The Complainant is DPDgroup International Services GmbH & Co. KG, Germany, represented by Fidal, France.
The Respondent is Adeola Oyemade, United States of America.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2021. On August 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 9, 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 August 13, 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 August 13, 2021.
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 August 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 15, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 20, 2021.
The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on October 7, 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 BackgroundThe Complainant, DPDgroup International Services GmbH & Co. KG, claims to provide international postal and delivery services since 1977.
The Complainant owns numerous trademark registrations which include DPD in various countries, including the following:
European Union Trademark Registration No. 6159487 DPD Dynamic Parcel Distribution, filed on January 8, 2007, registered on August 19, 2009 in classes 35 and 39;
International Trademark Registration No 761146 DPD, registered on May 26, 2001 in classes 36 and 39; and
International Trademark Registration No.1217471 DPD, registered on March 28, 2014 in classes 9, 16, 35, 39 and 42.
The Complainant also owns the domain name
The disputed domain name
The Complainant claims to have been operating since 1977 and to have 32,000 pickup points in 230 different countries.
The Complainant claims that the disputed domain name is confusingly similar with the trademark DPD in which the Complainant has rights; that the Respondent has no rights or legitimate interests in the disputed domain name, which was registered and is being used in bad faith.
More specifically, the Complainant is not aware that the Respondent has trademark or any other rights relating to the disputed domain name. The Respondent is not affiliated in any way with the Complainant and nothing suggests that the Respondent is commonly known by the disputed domain name.
The website to which the disputed domain name resolves is a very confusing copy of the Complainant’s corporate website.
The Respondent is deliberately using the identity of DPD and aims to create confusion with the Complainant in order to give credibility to its scams and phishing operations.
Finally, the Complainant requests the Panel to issue a decision ordering that the disputed domain name be transferred to the Complainant.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsAccording to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:
(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 was registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Panel is satisfied that the Complainant has proved to have rights in the trademark DPD.
As set forth in section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the disputed domain name is confusingly similar with the trademark. The test involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
The Panel considers that the disputed domain name is confusingly similar with the Complainant’s DPD trademark.
The disputed domain name incorporates the Complainant’s trademark DPD in its entirety with the addition of the words “global” and “delivery” which do not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark.
Pursuant to section 1.8 of WIPO Overview, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.
The “.com” generic Top-Level Domain (“gTLD”) is viewed as a standard registration requirement and is generally disregarded under the first element confusing similarity test, as set forth in section 1.11 of WIPO Overview 3.0.
Accordingly, the Panel finds that the disputed domain name is confusingly similar with the DPD trademark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy are fulfilled.
B. Rights or Legitimate InterestsPursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following non-exclusive defenses:
(i) before any notice to it of the dispute, the respondent’s 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 it 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.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well-established, as it is put in section 2.1 of WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production 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.
There is no evidence in the present case that the Respondent has been commonly known by the disputed domain name, enabling it to establish rights or legitimate interests therein.
Furthermore, there is no evidence in the file to prove any of the circumstances mentioned in paragraph 4(c) of the Policy, nor any other circumstances to suggest that the Respondent has rights or legitimate interests in the disputed domain name.
Likewise, and as further discussed under section 6.C of this decision, it does not seem that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name, but rather that it intends to use the disputed domain name for the purpose of deriving unfair monetary advantage by confusing Internet users and leading them to believe that the site to which the disputed domain name relates is an official site of the Complainant.
As established in section 2.5 of WIPO Overview 3.0: “Fundamentally, a respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner; the correlation between a domain name and the complainant’s mark is often central to this inquiry.” Here, the nature of the disputed domain name carries a risk of implied affiliation.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the disputed domain name (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy have been fulfilled.
C. Registered and Used in Bad FaithThe Panel is satisfied that the Respondent must have been aware of the Complainant’s trademarks mentioned in section 4 above (Factual Background) when it registered the disputed domain name on April 14, 2021.
The disputed domain name was registered many years after the Complainant had registered and used its trademark DPD and also the domain name
The Respondent when registering the disputed domain name has targeted the Complainant’s DPD trademark by adding two non-distinctive words thereto, “global” and “delivery”, both of which are descriptive and related to the Complainant’s business, with the intention to confuse Internet users and capitalize on the fame of the Complainant’s name and trademarks for its own monetary benefit. Since both words are related to the Complainant’s business, they can only add to the confusion.
In a previous UDRP case concerning the domain name
The fact that there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the disputed domain name is also a significant factor to consider that the disputed domain name was registered in bad faith (as stated in section 3.2.1 of WIPO Overview 3.0).
Finally, the manner in which the Respondent’s website to which the disputed domain name relates imitates the look and feel of the Complainant’s official website clearly demonstrates that the Respondent uses the disputed domain name in bad faith.
Thus, the Panel finds that the Respondent has registered and uses the disputed domain name intentionally to attempt to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s widely used mark as to the source, sponsorship, affiliation, or endorsement. This amounts to bad faith under paragraph 4(b)(iv) of the Policy.
7. DecisionFor 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
Miguel B. O’Farrell
Sole Panelist
Date: October 20, 2021