WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

DHL International GmbH v. Support Sitewizard, Sitewizard Ltd

Case No. D2015-0180

1. The Parties

The Complainant is DHL International GmbH, of Bonn, Germany, represented by Jonas Rechtsanwaltsgesellschaft mbH, of Germany.

The Respondent is Support Sitewizard, Sitewizard Ltd, of Maidstone, Kent, of the United Kingdom of Great Britain and Northern Ireland (the “UK”).

2. The Domain Name and Registrar

The disputed domain name <dhlecommerce.com> is registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2015. On February 4, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 5, 2015, 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. In response to a notification by the Center requesting the clarification of the disputed domain name, the Complainant filed an amended Complaint on February 10, 2015.

The Center verified that the Complaint together with the amended 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 February 19, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 11, 2015. The Response was filed with the Center on March 11, 2015.

The Center appointed Dr. Barbero as the sole panelist in this matter on March 23, 2015. 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 one of the major logistics brands worldwide. It belongs since 2009 to the Deutsche Post DHL Group, which 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.

The Complainant is the owner of numerous trademark registrations worldwide which consist of the designation DHL alone or together with other elements.

Amongst others, the Complainant is the owner of the following trademark registrations:

- German trademark Nos. 2065293 for DHL (combined word and figurative mark), filed on May 18, 1992, in class 39, and 653698 for DHL (combined word and figurative mark), filed on February 1, 1990, in class 39;

- Community trademark Nos. 3056421 for DHL (figurative mark), filed on February 17, 2003, in classes 35, 36 and 39, 3492311 for DHL (figurative mark), filed on October 31, 2003, in classes 16, 20, 35, 36, 38, 39 and 42, 3865136 for DHL (word mark), filed on June 1, 2004, in classes 16, 36 and 39, and 4183976 for DHL (figurative mark), filed on December 9, 2004, in classes 18, 25 and 28;

- International trademark Nos. 835140 for DHL (figurative mark), registered on April 29, 2004, in classes 16, 20, 35, 36, 38, 39 and 42, and 841763 for DHL (word mark), registered on August 31, 2004, in classes 16, 36 and 39;

- United Kingdom trademark Nos. 1278480 for DHL (figurative mark), filed on October 1, 1986, in class 39, and 1410607 for DHL (figurative mark), filed on January 16, 1990, in class 38.

The Complainant’s parent company Deutsche Post AG is the owner of the domain names <dhl.net>, <dhl.de> and <dhl-usa.com>.

The Complainant’s DHL web presence for the United Kingdom is accessible at <dhl.co.uk>, registered by DHL World-Wide Express UK on January 13, 1997.

The disputed domain name <dhlecommerce.com> was registered on December 10, 2010, and is not pointed to an active web site.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar with the Complainant’s trademark as it is a mere combination of the Complainant’s famous trademark DHL and the descriptive term “e(-)commerce”, which cannot serve to distinguish the disputed domain name from the Complainant’s earlier, well-known trademarks containing or comprising DHL.

The Complainant states that it has been active in the e-commerce sector for many years, also before the registration of the disputed domain name, and submits as supporting evidence press release from the web site “www.dpdhl.com”.

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name since: i) the Respondent has not been using the disputed domain name in connection with a bona fide offering of goods or services before or after it became aware of the dispute, as there has never been any active web site under the disputed domain name; ii) the Respondent has not used the disputed domain name for any legitimate, noncommercial or fair purpose as the Complainant’s trademark is well-known and the Respondent’s registration of the disputed domain name is apt to mislead consumers and abuse the distinctiveness and reputation of the Complainant’s famous trademark; iii) the Respondent has no rights in the name or mark DHL and the Complainant has not licensed or otherwise permitted the Respondent to use its well-known trademark; and iv) neither the Respondent nor any other person not connected to the Complainant has a legitimate interest in registering a domain name combining the Complainant’s famous trademark DHL with a descriptive term such as “e(-)commerce”.

The Complainant contends that the Respondent registered the disputed domain name in bad faith since the Complainant’s trademark is well-known and thus it is inconceivable that the registration was made without full knowledge of the trademark.

With reference to the use of the disputed domain name, the Complainant points out that the fact that the disputed domain name is presently not used for a clear commercial purpose does not affect the finding of bad faith under paragraph 4(a)(iii) of the Policy. It also asserts that the Respondent’s failure to reply to the Complainant’s cease and desist letter dated October 21, 2014, is an additional evidence of its bad faith.

B. Respondent

The Respondent states that it has been an e-commerce provider since 1997 and claims to have over 3500 live web sites and e-commerce clients.

It asserts that in 2010 it was building a self signup ecommerce gateway system allowing small shops to build e-commerce sites. The Respondent points out that he had called its project DHL commerce for over a year before the registration of the disputed domain name and of an additional domain name, <dhlcommerce.com>. The Respondents states that such phrase came from the way it designed the virtual hosting environment since, rather than having to create virtual host containers in Apache for each client’s web site, it created hosts on the fly from a database, enabling to host thousands of e-commerce clients on one IP address. The library of the clients’ domain names was known as the Dynamic Host Library, or DHL.

The Respondent contends that, since the name stuck, it decided to release a software under the DHL commerce brand and thus registered the disputed domain name and <dhlcommerce.com> “to avoid confusion”. The Respondent states that it has not yet launched this software although it is 95% written.

The Respondent states that it did not infringe the Complainant’s rights since the Complainant did not offer e-commerce when it registered the two domain names. The Respondent also states that it could find no trademark that protect the mark DHL against e-commerce shopping gateway solution or similar activities, as all the Complainant’s trademarks appear to be in relation to shipping freight.

The Respondent also states that it was unaware of the press release cited the Complainant and claims that such document shows that the Complainant was offering freight services to an e-commerce company and not providing e-commerce services to its clients. The Respondent further states that other businesses use the initials “dhl” and have nothing to do with the Complainant.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “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 directs that the Complainant must prove each of the following:

(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights;

(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 is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided evidence of ownership of trademark registrations for DHL, alone or together with design elements, in several countries, including in the United Kingdom, where the Respondent is based.

The disputed domain name <dhlecommerce.com> entirely reproduces the Complainant’s registered trademark DHL with the addition of the generic term “commerce” preceded by the letter “e”, which in Internet jargon stands for “electronic”, and the generic Top-Level Domain (gTLD) “.com”.

According to previous UDRP decisions, the “addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP” (see paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)). Furthermore, for the purposes of determining identity or confusing similarity in UDRP proceedings, the gTLD is typically not considered.

The Panel therefore finds that the disputed domain name is confusingly similar to the registered trademark DHL according to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

With respect to this requirement, a complainant is generally required to make a prima facie case that a respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name (see WIPO Overview 2.0, paragraph 2.1).

In the case at hand, it is clear that the Complainant has not authorized the Respondent’s use of the trademark DHL.

However, the Respondent claims a legitimate interest in the disputed domain name stating that it intends to use it in connection with one of its projects aimed at providing e-commerce web sites to its clients, and that the prefix “dhl” in the disputed domain name would be the acronym of “Dynamic Host Library”, a name selected to identify a library of clients’ domain names. The Respondent also states that said name was selected over one year before the registration of the disputed domain name, made in December 2010, and that the disputed domain name as well as another domain name, <dhlcommerce.com>, were registered since the Respondent decided to release a software “under the DHL commerce brand”. The Panel notes that said software, however, has not been launched so far although the Respondent claims that it is “95% written”. In order to substantiate its claims, the Respondent has submitted a screenshot of a page showing its purported e-commerce online system and displaying a logo including the nominative element “dhlcommerce”.

The Panel finds that the Respondent’s allegations and supporting evidence submitted are not sufficient to demonstrate that the Respondent has used, or made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services before receiving notice of the dispute. In reaching this conclusion, this Panel considers that the disputed domain name has never been active since its registration in 2010 and that the Respondent, besides failing to submit sufficient documentation to demonstrate the actual existence and status of its project, has not explained why said project, including the development of a software, has not been completed after more than 5 years since its alleged start.

The Panel also notes that the Respondent, whose name is Sitewizard Ltd, is not commonly known by the disputed domain name or by a name corresponding to it.

In view of the mentioned commercial project of the Respondent in connection with the disputed domain name, the circumstance of the legitimate noncommercial use of the disputed domain name can be excluded as well.

In light of the above, the Panel finds on balance that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

In view of the registration and use of the Complainant’s trademark DHL since several years before the registration of the disputed domain name, and of the well-known status of the trademark, the Panel finds that the Respondent must have known or ought to have known the Complainant’s trademarks when registered the disputed domain name, which incorporate the mark DHL in its entirety.

With reference to the use of the disputed domain name, which is not pointed to an active web site, as mentioned in prior UDRP cases, the Panel notes that passive holding of a domain name does not prevent the finding of bad faith use. See, amongst others, the leading case Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003.

In the present case, as mentioned above, the Respondent has failed to submit convincing evidence to substantiate its claims for a legitimate interest in the disputed domain name. In addition, in light of the well-known character of the Complainant’s mark, the Panel finds that any active use of the disputed domain name, that incorporates the trademark DHL in its entirety with the addition of a generic “e-commerce” suffix which could also be referable to the Complainant’s trademark and services, would be apt to generate a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the correspondent web site.

In light of the above, the Panel concludes that the disputed domain name was registered and is being used in bad faith.

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 <dhlecommerce.com> be transferred to the Complainant.

Luca Barbero
Sole Panelist
Date: April 7, 2015