WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DHL Operations B.V. v. Shen Zhen YtExp Ltd.
1. The Parties
The Complainant is DHL Operations B.V., of Amsterdam, The Netherlands, is represented by Kay-Uwe Jonas Jonas Rechtsanwaltsgesellschaft mbH, Cologne Germany.
The Respondent is Shen Zhen YtExp Ltd, Shenzhen Baoan, Shenzhen Guangdong, China.
2. The Domain Name and Registrar
The disputed domain name <dhlex.com> is registered with Web Commerce Communications Limited dba WebNic.cc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by way of email on August 8, 2007 and received in hardcopy by the Center on August 10, 2007. On August 13, 2007, the Center transmitted by email to Web Commerce Communications Limited a request for registrar verification in connection with the domain name at issue. On August 14, 2007, Web Commerce Communications Limited transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 30, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 19, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 21, 2007.
The Center appointed Dr. Colin Yee Cheng Ong as the sole panelist in this matter on October 3, 2007. 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.
The language of the registration agreement has been confirmed by the registrar as English, and accordingly the language of proceedings shall be English.
4. Factual Background
The Panel has studied the Complainant’s submissions and indices containing various attached coloured and black and white printouts from various websites showing use of the Complainant’s trading name “DHL Operations B.V.” and “DHL”; as well as the Complainant’s letters relating to the Complainant. The Panel finds that the Complainant is the sole legal holder of numerous trademarks worldwide which consist in the designation “DHL” or contain this designation as a significant component. The Complainant has since 1996 registered a series of trademarks of DHL in Germany, the European Community, the United States of America and other countries including China.
Complainant’s affiliates own various domain names including the mark DHL such as, “www.dhl.co.uk”; “www.dhl.ch”; “www.dhl.de” as well as of its Global website available under “www.dhl.com” and also “www.cn.dhl.com” as the official web presence of the Complainant for China.
5. Parties’ Contentions
The Complainant contends that:
The DHL brand is the global market leader in international express, overland transport, air freight and is also the world’s number one in ocean freight and contract logistics. The Complainant’s core business is international transportation of documents and goods. The Complainant claims that in nearly every country of the world, it has a business location as shown on the internet page “www.dhl.com”. It transports and delivers millions of mailings and parcels throughout the world and is widely recognized by the public due to its omnipresence created by its thousands of yellow trucks and air-planes with the sign “DHL”.
The Complainant also claims that in China, it operates various business locations as shown on the Complainant’s official Chinese internet presence available under “cn.dhl.com”. It produced several related printouts from the Chinese internet pages.
The Complainant contends that it is indisputable that the Complainant is and has been the owner of the DHL- trademarks and has been well-known within Germany, Europe, China and internationally as the owner of these marks for years. Further, it relies upon the UDPR case DHL Operations B.V. v. Ali Kazempour, WIPO Case No. D2004-1094 - <dhlmail.com>, wherein that WIPO panel stated that “the “DHL” marks are notorious all over the world”.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel finds that the proceedings have been conducted in accordance with the Uniform Rules and the Policy. Having gone through the series of communications as set out above under the section on procedural history, the Panel concludes that the Center has notified the Respondent of this proceeding and has discharged its responsibility under paragraph 2(a) of the Uniform Rules. The Panel finds that the proceedings have been conducted in accordance with the Uniform Rules and the Policy. According to Paragraph 14(a) of the Uniform Rules, where there is a failure by the respondent to provide a response to the allegations of the complainant, as in the present case, the Panel is directed to make a decision on the administrative proceedings on the basis of the complaint and in accordance with Paragraph 14(b), the Panel shall “draw such inferences there from as it considers appropriate”.
The Respondent has been accorded with the opportunity to provide submissions and evidence to dispute the claims of the Complainant. If the Respondent chooses not to present any such evidence, an inference may be made that such evidence would not have been favorable to the Respondent, or that he accepts the factual claims of the Complainant, or even that he does not wish to respond or defend his perceived interest in the disputed domain name. In such case of silence by the Respondent, the Complainant shall then continue with his case and shall have to prove the three elements that are required by the Policy without opposition than the Complainant’s own ability to explain them. (See: Caterpillar Inc. v. Spiral Matrix/ Kentech, Inc WIPO Case No. D2006-0808)
The Panel should not decide in the complainant’s favor solely because of the reason of the Respondent’s default (See: Oxygen Media Corporation v. Spiral Matrix, WIPO Case No. D2006-0521). Under paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements of its case:
(i) The Respondent’s domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the domain names; and
(iii) The Respondent’s domain names have been registered and are being used in bad faith.
Under paragraph 15(a) of the Rules, this Panel must “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
In line with such provision, the Complainant must prove two limbs - that it enjoys the trademark right; and that the disputed domain name is identical with or confusingly similar to its trademark or service mark.
The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, usually considered in trademark infringement. (See e.g. Ebay Inc. v. Wangming, WIPO Case No. D2006-1107)
The Panel finds that the Complainant has been successful in proving these two aspects. First, the Complainant has shown that it does enjoy trademark right over the trademark DHL through both its extensive trademark registrations in many countries as well as extensive usage via the Internet, which is reachable from any country. Secondly, the disputed domain name, which wholly incorporates Complainant’s trademark DHL is confusingly similar to the Complainant’s trademark DHL.
The Complainant asserted that the Respondent’s registration of the disputed domain name <dhlex.com> is a mere combination of Complainant’s famous trademark/company name “DHL” and the abbreviation “ex” for “express” is a term relating to the Respondent’s business and service activities. That first part of the domain name which is “dhl” is identical to the Complainant’s well-known trademarks and company name “DHL”. As the dominant part and distinctive element of the domain <dhlex.com> is the Complainant’s famous trademark and that the addition of the element “ex” does not prevent the domain name from being confusingly similar to the Complainant’s trademark/ company name.
The Complainant submitted that the addition of the descriptive term code does not avoid confusion, especially because the Complainant has well-established trademark rights in China and that the public interprets “ex” as an abbreviation for “express”. It is also well established that the specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (See EAuto, L.L.C. v. Triple S Auto Parts, WIPO Case No. D2000-0047).
The Complainant referred to the earlier WIPO decision of GA Modefine S.A. v. Mark O’Flynn, WIPO Case No. D2000-1424 (February 27, 2001) and submitted in the present case that the domain name clearly relates to the DHL mark, as in the disputed domain name the generic term “mail” is just an addition to the mark DHL. It then contended that such a generic term is clearly related to the Complainant’s activities and that consumers and Internet users will be confused and misled into thinking that the domain name at issue belongs to the Complainant, due to the inclusion of a well-known mark combined with a generic term clearly linked with the Complainant’s activities. Finally the Complainant contended that the test of confusion must be especially strict when Complainant is the owner of well-known marks.
As many national trademark registries have issued trademark registrations to Complainant, the mark is entitled to a rebuttable presumption that the mark is inherently distinctive. As the Respondent has submitted no evidence on this point, the Panel has to respect the trademark as inherently distinctive.
The Panel thus finds that the domain name <dhlex.com> is identical to the DHL mark in which Complainant has exclusive rights and that Complainant has established the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
According to paragraph 4(b) (ii) of the Policy, the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the contested domain name.
Paragraph 4(c) of the Policy requires the Complainant to prove that the Respondent has no right or legitimate interest in the disputed domain name. However, it is the prevailing consensus view among Panelists that where a complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under Paragraph 4(c) of the Policy, then the respondent may lack a legitimate interest in the domain name.
As previously held by other WIPO Panels, “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”. (See eBay Inc. v. Akram Mehmood, WIPO Case No. DAE2007-0001)
The Panel thus finds that Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name which is identical the Complainant’s mark.
The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name.
There is no evidence on the record of this proceeding to suggest that the Respondent has been commonly known by the disputed domain name, or that Respondent has made a non-commercial or fair use of the disputed domain name.
Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph 4(a)(ii) is also satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the Policy provides a non-exhaustive list of what constitutes bad faith registration and one of the circumstances evidencing registration and use of a domain name in bad faith is that, by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, internet users to the respondent’s website or other on-line locations, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location. (See PRL USA Holdings, Inc. v. Yan Shif, WIPO Case No. D2006-0700 and Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co, WIPO Case No. D2000-0163. (“The domain name is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith.”)
The domain name <dhlex.com> was created on March 22, 2007. The Respondent had no connection to the Complainant and had no legitimate interests in registering the above-mentioned domain name.
Registration of a domain name that is confusingly similar or identical to a famous trademark by any entity, which has no relationship to that mark, is itself sufficient evidence of bad faith registration and use (see Centurion Bank of Punjab Limited v. West Coast Consulting, LLC, WIPO Case No. D2005-1319).
The Panel in this case finds that the disputed domain name was registered in bad faith. The earlier WIPO decision ( WIPO Case No. D2004-1094 DHL Operations B.V. v. Ali Kazempour, February 24, 2005) concerned the domain <dhlmail.com>. The panel there found bad faith and held that:
“It has been established in certain circumstances that when a domain name incorporates a famous mark comprised of a coined or fanciful term (which is the case for DHL), no other action, aside from registering the domain name, is required for demonstrating bad faith. This is based upon the premise that “it would be difficult, perhaps impossible, for Respondent to use the domain name as the name of any business, product or service for which it would be commercially useful without violating Complainant’s rights.”
In addition, the Complainant attempted to contact Respondent using the contact information listed in Whois and received no response. Finally, the Respondent also failed to respond to the Complaint in this matter. Accordingly, under these facts and circumstance, the panel finds that the domain name was registered and is being used in bad faith. (See e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
Accordingly, the Panel concludes that the Respondent registered and used the domain name <dhlex.com> in bad faith and that also the requirement of paragraph 4(a)(iii) of the Policy has been met.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <dhlex.com> be canceled.
Dr. Colin Yee Cheng Ong
Dated: October 21, 2007