WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Geopost v. Privacy Protection Service Inc. d/b/a PrivacyProtect.org / Domain Admin
Case No. D2015-1602
1. The Parties
The Complainant is Geopost of Issy Les Moulineaux, France, represented by Inlex IP Expertise, France.
The Respondent is Privacy Protection Service Inc. d/b/a PrivacyProtect.org of Queensland, Australia / Domain Admin of Las Vegas, Nevada, United States of America.
2. The Domain Name and Registrar
The disputed domain name <yourdeliveryexperts.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 8, 2015. On September 9, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 10, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 16, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed two amendments to the Complaint on September 18 and September 21, 2015.
The Center verified that the Complaint together with the amendments to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 22, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 12, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 13, 2015.
The Center appointed Alistair Payne as the sole panelist in this matter on October 26, 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 operates one of the largest postal delivery businesses in France and in Europe. In 2014 it adopted a re-branding strategy which, in particular, involved applying for a new combined device and word mark as a trade mark in France which was filed on October 7, 2014 and has subsequently been registered under number 144123617. This combined device and word mark includes the slogan "your delivery experts".
The Respondent registered the disputed domain name on October 14, 2014.
5. Parties' Contentions
The Complainant submits that it owns French trade mark number 144123617 that was filed on October 7, 2014 and which is a combined device and word mark that incorporates the slogan "your delivery experts". The Complainant submits that the substantive elements of the disputed domain name exactly reproduces this slogan, including the plural "s" element and is therefore identical or confusingly similar to the Complainant's trade mark.
The Complainant says that it has not licensed or authorised the Respondent to use its trade mark and that there is no evidence that the Respondent is using the disputed domain name in relation to a bona fide offering of goods or services. The Complainant notes further that the disputed domain name resolves to a parking page which features numerous commercial links for a range of diverse enterprises to the extent that there is no consistency in the nature of the links and therefore the Complainant says that it is apparent that the disputed domain name is not being used for a consistent commercial interest by the Respondent. As a result the Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name.
In view of the fact that the Respondent registered the disputed domain name one week after the Complainant's French trade mark application for its combined device and word mark, the fact that this trade mark application had not been published by this stage and the use of a privacy service to apply for the disputed domain name without disclosing the applicant's identity, the Respondent submits that it can only be inferred that the disputed domain name was registered in bad faith by a third party who was aware of the Complainant's re-branding programme involving the "your delivery experts" slogan.
A further indicator of bad faith, says the Complainant, is the fact that at the date of its Complaint the disputed domain name resolves to a parking page at which it is noted that the disputed domain name is for sale for USD 8,600. This, says the Complainant, is indicative of bad faith and in conjunction with the Respondent's attempt to hide its identity and the lack of evidence of bona fide use of the disputed domain name fulfills the requirements of paragraph 4(a)(iii) of the Policy and is to be taken as evidence of registration and use of the disputed domain name in bad faith.
The Complainant says that it sent a cease and desist letter to the Respondent on February 25, 2015 and followed up through the website on March 26, 2015 and sent another reminder on April 24, 2015. However it never received a response to any of these communications which the Complainant submits is further evidence of bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant submits that it owns trade mark rights based on its combined device and word mark that it filed on October 7, 2014 and which was subsequently registered in France under number 144123617. This mark features a very prominent parcel design in red and also contains, in comparatively small font, the slogan "your delivery experts". As a result the disputed domain name cannot be said to be identical to the Complainant's trade mark registration and the question for the Panel is therefore whether it is confusingly similar to the Complainant's registered trade mark or not?
The Panel notes that the slogan "your delivery experts" is formed of common English words, is descriptive of the Complainant's service and is an expression that other traders may well wish to use, even in France. In this regard and for what it is worth, the Panel finds that it falls into that category of marks that are generally regarded as being weak. Upon checking whether the Complainant's mark was actually registered (which was not at all apparent from the Complaint) it is noteworthy that the Panel came across a prior combined word/device trade mark registration that also contained the slogan "your delivery experts" under French trade mark registration number 10923027.
The Panel notes that the Complainant has not provided additional evidence of use of the slogan "your delivery experts" such as might demonstrate the development of trade mark significance through use. In this regard the Panel notes that it did accept the Complainant's invitation to visit its website at "www.dpd.com" to consider the use of the Complainant's mark and found there at least one representation of the combined device and word mark and various uses of the parcel device mark separately from uses of the slogan "your delivery experts". However this is wholly inadequate to demonstrate trade mark significance through use alone. Accordingly, the Complainant's use under this element of the Policy and whether the Complaint can proceed, will be determined by an analysis of confusing similarity between the disputed domain name and the Complainant's trade mark in the particular circumstances.
This Panel previously considered the test for confusing similarity to be applied between a disputed domain name and a combined word/device in a case concerning the domain name <ethno.com>, as part of a three member panel inLimited Liability Company Infomedia v. c/o Office-Mail processing center / Whois privacy services, provided by DomainProtect LLC / 1) Eurofirm Ltd. 2) Ethno Share PO, Domain Manager, WIPO Case No. D2010-1239. In that case the Panel reviewed and set out its analysis of the divergent approaches to this issue as follows:
"While panel approaches in assessing confusing similarity between a domain name and a trademark comprising a combination device and word mark can vary, certain commonalities are apparent to this Panel. These include where a combination trademark features a prominent design with a commonly used or generic word beside it, making a literal comparison of the trademark and the relevant domain name, considering the overall impression given by the mark, taking into account as appropriate the strength of the word mark element which is being directly compared with the domain name and considering the relevant prominence of the word mark element in the context of the overall impression given by the trademark. In other instances, particularly where the word component of the relevant mark has not been disclaimed as such, panels have found it appropriate to disregard the device element, and limited the comparison to one between the textual component of the relevant mark and the alphanumeric string in the disputed domain name. This is usually said to be because such disregarded device element is generally incapable of representation in a domain name, or because the word component of the combined mark may still have some distinguishing value sufficient to convey standing rights for the purpose of the Policy or because all components of the relevant mark capable of incorporation in a domain name have been so incorporated. See e.g., RUGGEDCOM, Inc. v. James Krachefels, WIPO Case No. D2009-0130. However, the latter approach may be less common in cases in which the device element forms a particularly prominent part of the relevant trademark, and the word element is a common or dictionary term. Indeed, in cases where the word element is a common or dictionary term and not inherently distinctive, panels have noted that there may be an onus on the complainant to present the panel with compelling evidence of secondary meaning and distinctiveness through extensive use. See e.g., Dreamstar Cash S.L. v. Brad Klarkson, WIPO Case No. D2007-1943.
In this case the Complainant's registered trademark is comprised of a prominent visual design which features below it the word 'ethno'. The Panel considers that 'ethno' is a Greek word that is commonly used as a prefix in the English language referring to the study and development of groups of people. Although it could be argued that 'ethno' is less common as a stand-alone word in English, and the Panel does not exclude the possibility that it may be capable of distinguishing information technology services provided in the Russian and Ukrainian markets, there is no evidence before the Panel of acquired distinctiveness in relation to the Complainant's goods and services.
While it is a prominent element in the combined trademark, in this Panel's view the word 'ethno' is no more prominent than the propeller-like device element, which the Panel notes does not conjure up any particular association with the common meaning of the term 'ethno' as defined above. Considering these factors together, taking into account the Panel's overall impression of the trademark, its assessment that the Complainant's trademark is not even close to being a word mark registration for ETHNO or even a fancy stylized version of the word mark, and that the combined trademark evokes more than the word alone, the Panel does not on balance find that the Disputed Domain Name is confusingly similar to the Complainant's trademark.
The Panel considers this approach and the resultant decision not to find confusing similarity in these circumstances is broadly consistent with panel decisions in cases such as Cream Holdings Limited v. National Internet Source, Inc., WIPO Case No. D2001-0964; Deutsche Post AG v N.J. Domains, WIPO Case No. D2006-001; and Ville de Paris v. Salient Properties LLC, WIPO Case No. D2009-1279. In those cases domain names comprising the word elements 'cream', 'Post' and 'Paris' were found not to be confusingly similar to combined device and word marks respectively featuring each of these word elements. Although the prefix or word 'ethno' may be said to differ in some material respects from ubiquitous terms such as 'post' or 'cream', and widely-recognizable geographic terms such as 'Paris', this Panel nevertheless considers there to be insufficient evidence of acquired distinctiveness on the present record to enable a finding of confusing similarity under the Policy."
This Panel proposes to adopt a similar approach to assessing confusing similarity in the instant case; however it must be applied in the particular circumstances of the Complainant's mark. The Panel has already noted that the slogan "your delivery experts" is made up of common English words and is the kind of expression that other traders may wish to use. This view is only reinforced by the existence of an earlier combined device and word mark on the French trade mark register incorporating the same slogan. As a result the Panel finds that the slogan functions as a weak mark and as a weak element of the Complainant's combined device and word mark
The strikingly dominant visual element of the Complainant's mark is without doubt the red stylised parcel design. It is very considerably larger than the words "your delivery experts" which is in relatively small and indistinctive font inserted at the foot of the parcel design. Although "your delivery experts" is clearly the sole textual element of the mark, in the Panel's view the overall impression given by the mark is that the parcel design is by far the most dominant element and that the slogan "your delivery experts" is an addendum to the red stylised parcel design. In this regard the circumstances of this case can be distinguished from those considered by the panel in RUGGEDCOM, Inc. v. James Krachefels, supra,in which the panel found that the device element was not the most dominant element of the combined mark. Therefore the combined device and word mark evokes much more than the slogan alone. In circumstances that the red stylised parcel device design is by far the dominant element of the combined mark, that the slogan "your delivery experts" is a weak mark as described above and that there is very little evidence of the use of the slogan such as might suggest that it has developed acquired distinctiveness through use, the Panel finds that the Disputed Domain Name cannot be said to be confusingly similar to the combined device and word mark registered by the Complainant.
Although the threshold question of trade mark rights and confusing similarity under the first element of the Policy is generally considered by panels to be a low one, in this case there is simply insufficient evidence of the trade mark significance of the slogan "your delivery experts" in the combined mark to meet even a basic threshold.
Accordingly the Complaint fails under the first element of the Policy and it is unnecessary for the Panel to consider the other elements.
For the foregoing reasons, the Complaint is denied.
Date: November 8, 2015