panel finds that the disputed domain name was registered and is being used in bad faith due to the following: 1) According to the WhoIs details, the disputed domain name was registered on March 20, 2021. The Complainant’s trademarks were registered way before that date. The disputed domain name was registered in 2021, several years after the Complainant’s trademark was filed and after the Complainant registered its domain name 2) The previous and current use of the disputed domain name was deliberately conducted to take advantage of the reputation of the business activities of the Complainant and goodwill of its trademark. The Panel is of the opinion that at the time the disputed domain name was registered, the Respondent must have been aware of the existence of the Complainant’s DPD trademark. 3) The Respondent has demonstrated, by registering the disputed domain name, which reproduces the Complainant’s trademark, an intent to capitalize on the goodwill of the Complainant’s trademark. Furthermore, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website or other online location by creating a likelihood of confusion with the Complainant’s DPD trademark. The disputed domain name used to resolve to a website that promotes complementary services to those offered by the Complainant, which reveals the intent of the Respondent to take unfair advantage of the Complainant well-known trademarks by making Internet users believe that the disputed domain name is associated and/or authorized by the Complainant. The fact that the disputed domain name no longer resolves to an active website does not prevent a finding of bad faith. 4) The above-mentioned activities, as well as the Respondent’s default constitute, in view of the Panel, a clear evidence of registration and use of the disputed domain name in bad faith. In view of the above the Panel finds that the disputed domain name was registered and is being used in bad faith within the meaning of paragraphs 4(b)(iv) of the Policy. The Panel finds that the Complainant satisfies 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 Martin Michaus Romero
Sole Panelist
Date: June 26, 2021
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