WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DHL Operations B.V. v. Renown SC, Vincent Peeris
Case No. D2008-0953
1. The Parties
The Complainant is DHL Operations B.V., Amsterdam, Netherlands, represented by Jonas Rechtsanwaltsgesellschaft mbH, Germany.
The Respondent is Renown SC, Vincent Peeris, Colombo, Sri Lanka.
2. The Domain Name and Registrar
The disputed domain name <dhl.info> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 23, 2008. On June 24, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On June 24, 2008, eNom 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 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 June 27, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 17, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 18, 2008.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on July 25, 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
DHL is one of the major logistics brands worldwide. The Complainant's group is the world's largest express provider and involves supply logistics, warehousing, distribution logistics, global airfreight and ocean freight, project freight forwarding and European overland transport service.
Complainant and its affiliated companies are the legal holder of numerous trademarks worldwide which consist in the designation “DHL” or contain this designation as a significant component.
These trademarks cover a large range of goods and services, inter alia, transportation of documents, goods and parcels by land, sea and air, express courier services.
Details of the trademark registrations in various countries are set out below:
German Trademark Registrations
2065293 DHL in class 39 (filing date 18/05/92)
1146023 DHL WORLDWIDE EXPRESS in class 39 (filing date 28/08/86)
653698 DHL in class 39 (filing date 01/02/1990)
European Community Trademark Registrations
3865136 DHL in classes 16, 36, 39 (filing date 01/06/04)
3493954 DHL EXPRESS in classes 16, 36, 39 (filing date 31/10/03)
3056421 DHL in classes 35, 36, 39 (filing date 17/02/03)
3492311 DHL in class 16, 20, 35, 36, 38, 39, 42 (filing date 31/10/2003)
4183976 DHL in class 18, 25, 28 (filing date 09/12/2004)
Chinese Trademark Registration (registered in the name of the Complainant's affiliated company DHL INTERNATIONAL LIMITED, Hamilton, Bermuda)
4605 193 DHL in class 28 (filing date 15/04/05)
US Trademark Registrations (registered in the name of the Complainant's affiliated company Deutsche Post AG)
1398896 DHL in class 39 (filing date 02/12/85)
3329095 DHL in class 28 (filing date 04/05/2005)
3174845 DHL in class 16, 36, 39, 35 (filing date 04/03/2004)
3174839 DHL in class 16, 20, 35, 36, 38, 39, 42 (filing date 27/02/2004)
2827803 DHL in class 39 (filing date 14/10/2002)
835140 DHL claimed in 38 countries in classes 16, 20, 35, 36, 38, 39, 42 (filing date 29/04/04)
841763 DHL claimed in 44 countries in classes 16, 36, 39 (filing date 31/08/2004)
860071 DHL claimed in 32 countries in classes 28 (filing date 18/04/2005)
836678 DHL SOLUTIONS claimed in 37 countries in classes 16, 35, 36, 39 (filing date 29/04/04)
836679 DHL EXPRESS claimed in 35 countries in classes 16, 35, 36, 39 (filing date 29/04/04)
836946 DHL FREIGHT claimed in 36 countries in classes 16, 35, 36, 39 (filing date 29/04/04)
Sri Lanka Trademark Registration (registered in the name of the Complainant's affiliated company DHL International Limited)
54239 DHL in class 39 (filing date 12/10/1987)
Australian Trademark Registrations
445410 DHL in class 39 (filing date 16/05/86)
980819 DHL in class 39 (filing date 03/12/03)
Canadian Trademark Registrations
360527 DHL in class 39 (filing date 15/05/1986)
255297 DHL in class 39 (filing date 10/03/1980)
710045 DHL in classes 16, 20,35, 36, 38, 39, 42 (filing date 11/03/2004)
Japanese Trademark Registration
3028508 DHL in class 39 (filing date 25/09/1992)
United Kingdom Trademark Registrations
1278479 DHL in class 39 (filing date 01/10/86)
1278480 DHL in class 39 (filing date 01/1086)
1410607 DHL in class 38 (filing date 16/01/90)
2357432 DHL in class 16, 20, 35, 36, 38, 39, 42 (filing date 03/03/2004)
Complainant's group of companies is owner of various domain names including the mark DHL such as, <dhl.co.uk> (registered by DHL World-Wide Express UK on 13/01/1997), <dhl.ch> (registered by DHL Express (Schweiz) AG, Basel, Switzerland), <dhl.net>,<dhl.de> as well as of its Global web site available under “www.dhl.com” (the last three registered by the Complainant's parent company Deutsche Post AG, Bonn, Germany) which leads to the different country area sites, such as “www.dhl.com.lk” as the official web presence of the Complainant for Sri Lanka.
Respondent registered the disputed domain name <dhl.info> on July 13, 2002.
5. Parties' Contentions
Complainant claims that:
The domain name <dhl.info> is identical or confusingly similar to the aforementioned Complainant's trademarks, domain names and company name;
The Respondent has no rights or legitimate interests in respect of 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 and services;
At the time of the registration of the disputed domain name, Respondent was not generally known under the domain name <dhl.info>; neither did Respondent use the domain name for any legitimate, non-commercial, or fair purpose.
Respondent does not own any rights in the name or mark DHL. Complainant has not licensed or otherwise permitted the Respondent to use its company name or trademarks or to apply for the registration of the domain name in dispute. Therefore, Respondent should not be considered as having any legitimate interest in the unmistakably worldwide trading name, company name and trademark DHL.
The domain name <dhl.info> has been registered and is being used by Respondent in bad faith;
The domain name <dhl.info> was created on July 13, 2002. At this date, Respondent had not a legitimate interest in registering the disputed domain name;
The Complainant's trademarks, domain names and company name “DHL” have been widely used by the Complainant and its affiliated companies for many years and are thus well-known throughout the world. Therefore, it is inconceivable that the domain name was chosen only by chance, without having in mind Complainant's internationally well known mark and the trade name “DHL”;
The disputed domain name <dhl.info> was not only registered but is also used in bad faith by the Respondent. As evidenced by the Internet-printouts from the website connected to the disputed domain name, the domain name at issue is currently parked at the “www.sedo.com” website; this parking website provides several sponsored links to commercial websites of competitors of the Complainant in the field of transport, mail, packages and courier services such as “Courier Express in the UK”, “Mail Forwarding Service”, “USA Box”, “US Global Mail” etc. This fact makes obvious that Complainant's famous trademark “DHL” within the domain name <dhl.info> is abused and exploited to generate traffic to this website. The maintenance of a domain name which is – as established above – identical to Complainant's trademarks and company name in order to divert Internet users to websites of companies who compete with the Complainant clearly has to be considered as a use of the domain name at issue in bad faith according to paragraph 4 (a)(iii) of the Policy;
Further evidence which shows that the disputed domain name <dhl.info> is used in bad faith by the Respondent is the fact that the Respondent failed to respond to Complainant's cease and desist letter.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.”
Paragraph 4(a) of the Policy lists three elements that Complainant must prove to merit a finding that the domain name registered by Respondent be transferred to Complainant:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has established that it has rights in the trademark DHL in connection with a large range of goods and services, inter alia transportation of documents, goods and parcels by land, sea and air, express courier services.
Therefore, this Panel finds the disputed domain name to be identical to a trademark in which Complainant has trademark rights.
B. Rights or Legitimate Interests
Complainant must show that Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant may do so by establishing a prima facie case that Respondent lacks rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions Section 2.1. The respondent in a UDRP proceeding does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(i) that before any notice to the respondent of the dispute, he or she used or made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) that the respondent is commonly known by the domain name, even if he or she has not acquired any trademark rights; or
(iii) that the respondent intends to make a legitimate, non commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
Respondent has no connection or affiliation with Complainant, who has not licensed or otherwise authorized Respondent to use or apply for any domain name incorporating Complainant's trademark. Respondent has not alleged any facts or elements to justify prior rights and/or legitimate interests in the disputed domain name. Respondent does not appear to make any legitimate use of the domain name for non commercial activities. On the contrary, it appears that Respondent has used the disputed domain name to direct consumers to websites that offer services in competition with those offered by the Complainant.
Therefore, the Panel considers that there is no evidence that Respondent has done anything that could be regarded as giving rise to a right or legitimate interest under paragraph 4(c) of the Policy.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder's documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder's web site or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the holder's web site or location or of a product or service on the holder's web site or location.
Accordingly, for a complainant to succeed, the panel must be satisfied that the domain name has been registered and is being used in bad faith.
Considering the notoriety of Complainant's trademarks and in the absence of contrary evidence, the Panel finds that there are good reasons to believe that Respondent had actual knowledge of Complainant's trademark when it registered the disputed Domain Name. The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that actual knowledge of Complainant's trademark and activities at the time of the registration of the disputed domain name may be considered as an inference of bad faith (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226 and Sony Kabushiki Kaisha also trading as Sony Corporation v. Inja, Kil, WIPO Case No. D2000-1409, “It is inconceivable that the Respondent could make any active use of the disputed domain name without creating a false impression of association with the Complainant. The Respondent was not authorized by the Complainant to use its mark nor the disputed domain name”.
As regards Respondent's use of the domain name, it appears that Respondent's website is used to attract Internet users in order to redirect them to websites of competitors of the Complainant. By so deflecting Internet users, Respondent has shown bad faith registration and use of the domain name that clearly falls within the example given in paragraph 4(b)(iv) of the Policy (quoted above).
In addition, it is the Panel's opinion that not replying in anyway to the warning letter of the Complainant's representative is further inference of bad faith. In this sense Encyclopedia Britannica v. Zuccarini and The cupcake Patrol a/ka Country walk a/k/a Cupcake Party, WIPO Case No. D2000-0330 (failure to positively respond to a complainant's efforts to make contact provides strong support for a determination of bad faith); see also in NFL Properties, Inc. et al. v. BBC AB, WIPO Case No. D2000-0147, the WIPO panel held that “Respondent's failure to respond to the inquiries of Complainants or to the Notification of Complaint and Commencement of Administrative Proceeding sent by the Center supports the inference that the registration and the use of the domain name has been in bad faith.”
Finally, Respondent has not denied Complainant's assertions of bad faith, has not given any justification for the registration of the disputed domain name nor substantiated or at least alleged any concurrent right or legitimate interest to the disputed domain name which could give rise to good faith registration and use of the disputed domain name.
Considering the foregoing, the Panel concludes that Respondent registered and is using the disputed domain name in bad faith and that the requirements of paragraph 4(a)(iii) of the Policy are satisfied.
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, <dhl.info> be transferred to the Complainant.
Dated: August 5, 2008