WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DHL International GmbH v. Richard Yaming
Case No. D2012-1081
1. The Parties
The Complainant is DHL International GmbH of Bonn, Germany, represented by Jonas Rechtsanwaltsgesellschaft mbH, Germany.
The Respondent is Richard Yaming of Seoul, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <dhlpaket.com> is registered with INames corp. (Korea).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2012. On May 23, 2012, the Center transmitted by email to INames corp. (Korea) a request for registrar verification in connection with the disputed domain name. On May 24, 2012, INames corp. (Korea). transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On May 25, 2012, the Center transmitted an email to the Parties in both Korean and English language regarding the language of the proceedings. On May 29, 2012, the Respondent requested that the language of the proceding be Korean. On the same date, the Complainant requested that the language of the proceding be English.
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 June 5, 2012.
In accordance with the Rules, paragraph 5(a), the due date for Response was June 25, 2012. On June 21, 2012, the Center received an email communication from the Respondent, indicating his willingness to give up the disputed domain name. The Complainant filed a request for suspension of the proceedings on June 25, 2012, and on the same date, the Center confirmed that the proceedings would be suspended until July 25, 2012 for the purpose of allowing the parties to agree on transfer/settlement terms. Upon request of the Complainant of July 11, 2012, the proceedings were reinstituted on July 12, 2012. The new date for Response was July 16, 2012. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on July 17, 2012.
The Center appointed Moonchul Chang as the sole panelist in this matter on July 25, 2012. 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
Since the Complainant was founded in San Francisco almost 40 years ago, it has continued to expand as a global market leader of the international express and logistics industry. After the Complainant was merged with Deutsche Post AG in 2003, the Complainant’s group, Deutsche Post DHL, became 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. The Complainant and its affiliates own numerous trademarks worldwide which consist of the designation DHL or contain this designation as a significant component: DHL, DHL PAKET INTERNATIONAL, DHL WORLDWIDE EXPRESS and others. (Annex 4, 5 and 6) The Complainant’s group also owns various domain names including the trademark DHL such as <dhl.com>, <dhl.co.kr>, <dhl.co.uk>, <dhl.ch>, <dhl.eu>, <dhl.net>, <dhl.org>, etc. In addition the Complainant owns the domain names <dhlpaket.net>, <dhlpaket.biz>, <dhlpaket.org> and <dhlpaket.info>. (Annex 7, 8 and 9)
The disputed domain name was created on September 6, 2011 according to the publicly available WhoIs information. The Respondent previously used the website connected to the disputed domain name for “Sponsored Listing” not only related to the Complainant, but also related to the Complainant’s competitors in the field of transport, shipping and parcel services.
5. Parties’ Contentions
The Complainant contends that
(1) The disputed domain name <dhlpaket.com> is confusingly similar to the Complainant’s trademark DHL. The disputed domain name <dhlpaket.com> is a mere combination of the Complainant’s trademark DHL and the descriptive term “paket”, meaning “package” or “parcel” in German. The only distinctive element of the disputed domain name <dhlpaket.com> is the Complainant’s trademark DHL. The element “paket” is clearly related to the Complainant’s core business of transport and logistics services, where goods are typically delivered in “parcels” or “packages”.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has not been or is not using the disputed domain name in connection with a bona fide offering of goods or services. While the Complainant’s mark DHL is famous all over the world, the Respondent is not generally known by the disputed domain name. The Complainant has not licensed or permitted the Respondent to use the trademark DHL. Therefore, the Respondent should not be considered as having any right or legitimate interest in the trademark DHL.
(3) The disputed domain name has been registered and is being used by the Respondent in bad faith.
Firstly, the disputed domain name was used for a commercial purpose which does affect the finding of bad faith under Policy 4(a)(iii). The website connected to the disputed domain name showed sponsored listings. (Annex 13). This use of the disputed domain name in combination with the absence of right or legitimate interest reveals that the disputed domain name was registered in bad faith. Moreover this website provided several sponsored links to commercial websites mostly of competitors of the Complainant in the field of transport, shipping and parcel services. This is evidence of bad faith under Policy 4(b)(iv).
Secondly, since the Complainant’s trademark DHL has been widely used by the Complainant for many years and is well-known throughout the world, it is inconceivable that the registration for <dhlpaket.com> was made without full knowledge of the existence of the Complainants and its mark. Several UDRP decisions stated that bad faith may be inferred from the unauthorized registration of a well-known mark. (Annex 10 and15)
Thirdly, the Respondent failed to respond to the Complainant’s cease and desist letter but wished the Complainant “Good Luck” for this proceeding and “to go ahead with it”. This is the evidence that the disputed domain name <dhlpaket.com> was not only registered but also used in bad faith by the Respondent (Annex 16, 17, 18 and 19). In addition the Respondent used the disputed domain name with the intention to attract Internet users to his website by creating a likelihood of confusion with the Complainant’s famous DHL trademark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of Proceedings
According to paragraph 11 of the Rules, the language of the administrative proceeding is the language of the registration agreement unless otherwise agreed by the parties, or specified otherwise in the registration agreement, subject to the authority of the panel to determine otherwise. The language of the Registration Agreement here is Korean.
However, the Complainant requests that the language of proceeding be English in this proceeding for the following reasons. Firstly, the Respondent is able to understand English as shown by the fact that the disputed domain name is composed of English words and that the Respondent’s website connected to the disputed domain name appears entirely in English. (Annex 3) Secondly, the Respondent has used the disputed domain name in connection with the website containing commercial sponsored listings written in English and German, the language of the country where the Complainant is located. Thirdly, the Respondent has responded in English to the Complainant’s cease and desist letter. (Annex 18 and 19)
The spirit of paragraph 11of the Rules is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.
In consideration of the above circumstances and in the interest of fairness to both parties, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of the administrative proceeding in this case (see Siemens Aktiengesellschaft v. bak jogsub, WIPO Case No. D2006-0972; and Alstom, Bouygues v. Webmaster, WIPO Case No. D2008-0281).
B. Identical or Confusingly Similar
The disputed domain name <dhlpaket.com> entirely incorporates the Complainant’s trademark DHL and is likely to be associated with the Complainant which has no apparent connection with the Respondent. Numerous UDRP panels held that where a domain name substantially incorporates a complainant’s trademark, which is sufficient to make the domain name “confusingly similar” within the meaning of the Policy. (See Amazon.com, Inc. v. MCL International Limited, WIPO Case No. D2000-1678). The addition of a descriptive term, “paket” is not sufficient to avoid the likelihood of confusion and is rather related to the Complainant’s business of express delivery in parcels or packages. (See Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227). Further, the generic top-level suffix ".com" can be disregarded under the confusing similarity test. (See DHL Operations B.V. v. zhangyl, WIPO Case No. D2007-1653). Accordingly, the Panel finds the first element under paragraph 4(a) of the Policy has been met by the Complainant.
C. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the overall burden of proof is on the Complainant. However, once the Complainant presents a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the burden of rebuttal is transferred to the Respondent. (See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Firstly, the Panel considers that in the absence of any license or permission from the Complainant to use the Complainant’s trademark, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed. Such is the case here, in as much as the Complainant is widely known in the international express and logistics industry and did not give any license or other permission to the Respondent to use the mark DHL.
Secondly, the Respondent failed to come forward with any appropriate allegations or evidence that might demonstrate his rights or legitimate interests in the disputed domain name to rebut the Complainant’s prima facie case.
Thirdly, there is no evidence presented to the Panel that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services at present. In addition there is no evidence to suggest that the Respondent has been commonly known by the disputed domain name. The name “dhlpaket” has no apparent association with the Respondent.
Accordingly, the Panel concludes that the Complainant has satisfied the second element under paragraph 4(a) of the Policy in the present case.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the disputed domain name “has been registered and is being used in bad faith.” As this requirement is conjunctive, the Complainant must establish both bad faith registration and bad faith use. In addition the circumstances listed in paragraph 4(b) of the Policy are not exclusive, and other circumstances may likewise lead to a finding of bad faith registration and use.
Firstly, since the Complainant’s mark DHL is internationally well-known, the Respondent is likely to have registered the disputed domain name with notice of the Complainant’s trademark. The Panel considers that the Respondent in all likelihood registered the disputed domain name to take advantage of the similarity between the disputed domain name and the Complainant’s trademark. Several UDRP decisions stated that bad faith may be inferred from the registration of a well-known trademark. (See DHL Operations B.V. v. Ali Kazempour, WIPO Case No. D2004-1094).
Secondly, the Panel considers further that the Respondent uses the disputed domain name, which includes in its entirety the well-known trademark DHL, though he has no rights or legitimate interests in the disputed domain name. This is supported by the fact that the Respondent managed a website located at “www.dhlpaket.com”, which displays “Sponsored Listings” not only related to the Complainant, but also related to the Complainant’s competitors. As a result, the Respondent, by using the disputed domain name, is intentionally confusing the consumers so as to benefit from its confusing similarity with the trademark DHL. Such finding indicates the Respondent’s bad faith in the registration and use of the disputed domain name. (See Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556; The Nasdaq Stock Market, Inc. v. Act One Internet Solutions, WIPO Case No. D2003-0103).
Thirdly, the Panel notes that the Respondent has previously registered several domain names incorporating other well-known trademarks: Google Inc. v. Worx LLC a/k/a Richard Yaming, NAF Claim No. 1370035; Samsung Electronics Co., Ltd. v. Richard Yaming, WIPO Case No. D2011-1097; Giorgio Armani S.P.A. v. Richard Yaming, WIPO Case No. D2011-2233. The Panel finds that these registrations constitute a pattern of conduct for the purposes of paragraph 4(b)(ii) of the Policy.
Based on the foregoing, the Panel is satisfied that bad faith registration and use have been sufficiently established with respect to the disputed domain name <dhlpaket.com> in accordance with paragraph 4(b) of the Policy.
For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name <dhlpaket.com> be transferred to the Complainant.
Dated: August 14, 2012