WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deutsche Post AG v. Vanilla Limited, Minakumari Periasamy
Case No. D2008-0904
1. The Parties
Complainant is Deutsche Post AG, Bonn, Germany, represented by Jonas Rechtsanwaltsgesellschaft mbH, Germany.
Respondent is Vanilla Limited, Minakumari Periasamy, Singapore.
2. The Domain Name and Registrar
The disputed domain name <deutschpost.com> (“Domain Name”) is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2008. On June 16, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name at issue. On June 16, 2008, eNom, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on June 24, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 14, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on July 15, 2008.
The Center appointed John R. Keys, Jr. as the sole panelist in this matter on July 29, 2008. 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 Background
Complainant trades under the name “Deutsche Post AG” in the field of communication, transport and logistics, and, in particular, postal services. Complainant is the legal successor to the former German state-owned “Deutsche Bundespost” (“German Federal Post Office”), which was privatized in 1994.
Deutsche Post is Germany's only universal provider of postal services, moving more than 70 million letter items per day across Germany. It provides a service with approximately 80,000 delivery personnel, more than 100,000 mail boxes and over 13,500 retail outlets. In the letter mail sector, Deutsche Post is the leading service provider in Europe; it is the leader in direct marketing in Germany.
Deutsche Post is also the head of one the world's largest logistics groups-Deutsche Post World Net. Its integrated Deutsche Post, DHL and Postbank companies offer worldwide transportation services of goods, information and payments. Complainant transports and delivers millions of mailings and parcels throughout the world, including in Singapore.
Complainant owns numerous trademarks worldwide which consist of or include the words “Deutsche Post.” More specifically, Complainant holds trademark registrations of the mark DEUTSCHE POST for a number of classes of goods and services in Germany, the United States of America, Australia, the European Community, Switzerland, Argentina, and other countries. These registrations include, for example, German registrations No. 39636412, filed on August 21, 1996 and No. 39540402, filed on October 5, 1995; United States of America registrations No. 2910249 and No. 2815868, both filed on May 16, 2000; European Community registrations No. 1798701, filed on May 10, 2000 and No. 797241, filed on April 6, 1998. Complainant also holds registrations for the mark DEUTSCHE POST WORLD NET in most of the same countries and in Singapore, where Respondent is located.
Complainant's registrations referenced above predate by a number of years Respondent's registration of the Domain Name, which appears from the record to have been created August 13, 2004.
Complainant also owns various domain names using the mark DEUTSCHE POST, including <deutschepost.com>, <deutschepost.org>, <deutschepost.net>, <deutschepost.biz>, <deutschepost.mobi>, <deutschepost.de>, <deutschepost.co.uk> and <deutschepost.sg>.
5. Parties' Contentions
The Domain Name is identical or confusingly similar to Complainant's trademarks, trading name and domain names in which the Complainant has rights
Complainant contends that it has established legal rights in the trade and service mark DEUTSCHE POST as well as in its trading name Deutsche Post AG and various domain names. Complainant further contends that it is well known in Germany, Europe, the United States of America, Singapore and internationally as the owner of the mark DEUTSCHE POST and that in 2007, the worldwide advertising agency network BBDO ranked the “Deutsche Post” brand first in Germany in the transport sector with an assessed value €14.1 billion.
Complainant contends that the Domain Name, <deutschpost.com>, is confusingly similar to Complainant's trademarks, domain names and company name “Deutsche Post,” arguing that the generic top level domain “.com” does not produce distinctiveness and must not be taken into account in assessing the identity or similarity between the disputed Domain Name and Complainant's marks.
The Second-Level-Domain “deutschpost” is nearly identical with Complainant's DEUTSCHE POST marks, the only difference being that the Domain Name dropped the letter “e” in the middle of the sign. The words “deutsch” and “deutsche” are very similar, and the rest of the disputed Domain Name is identical to the last part of Complainant's DEUTSCHE POST trademarks. This small difference cannot avoid the confusing similarity between the signs at issue.
The fact that the Domain Name does not have a space between the terms “Deutsch” and “Post” does not affect the finding of confusing similarity.
Respondent has no rights or legitimate interests in respect of the Domain Name
Complainant contends as follows in support of its assertion that Respondent has no rights or legitimate interests in the Domain Name:
Before Complainant became aware of the conflict, Respondent had not been using either the Domain Name or any similar name in connection with a bona fide offering of goods or services.
Respondent was not generally known under the domain name <deutschpost.com>.
Respondent did not use the Domain Name for any legitimate, non-commercial or fair purpose.
Respondent does not own any rights in the name or mark “DEUTSCHE POST”.
Complainant has not licensed or otherwise permitted Respondent to use its company name or trademarks or to apply for registration of the Domain Name.
The Domain Name was registered and is being used in bad faith
Complainant contends that the Domain Name was registered and is being used by Respondent in bad faith.
Respondent has no legitimate interest in registering or using the Domain Name <deutschpost.com> which is highly similar to Complainant's famous trademark/company name DEUTSCHE POST.
Complainant asserts that its trademarks, domain names and company name “Deutsche Post” have been widely used by Complainant and its international operating group for many years and are well-known throughout the world. Therefore, it is inconceivable, Complainant says, that the registration for <deutschpost.com> was made by Respondents without full knowledge of Complainant and its marks. Bad faith may be inferred from the registration of a well-known mark.
Complainant further contends that the only conceivable purpose of the registration and use of the Domain Name was and is to produce confusion among Internet users and to promote the wrong belief that the Domain Name belongs to Complainant, or at least, that Respondent's business is economically linked with Complainant.
Respondent, Complainant contends, uses the Domain Name with the intention to attract Internet users to its website by creating a likelihood of confusion with Complainant's well-known trademarks and company name. The Domain Name is connected to a commercial news and advertising website (“Latest News from WN Network”). This site contains sponsored links posted under a Google AdSense arrangement which leads to commercial offers of third companies. Complainant contends that the misuse of its famous trademark/trade name for this purpose demonstrates that Respondent deliberately tries to take advantage of the confusion caused by the infringing Domain Name in order to attract traffic to these sponsoring websites by capitalizing on the Complainant's famous trademarks. Such use, Complainant argues, must be considered a bad faith use of the Domain Name under paragraph 4(a)(iii) of the Policy.
The Domain Name seeks to take advantage of a typographical error made by Internet users who are seeking the Complainant's commercial website which is also evidence of bad faith.
Complainant contends that there is thus no doubt that the Respondent registered and uses the Domain Name with the intent for commercial gain, to divert Internet users and tarnish the Complainant's trademarks and the Company's reputation and to disrupt the Complainant's business, respectively.
Complainant also contends that the fact that Respondent failed to respond to Complainant's cease and desist letter of May 15, 2008, shows bad faith.
Finally, Complainant notes that Respondent Vanilla Limited has previously registered and used well-known trademarks of third parties as domain names in bad faith, citing several cases to that effect.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Respondent did not respond to the Complaint, therefore the Panel considers whether Respondent has been given adequate notice of the proceeding. The evidence indicates the Center sent the Complaint in electronic form and in hard copy by courier service to Respondent at the addresses provided in Respondent's registration information. The Panel concludes that the Center discharged its responsibility under the Rules to notify Respondent of the Complaint and the administrative proceeding.
Where a respondent does not respond to the complaint, the panel must decide the dispute based upon the complaint, Rules, paragraphs 5(e) and 14(a). The panel is to decide the complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any principles of law the panel deems applicable, Rules, paragraph 15(a). Under Rules, paragraph 14(b), Respondent's failure to answer entitles the Panel to “draw such inferences therefrom as it considers appropriate”.
Under paragraph 4(a) of the Policy, Complainant must prove each of the following three elements of its case in order to obtain the requested relief:
(i) Respondent's Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondent's Domain Name was registered and is being used in bad faith.
The Panel considers each element in order.
A. Identical or Confusingly Similar
Complainant has well-established legal rights in its trade and service marks DEUTSCHE POST as well as in a number of other marks using “Deutsche Post” as a significant component of the mark. Moreover, Complainant provides substantial evidence that its mark is widely known, not only in Germany, but internationally.
The Domain Name is not identical to Complainant's marks only in that the Domain Name deletes the letter “e” from the word “Deutsche.” This minor change is not sufficient here to create a clear distinction between the Domain Name and Complainant's trademark. The overall impression of the Domain Name and the mark is the same, both visually and phonetically. There are numerous UDRP panel decisions finding that such minor misspellings of a trademark as is involved here do not negate the confusing similarity between the mark and a disputed domain name. Geobra Brandstatter GmbH & Co KG v. Only Kids Inc., WIPO Case No. D2001-0841; Playboy Enterprises v. Movie Name Company, WIPO Case No. D2001-1201; LouisVuitton v. Net-Promotion, WIPO Case No. D2000-0430; Reuters Limited v Global Net 2000, Inc., WIPO Case No. D2000-0441; Diageo p.l.c. v. John Zuccarini, WIPO Case No. D2000-0541; Deutsche Telekom AG v. Domainsforlife.com, WIPO Case No. D2002-0164 (<deutchetelekom.org> was very similar to the mark DEUTSCHE TELEKOM).
The addition of the top level domain “.com” is not relevant to consideration of confusing similarity. The use of a gTLD “is required, necessary and functional to indicate use of a name in Internet and for the average Internet user it would not confer any further distinctiveness to any name.” Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493.
The absence of a space between the words “deutsche” and “post” is of no consequence in assessing confusing similarity, because spaces are not technologically permissible in domain names. See Nantucket Allserve, Inc., v. Company Require/Diana Hart, WIPO Case No. D2006-0578; Sanrio Company, Ltd. and Sanrio, Inc. v. Neric Lau, WIPO Case No. D2000-0172.
The Panel finds that the Domain Name, <deutschpost.com>, is confusingly similar to Complainant's DEUTSCHE POST trademark and service mark. Complainant has proved the first element of its case.
B. Rights or Legitimate Interests
Complainant makes a sufficient prima facie case here that Respondent possesses no rights or legitimate interests in the Domain Name.
There is no evidence that Respondent has ever been known by the Domain Name or has ever done business under the name “deutschpost.” Complainant has not licensed or otherwise authorized Respondent to use Complainant's trade or service marks or to register the Domain Name.
The evidence further shows that Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. The evidence on record demonstrates that Respondent used Complainant's mark as part of the Domain Name to divert Internet traffic intended for Complainant to a website which appeared to be a news network affiliated with Complainant and which, in fact, provided advertising links to unrelated providers of goods and services. Respondent presumably earns revenues from the website at the Domain Name when Internet users click on sponsored advertising links. Respondent is thus creating a false impression of association or sponsorship between Complainant and Respondent's website which is deceptive to the Internet user and harmful to Complainant's reputation and goodwill. This does not constitute a bona fide offering of goods or services by Respondent. See Sanrio Company Ltd v. Neric Lau, WIPO Case No. D2000-0172 (interests in the domain name not legitimate where there is no authorized association with trademark owner); Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The foregoing further demonstrates that this is not a case of noncommercial or fair use of the Domain Name.
Respondent has defaulted and thus fails to come forward with evidence that it possesses rights or legitimate interests in the Domain Name.
The Panel concludes that Respondent has no rights or legitimate interests in the Domain Name and that Complainant has established the second element of its case.
C. Registered and Used in Bad Faith
Complainant must show that Respondent both registered and is using the Domain Name in bad faith.
The registration of a domain name that is confusingly similar to a trademark by a person who has no relationship to that mark may in itself constitute sufficient evidence of bad faith registration and use. Sporty's Farm L.L.C. v. Sportsman's Market, Inc., 202 F.3d 489, 498 (2d Cir. 2000); Pepperdine University v. BDC Partners, Inc., WIPO Case No. D2006-1003; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a domain name connected with such a well-known product by someone with no connection with the product suggests opportunistic bad faith). Complainant's widely known DEUTSCHE POST trademark clearly was used in registering the Domain Name by someone who has no apparent relationship to Complainant or to the mark.
In DHL Operations B.V. v. Ali Kazempour, WIPO Case No. D2004-1094, the panel found bad faith with respect to the domain name <dhlmail.com> stating that:
“[I]t has been established in certain circumstances that when a domain name incorporates a famous mark comprised of a coined or fanciful term, 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.” Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028.
The Panel finds an analogous situation in the circumstances of this case, considering that Complainant's mark is widely known and that Respondent, at the time it registered Complainant's mark as a domain name, knew Complainant and was familiar with the commercial potential of Complainant's mark.
Similarly, a number of UDRP panels have found bad faith registration where it was clear that the respondent had actual knowledge of the complainant's mark and intentionally registered a confusingly similar domain name. Waterman, S.A.S. v. Brian Art, WIPO Case No. D2005-0340 (finding bad faith registration and noting that complainant's mark was well-known); Microsoft Corporation v. Party Night, Inc. d/b/a/ Peter Carrington, WIPO Case No. D2003-0501 (“It is not reasonable to expect the [r]espondent to register the disputed Domain Names if the [r]espondent had no knowledge of the [c]omplainant's trademark and services in connection thereto”). Prior UDRP panels have held that actual knowledge of complainant's rights in trademarks is a factor indicating bad faith registration. Ticketmaster Corporation v. Spider Web Design, Inc., WIPO Case No. D2000-1551; The Channel Tunnel Group Ltd. v. John Powell, WIPO Case No. D2000-0038. The principle of these cases applies here. The Panel finds that the Domain Name must have been registered with actual knowledge of Complainant's famous trademark. No one would choose to do business using the name and trademark of the German postal service unless they were attempting to exploit a false association with that entity and its accumulated goodwill.
In Deutsche Post AG v. Liu Shen, WIPO Case No. D2008-0294, the panel found bad faith in a closely analogous case involving the domain name <deutschepost.mobi>:
“[T]he Panel finds that Complainant enjoys a widespread reputation in its DEUTSCHE POST trademarks with regard to its postal delivery and logistic services. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcend national borders. Therefore, the Panel finds that it is not conceivable that Respondent would not have had actual notice of Complainant's trademark rights at the time of the registration of the domain name. Consequently . . . the Panel finds that the DEUTSCHE POST trademarks are not those that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. [T]his leads the Panel to conclude that the disputed domain name was registered by Respondent in bad faith with the intent to create an impression of an association with Complainant and its products and services.
Given the widespread reputation of Complainant's DEUTSCHE POST trademarks, the compelling conclusion is that Respondent, by choosing to register and use a domain name which is confusingly similar to Complainant's widely known and distinctive trademarks, intended to ride on the goodwill of Complainant's trademarks in an attempt to exploit, for commercial gain, Internet traffic destined for Complainant.”
The Panel finds, based on the apparent bad faith exhibited in using Complainant's trademark in registering the Domain Name and the commercial content of Respondent's website, that Respondent has used Complainant's trademark for the purpose of diverting Internet users to its own website for the purpose of Respondent's own commercial gain.
Lastly, while it is unnecessary to the result here, the Panel notes that there are a number of UDRP panel decisions finding that Respondent Vanilla Limited registered domain names using the trademarks of others in bad faith. See Radio Globo SA v. Vanilla Limited, WIPO Case No. D2006-1557; Eastern US Buddha's Study Falun Dafa Association v. Vanilla Limited, WIPO Case No. D2005-0922; Advance Magazine Publishers Inc. v. Vanilla Limited/Domain Finance Ltd./Minakumari Periasany, WIPO Case No. D2004-1068).
Complainant has established bad faith registration and use of the Domain Name, the third necessary element of its case.
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, <deutschpost.com>, be transferred to Complainant.
John R. Keys, Jr.
Dated: August 12, 2008