The Complainant is DHL Operations B.V., Amsterdam, Netherlands, represented by Jonas Rechtsanwaltsgesellschaft mbH, Germany.
The Respondent is DHL Packers, New Delhi, India, represented by Ram Niwas Jain.
The disputed domain name <dhlpackers.net> is registered with OnlineNic, Inc. d/b/a China-Channel.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2008. On November 6, 2008, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the disputed domain name. On November 7, 2008, OnlineNic, Inc. d/b/a China-Channel.com 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” 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 13, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 3, 2008. The Center received an email communication with an “objection” attachment from one Ram Niwas Jain on November 28, 2008.
The Center appointed Anders Janson as the sole panelist in this matter on December 12, 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.
Although not confirmed by Ram Niwas Jain or the Respondent itself, the capacity of Ram Niwas Jain was considered by the Panel (and apparently also by counsel for the Complainant as demonstrated by correspondence between the two regarding the filing of a Response on which the Center was later copied) as representing the Respondent taking into account that the email communication, including the objection attachment, was copied by Ram Niwas Jain to the very same e-mail address registered for the Respondent as implied in the contact details provided by the Registrar. No other response to the Complaint was sent from the Respondent. The Panel therefore finds that the aforementioned objection attachment shall be considered as the Response from the Respondent.
The Complainant is a company within the DHL Group whose core business is international transportation of documents and goods throughout the world. The trading name of the Complainant is DHL Operations B.V. The Complainant was registered in the Company Register in Amsterdam 1979. Since 2002 the sole shareholder of the DHL group is the Deutsche Post World Net. The DHL group is a global express provider and involves supply of logistics, warehousing, distribution logistics global airfreight and ocean freight, project freight forwarding and European overland transport service. The DHL network is represented in 20 countries and employs nearly 300,000 employees.
The Complainant together with its affiliated companies is the legal holder of numerous trademarks worldwide which comprise the designation DHL. Amongst the trademarks listed in the Complaint, and in addition to the several European and International Registrations mentioned therein, the Complainant is the holder of the following Indian trademarks:
– 646865 DHL in class 16 (filing date November 25, 1994);
– 1270339 DHL EXPRESS in class 39 (filing dater March 4, 1986; and
– 12703042 DHL in class 16 (filing date January 16, 1990).
The Complainant and the DHL group is furthermore the owner of various domain names including the mark DHL, such as <dhl.co.uk>, <dhl.ch>, <dhl.net>, <dhl.de>. An Indian website of the Complainant is found at “www.dhl.co.in”.
The Respondent is DHL Packers, with a stated address in New Delhi, India. From what has been put forward in the Response and according to a printout from the website of the Respondent, “www.dhlpackers.net”, dated October 31, 2008, which is attached to the Complaint, the Respondent is an Indian transportation company providing services throughout India, such as packing, moving, loading and unloading services.
The Complainant contends that:
– The disputed domain name is confusingly similar to a trademark or a service mark in which the Complainant has rights;
– The Respondent has no rights or legitimate interests in respect of the disputed domain name;
– The disputed domain name has been registered and is being used in bad faith; and
– The disputed domain name <dhlpackers.net> should be transferred to the Complainant.
The Respondent contends that the Policy is not applicable since there is no agreement or any other relation between the Respondent and the Complainant and that the Complaint therefore should be dismissed. Furthermore the Response, seems to object against a transfer of the domain name to the Complainant, asserting that the Respondent is a private limited company registered in 2007 with the Registrar of Companies, New Delhi, India, under the “Companies Act, 1956”, and that the Respondent conducts its business from local offices in New Delhi. Notably though, the Respondent does not provide evidence of its company registration to the Panel nor any other evidence in this respect. Finally the Respondent maintains that the name and business of the Respondent (moving) totally differs from the business of the Complainant (shipping). In addition to what has been presented above the Respondent has claimed that the Complainant shall be liable for costs.
It is evident to the Panel that the dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute in accordance with the registration agreement between the Respondent and the registrar through which the Policy was incorporated.
First, according to the Policy the Panel has the jurisdiction only for determining whether the domain name is to be cancelled or transferred. There is no ground in the Policy for the Panel to make a determination as to any liability for any party towards the other.
In determining on the issue of transfer of a domain name the Complainant must prove each of the following according to paragraph 4(a) of the Policy;
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and being used in bad faith.
The domain name at issue is <dhlpackers.net>. The Complainant is the holder of a number of registered trademarks for the designation DHL. The Panel finds that the Complainant established that DHL is a widely-known trademark. The disputed domain name contains the Complainant's mark DHL in its entirety, with the added suffix “packers” and the generic and functional top level domain name “.net”. In determining whether a domain name and a trademark are identical or confusingly similar, gTLDs and ccTLDs shall be disregarded. The question is therefore if the addition of the suffix “packers” makes the disputed domain name sufficiently dissimilar to the Complainant's registered trademarks.
In previous UDRP decisions, panels have found that the fact that a domain name incorporates a complainant's registered mark may be sufficient to establish identity or confusingly similarity for the purpose of the Policy (Oki Data Americas, Inc. v. ASD Inc., WIPO Case No. D2001-0903 and CSC Holdings, Inc. v. Elbridge Gagne, WIPO Case No. D2003-0273).
As in cases Banco De Bogotá S.A., v. Fernando Díaz Bueno, WIPO Case No. D2004-1093 and DHL Operations B.V. v. Karel Salovsky, WIPO Case No. D2006-0520, referred to by the Complainant, the Panel finds that the designation DHL is the distinctive part of the disputed domain name, and the term “packers” is just an addition to the mark DHL and adds little to the overall impression of the disputed domain name. On the contrary the meaning of the term “packers” may appear to indicate that the website is connected with the business of the Complainant. Internet users are therefore very likely to assume that the addition of the word “packers” to the trademark DHL signifies the website is associated with the Complainant. The Panel finds that the addition of the suffix “packers” does not diminish the similarity between the disputed domain name and the Complainant's trademark, especially bearing in mind that the Complainant is one of the world's largest transportation companies.
The disputed domain name must therefore be considered confusingly similar to the trademark DHL. The Panel holds that the Complainant has established the first element of the Policy, paragraph 4(a)(i).
Paragraph 4(c) of the Policy sets out examples of what a respondent may demonstrate to show that it has rights or legitimate interest in respects of a domain name. Merely a registration of a domain name in itself does not establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy.
The disputed domain name was first registered by the Respondent on July 11, 2008. Referring to a printout from its website the Complainant asserts that its business activities under the DHL mark in India were set up in 1979, as a business that has over 50,000 costumers and handles over 12 million shipments annually.
From what has been put forward by both Parties it is clear that the Respondent has no derived right to use the Complainant's trademark as a licensee or otherwise according to any agreement with the Complainant.
The Respondent has stated that the company of the Respondent was registered in 2007, which the Complainant disputes.
However this may be, the Panel notes that the Respondent has failed to produce any documentary evidence of its corporate status or identity. The only information available to the Panel in relation to the Respondent's activity is its website. As further discussed in E. below, the content of that website does not provide a basis for the Panel to conclude that the Respondent can legitimately assert a right or legitimate interest.
The Panel therefore holds that the Complainant has established the second element of the Policy, paragraph 4(a)(ii).
There is, in the view of the Panel, no doubt that the trademark of the Complainant is such a well established and well-known trademark throughout the world that the Respondent must undoubtedly have been aware of the Complainant's trademark at the time of registration and use of the disputed domain name <dhlpackers.net>. The Respondent's argument does not lead to another conclusion. The fact that the logotype used on the Respondent's website, “www.dhlpackers.net”, in respect as well as of colour as design, is almost identical with the Complainant's protected and very famous DHL logo, clearly indicates that the Respondent being well aware of the similarity, used the disputed domain name for its own offer of transportation, packing and moving services. Thus it is obvious to the Panel that the Respondent registered and used the disputed domain name with the intent to attract Internet users, for commercial gain to the Respondent's website by creating a likelihood of confusion with the Complainant's trademark as to the source of the services marketed on the website. The Respondent's use of the disputed domain name cannot be legitimate under the Policy and the Panel finds that the Complainant has established the third element of the Policy, paragraph 4 (a)(iii).
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 <dhlpackers.net> be transferred to the Complainant.
Dated: December 29, 2008