WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

DPD Dynamic Parcel Distribution GmbH & Co.KG. v. Barath Singh

Case No. D2014-1823

1. The Parties

The Complainant is DPD Dynamic Parcel Distribution GmbH & Co.KG. of Aschaffenburg, Germany, represented by Inlex IP Expertise, France.

The Respondent is Barath Singh of Houston, Texas, United States of America.

2. The Domain Name and Registrar

The disputed domain name <dpd-expressinc.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2014. On October 17, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 21, 2014, the Registrar 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 October 27, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 16, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 17, 2014.

The Center appointed John Swinson as the sole panelist in this matter on November 20, 2014. 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

The Complainant is DPD Dynamic Parcel Distribution GmbH & Co.KG., an international parcel delivery company that was founded in Germany in 1977. It has more than 800 depots in 40 countries.

The Complainant owns a large number of trade marks in various jurisdictions for DPD in a figurative form, including Community Trade Mark No. 002238178 (registered July 2, 2002). For the purpose of this decision, these will be collectively referred to as the “Trade Mark”.

The Complainant also owns a number of trade marks in various jurisdictions for the word mark DPD DYNAMIC PARCEL DISTRIBUTION.

The Complainant has also provided evidence of a number of domain name registrations held by the Complainant which incorporate the Trade Mark, such as <dpd.asia>, <dpd.com> and <dpd.eu>.

The Respondent is Barath Singh, an individual, of the United States of America. The Respondent did not file a Response, and consequently little information is known about the Respondent.

The Respondent registered the Disputed Domain Name on May 2, 2014.

The website at the Disputed Domain Name is a reproduction of the Complainant’s websites.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions are as follows.

Identical or Confusingly Similar

The Complainant submits that the Disputed Domain Name is confusingly similar to the Trade Mark. It contains the Trade Mark, in combination with the terms “express” and “inc”. These additional terms enhance the confusion as the Complainant offers an express delivery service, and the abbreviation “inc” gives the impression that the website at the Disputed Domain Name is the Complainant’s official website.

Rights or Legitimate Interests

The Complainant submits that the Respondent is not commonly known by the Disputed Domain Name. The Complainant has not authorized the Respondent to use the Trade Mark.

The Respondent is not making a bona fide offer of products or services under the Disputed Domain Name. It is deliberately creating confusion by using the Complainant’s identity, reproducing the Trade Mark and taking ownership of the Complainant’s history and services offering.

The Complainant has reason to believe that the Respondent is preparing to make phishing attempts through the Disputed Domain Name.

Registered and Used in Bad Faith

The Complainant submits that the Disputed Domain Name has been registered and used in bad faith for the following reasons:

- the Disputed Domain Name and the website it reverts to show a reproduction of the Trade Mark;

- the website at the Disputed Domain Name is designed to give the appearance of the Complainant’s corporate website. It imitates the Complainant’s graphic layout, and describes the Complainant (i.e. “the leading provider of parcel delivery services worldwide”). The featured tabs refer to the Complainant, including the Complainant’s products and services and history;

- it appears likely that the Respondent is engaging in phishing using the Disputed Domain Name; and

- the Respondent has not replied to a cease and desist letter (and reminders) from the Respondent.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response.

A. Procedural Issues

The Respondent’s failure to file a response does not automatically result in a decision in favour of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s default.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.

For the purposes of testing confusing similarity, it is well established that the generic Top-Level Domain, “.com”, can be ignored (see, e.g., Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698).

The Panel considers that the Disputed Domain Name is confusingly similar to the Trade Mark. The Trade Mark has been wholly incorporated into the Disputed Domain Name and combined with descriptive terms (i.e. “express” and “inc”). As the Complainant submitted, “express” is a term which can be readily associated with parcel distribution services, and companies providing such services are likely to offer express delivery. “Inc” is a well-known abbreviation for “incorporated”.

It is more likely than not that a person would interpret these descriptive additions as subordinate to the Trade Mark, which is the dominant and distinctive part of the Disputed Domain Name (see, e.g., Statoil ASA v. N/A Alex, WIPO Case No. D2013-0713).

In light of the above, the Complainant succeeds on the first element of the Policy.

C. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.

The Panel finds that the Complainant has made out a prima facie case. This finding is based upon the following:

- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. The website currently hosted at the Disputed Domain Name almost identically reproduces the Complainant’s websites (which can be accessed from the Complainant’s main website at “www.dpd.com”) and Trade Mark. Given the Complainant’s submissions that the Complainant has not authorized this use, and has no relationship with the Respondent, the Panel can think of no circumstances in which this reproduction could be legitimate.

- The Respondent is not commonly known by “pdp” or similar.

- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. The Panel accepts the Complainant’s submission that the website at the Disputed Domain Name is likely already being used, or is intended to be used, in relation to a phishing scam. Phishing websites are illegal in most jurisdictions and cannot amount to a bona fide offering of goods or services.

The Respondent had the opportunity to demonstrate his rights or legitimate interests, but did not do so. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.

The Complainant has been operating since 1977, and has more than 800 depots in 40 different countries. The Disputed Domain Name was registered on May 2, 2014. In light of the reputation of the Complainant and the scope of its operations, it is likely that the Respondent had knowledge of both the Complainant and the Trade Mark at the time the Disputed Domain Name was registered. Where the reputation of a complainant in a given mark is significant and the mark has strong similarities to the disputed domain name, the likelihood of confusion is such that bad faith may be inferred (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909 and cases cited therein). Here, the Panel can reasonably infer that the Respondent sought to make use of the reputation of the Complainant and registered the Disputed Domain Name in bad faith.

This inference is considerably strengthened by the fact that the website at the Disputed Domain Name is a close reproduction of the Complainant’s websites (see, for example, the Complainant’s website at ““www.dpd.eu”). It uses the Complainant’s Trade Mark (in its registered, figurative form), describes the Complainant in the “About DPD” section and reproduces the wording used by the Complainant to advertise its Express Parcel Delivery service. It also features the same graphical layout and colour scheme as that used by the Complainant. If Internet users find the Respondent’s website, they would be highly likely to believe that the website is operated by the Complainant.

The Panel finds that, in reproducing the Complainant’s website in the manner outlined above, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Trade Mark as to the source of the website (see paragraph 4(b)(iv) of the Policy, and see, e.g., Karen Millen Fashions Limited v. Leonie Helena, WIPO Case No. D2013-0001).

In light of the above, and in the absence of a Response and any evidence rebutting bad faith registration and use, the Panel finds that the Complainant has succeeded on the third element of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, <dpd-expressinc.com>, be transferred to the Complainant.

John Swinson
Sole Panelist
Date: November 25, 2014