The Complainant is DPDgroup International Services GmbH & Co. KG, Germany, represented by Fidal, France.
The Respondent is Kewe Aaron, Nigeria.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2021. On September 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 21, 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 September 28, 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 amended Complaint on September 29, 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 October 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 1, 2021.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on November 16, 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 offers postal and delivery services. According to its corporate profile, it counts with more than 58,000 parcel pickup points worldwide, having in 2020 delivered 1.9 billion parcels and had a turnover of EUR 11 billion. The Complainant owns amongst hundreds of others the following trademarks (Annex 4 to the Complaint):
- European Union registration No. 6159487 for the word mark DPD DYNAMIC PARCEL DISTRIBUTION, filed on January 8, 2007 and registered on August 19, 2009, in classes 35 and 39;
- International registration No. 761146 for the word and device mark DPD, registered on May 26, 2001, in classes 36 and 39; and
- International registration No. 1217471 for the word and device mark DPD, registered on March 28, 2014, in classes 9, 16, 35, 39 and 42.
The disputed domain name was registered on April 18, 2021. At the time the Complaint was submitted the disputed domain name was used in connection with a website offering services related to those of the Complainant. The disputed domain name no longer resolves to an active webpage.
5. Parties’ Contentions A. ComplainantThe Complainant claims to be operative since 1977, servicing today 230 different countries with its parcel delivery services, having acquired substantial reputation.
According to the Complainant, the webpage that was available at the disputed domain name at the time the Complainant was submitted reproduced, without authorization, the Complainant’s trademark as well as the slogan “Your delivery experts”, offering online parcel tracking, which is reminiscent of the Complainant’s services.
Under the Complainant’s view, the disputed domain name reproduces the Complainant’s trademark in its entirety with the addition of term “exps” which is insufficient to avoid confusion in view of the phonetical and conceptual similarities.
Regarding the absence of the Respondent’s rights or legitimate interests, the Complainant argues that:
(i) the Respondent has not been commonly known by the disputed domain name, nor does it has rights on any trademark composed of such sign;
(ii) the Complainant has not authorized, licensed, permitted or otherwise consented to the Respondent’s use of DPD in the disputed domain name and has no relationship with the Respondent; and
(iii) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, rather showing a clear intent to obtain an unfair commercial gain, with a view to misleadingly diverting consumers or to tarnish the trademark owned by the Complainant.
As to the registration and use of the disputed domain name in bad faith, the Complainant states that:
(i) the Respondent knew of the Complainant’s trademark when registering the disputed domain name given that it has reproduced the Complainant’s trademark and logo in the webpage that resolved from the disputed domain name, offering related services to those of the Complainant;
(ii) the Respondent appears to have deliberately built a confusing imitation of the Complainant’s corporate website, seeking to create confusion with the Complainant in order to give credibility to its scams and phishing operations; and
(iii) the exploitation of consumer confusion for the purpose of offering related services, with evident knowledge of the Complainant’s rights in its trademarks, is one of the strongest examples of registration and use in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name 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.
The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the disputed domain name.
In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
A. Identical or Confusingly SimilarThe Complainant has established rights over the DPD trademark.
The disputed domain name reproduces the Complainant’s trademark in its entirety, with the addition of the term “exps”. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7
Furthermore, the past use of the disputed domain name in connection with a webpage purportedly offering related services to those of the Complainant and reproducing the Complainant’s slogan affirms a finding of confusing similarity between the disputed domain name and the Complainant’s trademark. See WIPO Overview 3.0, section 1.15.
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy provides a nonexclusive list of circumstances that may indicate the Respondent’s rights or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not responding the Complainant, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. Nevertheless, the burden of proof is still on the Complainant to make at least a prima facie case against the Respondent under the second UDRP element.
In that sense, and according to the evidence submitted, the Complainant has made a prima facie case against the Respondent that the Respondent has not been commonly known by the disputed domain name and neither has been authorized, licensed, permitted or otherwise consented to the Respondent’s use of DPD in the disputed domain name and has no relationship with the Respondent.
Also according to the evidence submitted by the Complainant, the use made of the disputed domain name in connection with a webpage offering related services to those of the Complainant reproducing the Complainant’s trademark and slogan does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain name in these circumstances.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad FaithThe Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where a respondent has 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 a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, both the registration and use of the disputed domain name in bad faith can be found pursuant to Policy, paragraph 4(b)(iv) in view of the reproduction of the Complainant’s trademark and slogan at the webpage that resolved from the disputed domain name offering related services to those of the Complainant, which creates a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement thereof.
Other factors that corroborate the Panel’s finding of bad faith of the Respondent are:
a. the absence of a formal Response by the Respondent; and
b. the indication of what appears to be false or incomplete contact details provided in WhoIs information relating to the disputed domain name, communication not being delivered to it by courier.
For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name.
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
Wilson Pinheiro Jabur
Sole Panelist
Date: November 29, 2021