The Complainant is DPDgroup International Services GmbH & Co. KG, Germany, represented by Fidal, France.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Mark Minami, 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 November 10, 2021. On November 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 11, 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 November 15, 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 November 16, 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 December 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 30, 2021. The Respondent did not submit a formal response but sent an email communication on December 10, 2021. Accordingly, on January 4, 2022, the Center informed the Parties that it would proceed with the panel appointment process.
The Center appointed Federica Togo as the sole panelist in this matter on January 14, 2022. 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 is the registered owner of trademarks in several jurisdictions consisting of or containing the term DPD, e.g., International trademark registration no. 1217471, registered on March 28, 2014, in classes 9, 16, 35, 39 and 42 (amongst others for “Warehousing services, namely, the storage, distribution, removal and packaging of parcels and goods; shipping and delivery services, namely, removal, transport and delivery of parcels and letters via various modes of transport; freight forwarding services; transport of goods and parcels by air, rail, river, sea and road; shipping and delivery services, namely, the pickup, transportation and delivery of parcels and letters”) and designating several countries, amongst others United States of America.
It results from the information disclosed by the Registrar that the disputed domain name was registered on August 6, 2021, and resolves to a website allegedly providing postal and delivery services and reproducing without any authorization the Complainant’s trademarks.
5. Parties’ Contentions A. ComplainantIt results from the Complainant’s undisputed allegations that it has been operating in the sector of postal and delivery services since 1977 and has 32,000 pickup points in 230 different countries.
The Complainant uses the domain name
The Complainant contends that its trademark DPD is well-known in the field of parcel and postal services.
The Complainant further contends that the disputed domain name is confusingly similar to the Complainant’s earlier trademark, since contains the Complainant’s trademark in its entirety with the additional term of “wilhelmsburg”, which designates a district of Hamburg in Germany. The latter does not distinguish the disputed domain name from the Complainant’s DPD trademark and such use merely serves to heighten potential Internet user confusion with the Complainant’s domain names, website and the postal and delivery services that it offers through them.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, the Respondent is not commonly known under the disputed domain name, nor is he offering a bona fide offer of product or services. Moreover, the Complainant has not authorized licensed, permitted or otherwise consent to the Respondent’s use of the trademark DPD in the disputed domain name and has no relationship with the Respondent.
Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant provided evidence that the disputed domain name resolves to a website allegedly providing postal and delivery services, reproducing without any authorization the Complainant’s trademarks and the Complainant website’s look and feel. Considering the Respondent reproduction of the Complainant’s trademark on its website promoting similar services at the disputed domain name, it is apparent that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a confusion with the Complainant’s trademark.
B. RespondentThe Respondent did not substantively reply to the Complainant’s contentions, other than an email on December 10, 2021, stating “Ok, I will delete my website soon”.
6. Discussion and FindingsParagraph 15(a) of the Rules instructs this Panel to “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”. Paragraph 4(a) of the Policy requires a complainant to prove each of the following three elements in order to obtain an order that the disputed domain name be transferred or cancelled:
(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 Panel will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.
A. Identical or Confusingly SimilarIt results from the evidence provided, that the Complainant is the registered owner of various trademark registrations in several jurisdictions consisting of or containing the term DPD. Reference is made in particular to International trademark registration no. 1217471, registered on March 28, 2014, in classes 9, 16, 35, 39 and 42 (amongst others for “Warehousing services, namely, the storage, distribution, removal and packaging of parcels and goods; shipping and delivery services, namely, removal, transport and delivery of parcels and letters via various modes of transport; freight forwarding services; transport of goods and parcels by air, rail, river, sea and road; shipping and delivery services, namely, the pickup, transportation and delivery of parcels and letters”) and designating several countries, amongst others United States of America.
Prior UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety (e.g., OSRAM GmbH v. Private Registration, OK HOSTING SC, WIPO Case No. D2021-0600; Carrefour SA v. Matias Barro Mares, WIPO Case No. D2020-3088; LEGO Juris A/S v. ken Teo,WIPO Case No. D2020-2380; Sanofi v. WhoisGuard Protected, WhoisGuard, Inc. / Todd Peter,WIPO Case No. D2020-2060; Virgin Enterprises Limited v. Domains By Proxy LLC, Domainsbyproxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-1923).
This Panel shares this view and notes that the Complainant’s registered trademark DPD is fully included in the disputed domain name, followed by the geographical term “wilhelmsburg”. Furthermore, it is the view of this Panel that the addition of the term “wilhelmsburg” in the disputed domain name and the addition of a hyphen in the disputed domain name between the terms “dpd” and “wilhelmsburg” cannot prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark since the Complainant’s trademark is clearly recognizable in the disputed domain name (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.8).
Finally, the generic Top-Level Domain (“gTLD”) “.com” of the disputed domain name may be disregarded under the first element confusing similarity test (see WIPO Overview 3.0 at section 1.11.1).
In the light of the above, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate InterestsPursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.
According to the Complaint, which has remained unchallenged, the Complainant has no relationship in any way with the Respondent and did, in particular, not authorize the Respondent’s use of the trademark DPD, e.g., by registering the disputed domain name comprising the said trademark entirely.
Furthermore, the Panel notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy.
Moreover, the nature of the disputed domain name carries a risk of implied affiliation, since the disputed domain name contains the Complainant’s trademark DPD followed by the geographic term “wilhelmsburg” and geographic terms are seen as tending to suggest sponsorship or endorsement by the trademark owner, see WIPO Overview 3.0, section 2.5.1.
It is acknowledged that once the Panel finds a prima facie case is made by a complainant, the burden of production under the second element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds, in the circumstances of this case, that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithAccording to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith. One of these circumstances is that the Respondent by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location (paragraph 4(b)(iv) of the Policy).
It is the view of this Panel that these circumstances are met in the case at hand.
It results from the Complainant’s documented allegations that the disputed domain name resolves to a website allegedly providing similar services to those of the Complainant and reproducing without any authorization the Complainant’s trademarks. For the Panel, it is therefore evident that the Respondent positively knew the Complainant’s mark. Consequently, and in the absence of any evidence to the contrary, the Panel is convinced that the Respondent also knew that the disputed domain name included the Complainant’s trademarks when it registered the disputed domain name. This is underlined by the fact that the disputed domain name is clearly constituted by the Complainant’s registered trademark DPD followed by the geographical term “wilhelmsburg”. Registration of the disputed domain name which contains a third party’s mark, in awareness of said mark and in the absence of rights or legitimate interests amounts to registration in bad faith (see e.g., Cofra AG v. Privacy Service Provided by Withheld for Privacy ehf / Name Redacted,WIPO Case No. D2021-3762; F. Hoffmann-La Roche AG v. Domain Administrator, See PrivacyGuardian.org / Ponomarenko LTD, Pawlo Ponomarenko,WIPO Case No. D2021-2951; Philip Morris Products S.A. v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Farvez Bhuiyan, Heets Dubai ae,WIPO Case No. D2021-1194).
The finding of bad faith registration and use is supported by the further circumstances resulting from the case at hand which are (i) the Respondent’s failure to submit a formal response and its reply stating that it will delete the website at the disputed domain name; (ii) its failure to provide any evidence of actual or contemplated good-faith use; (iii) the implausibility of any good faith use to which the domain name may be put; and (iv) the Respondent concealing its identity behind a privacy shield.
In the light of the above the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) 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
Federica Togo
Sole Panelist
Date: January 28, 2022