The Complainant is DFDS A/S, Denmark, represented by BrandIT GmbH, Switzerland.
The Respondent is Contact Privacy Inc. Customer 1249392938, Canada / sfsd ds, Pakistan.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2021. On October 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 25, 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 October 26, 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 October 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 November 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 30, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 1, 2021.
The Center appointed Lynda M. Braun as the sole panelist in this matter on December 17, 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 BackgroundFounded in 1866, the Complainant is an international transport company providing ferry and logistics services in Europe and Turkey and became a leading ferry operator through a merger of four Danish steamship companies. In 1986, the Complainant was organized into four divisions: Passenger, Transport, Liner, and Tor Line, and today, the Complainant includes two commercial divisions: the Ferry Division, moving freight and passengers on ferry routes in Europe, and the Logistics Division, providing transport and logistics solutions for a wide range of businesses. Due to its extensive use and advertising, as well as the revenue the Complainant receives, the Complainant enjoys a high degree of renown in many countries. For example, the Complainant is followed by thousands of individuals on popular social media platforms.
The Complainant owns many registered trademarks in numerous jurisdictions worldwide, including, but not limited to: DFDS, European Union Trademark Reg. No. 000353243, registered on October 26, 1998 in international classes 35, 39 and 42; - DFDS, International Trademark Reg. No. 897881, registered on October 7, 2005 in international classes 35, 38, 39, 42 and 43; DFDS, International Trademark Reg. No. 1306315, registered on April 12, 2016 in international classes 36, 39, 41 and 43; and DFDS, International Trademark Reg. No. 1306670, registered on April 12, 2016 in international classes 36, 39, 41 and 43 (hereinafter collectively referred to as the “DFDS Mark”).
In addition, the Complainant registered the domain name
The Disputed Domain Name was registered on February 10, 2021 and resolves to an inactive landing page containing no substantive content which states, “This site can’t be reached. dfdslogin.page’s server IP address could not be found.”
On April 7, 2021, the Complainant’s attorney sent a cease-and-desist letter to the Respondent, informing the Respondent that it was infringing the Complainant’s trademark rights by using the DFDS Mark in the Disputed Domain Name and requested that the Respondent cease the use of the Disputed Domain Name. The Complainant never received a reply from the Respondent.
5. Parties’ Contentions A. ComplainantThe following are the Complainant’s contentions:
- the Disputed Domain Name is confusingly similar to the Complainant’s DFDS Mark;
- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
- the Disputed Domain Name was registered and is being used in bad faith; and
- the Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsIn order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)):
(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 SimilarThis element consists of two parts: first, does the Complainant have rights in a relevant trademark, and second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the DFDS Mark.
It is uncontroverted that the Complainant has established rights in the DFDS Mark based on its decades of use as well as its many registered trademarks for the DFDS Mark in the European Union and other jurisdictions worldwide. The general consensus is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot,
WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has rights in the DFDS Mark.
The Disputed Domain Name consists of the DFDS Mark in its entirety followed by the dictionary or descriptive term “login”, and then followed by the generic Top-Level Domain (“gTLD”) “.page”. It is well established that a domain name that wholly incorporates a trademark may be deemed confusingly similar to that trademark for purposes of the Policy despite the addition of other terms. As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “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”. For example, numerous UDRP decisions have reiterated that the addition of a dictionary or descriptive term to a trademark does not prevent a finding of confusing similarity. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo,
WIPO Case No. D2011-0795; Hoffmann-La Roche Inc. v. Wei-Chun Hsia,
WIPO Case No. D2008-0923.
Finally, the addition of a gTLD such as “.page” to a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a disputed domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,
WIPO Case No. D2012-0182 and WIPO Overview 3.0, section 1.11. Thus, the Disputed Domain Name is confusingly similar to the Complainant’s DFDS Mark.
Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate InterestsUnder the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
There is no evidence in the record suggesting that the Respondent has rights or legitimate interests in the Disputed Domain Name. The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use the Complainant’s DFDS Mark. There is also no evidence that the Respondent is commonly known by the Disputed Domain Name or by any similar name.
Moreover, the Complainant does not have any business relationship with the Respondent and based on the passive use made of the Disputed Domain Name to resolve to a landing page with no substantive content, the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name.
Finally, the composition of the Disputed Domain Name, comprising the entirety of the DFDS Mark, carries a risk of implied affiliation and cannot constitute fair use here, as it effectively suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1.
Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad FaithThe Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.
First, with respect to the use of the Disputed Domain Name, passive holding does not prevent a finding of bad faith. By using the Disputed Domain Name passively and having no content on its web page, the Respondent registered and is using the Disputed Domain Name in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003. “The lack of use [of a domain name] by itself does not indicate anything. Nevertheless, the lack of use of a domain name that is not backed up by any trademark and that coincides with a known, well-known or renowned trademark owned by someone else, does not indicate other than bad faith in the sense of paragraph 4(b) of the Policy.” See El Bebe Productions Ltd v. Rachid Zouad,
WIPO Case No. D2018-0469 (citing Itaú Unibanco Holding S.A. v. Valdery Dos Santos Decorações ME,
WIPO Case No. D2009-1335).
The Respondent’s registration of the Disputed Domain Name that is confusingly similar to the Complainant’s registered trademark is suggestive of bad faith registration and use. Based on the circumstances, the Respondent registered and used the Disputed Domain Name in bad faith in an attempt to create a likelihood of confusion with the Complainant’s DFDS Mark. Moreover, the registration of a domain name that reproduces a trademark in its entirety (being identical or confusingly similar to such trademark) by an individual or entity that has no relationship to that mark, without any reasonable explanation on the motives for the registration, may be suggestive of opportunistic bad faith. See Ebay Inc. v. Wangming,
WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,
WIPO Case No. D2000-0163.
Finally, the Respondent did not respond to the cease-and-desist letter sent by the Complainant’s attorney. Past UDRP panels have held that failure to respond to a cease-and-desist letter may be considered a factor in finding bad faith registration and use of a domain name. See Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party,
WIPO Case No. D2000-0330.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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
Lynda M. Braun
Sole Panelist
Date: December 23, 2021