WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DHL International GmbH v. Do Dung, Manhdung
Case No. D2017-1058
1. The Parties
The Complainant is DHL International GmbH of Bonn, Germany, represented by T&G Law Firm LLC of Hanoi, Viet Nam.
The Respondent is Do Dung, Manhdung of Hanoi, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <chuyenphatdhl.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 May 31, 2017. On May 31, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 1, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 14, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 4, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 5, 2017.
The Center appointed Lynda M. Braun as the sole panelist in this matter on July 10, 2017. 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, which was founded in San Francisco, California, United States of America in 1969, belongs to Deutsche Post DHL Group. Since its establishment, it has become a leading postal and delivery company providing international courier, parcel and express mail services. The Complainant has a strong presence in over 220 countries and territories across the globe and has more than 350,000 employees. As a result, the Complainant is widely known internationally and has acquired substantial goodwill and a valuable reputation.
The Complainant is the registered owner of the DHL trademark in various classes around the world, including Viet Nam, where the Respondent resides. Specifically, the Complainant is the owner of numerous trademarks in Viet Nam that incorporate the DHL trademark. These include Registration No. 59021, registered on December 9, 2004 in classes 16, 20, 35, 36 38, 39 and 42; Registration No. 108561, registered on September 3, 2008 in class 39; Registration No. 108562, registered on September 3, 2008 in class 39. The Complainant also owns the International trademark registration for DHL, Registration No. 1034428, registered on February 19, 2010 in class 39 (collectively, “the DHL Mark”).
The Complainant operates its primary website at “www.dhl.com” and promotes its business in numerous countries via country-specific websites.
The Respondent registered the Disputed Domain Name on June 29, 2014, decades after the Complainant began using its trademark registrations for the DHL Mark in countries throughout the world. As of the writing of this decision, the Disputed Domain Name does not resolve to any active website. However, the Complainant provides screenshots in its Complaint showing that the Disputed Domain Name previously resolved to a website that provided delivery services for an entity named “D.H.L Vietnam Trading and Services Transport Company Limited”. The website to which the Disputed Domain Name resolved bore the DHL Mark to promote delivery services allegedly sponsored by the Complainant.
5. Parties’ Contentions
In summary, the following are the Complainant’s contentions:
- The Disputed Domain Name is confusingly similar to the Complainant’s trademark.
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- The Disputed Domain Name was registered and is being used in bad faith.
- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)):
(i) The Disputed Domain Name is identical or confusingly similar to a trademark 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 was registered and is being used in bad faith.
A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
It is uncontroverted that the Complainant has established rights in the DHL Mark based on both long and continuous use as well as its numerous trademark registrations in jurisdictions around the world for the DHL Mark. The Disputed Domain Name <chuyenphatdhl.com> consists of the DHL Mark preceded by the word “chuyenphat”, which is a Vietnamese word meaning “delivery” in English, and followed by the generic Top-Level Domain (“gTLD”) “.com”.
Numerous UDRP decisions have reiterated that the addition of a descriptive word to a trademark is insufficient to avoid confusing similarity. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795; Hoffman-La Roche, Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923; Nintendo of America, Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434. This is especially true where, as in the present case, the Vietnamese word “chuyenphat”, which is a descriptive word that means “delivery” in English, is associated with the Complainant and its business. See, e.g., Gateway, Inc. v. Domaincar, WIPO Case No. D2006-0604 (finding the domain name <gatewaycomputers.com> confusingly similar to the trademark GATEWAY because the domain name contained “the central element of the Complainant’s GATEWAY marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business”).
Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may generally be disregarded when assessing whether a disputed domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012‑0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate Interests
Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), paragraph 2.1.
The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use its DHL Mark. The Complainant does not have any type of business relationship with the Respondent, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. Instead, the Panel finds that the Respondent was improperly using the Disputed Domain Name for commercial gain and thus, has no rights or legitimate interests in the Disputed Domain Name.
Moreover, the Respondent’s unauthorized registration and use of the Disputed Domain Name to create a website bearing the DHL Mark does not constitute a bona fide offering of goods or services or noncommercial fair use under the Policy.
Finally, where a respondent has registered and is using a domain name in bad faith (see the discussion below), the respondent cannot be reasonably found to have made a bona fide offering of goods or services. In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not submitted any substantive arguments or evidence to rebut the Complainant’s prima facie case.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
The Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.
First, the Respondent attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s DHL Mark. The Panel finds that the Respondent registered and is using the Disputed Domain Name in bad faith to attract customers to its website by using a domain name that is confusingly similar to the Complainant’s DHL Mark. The Respondent’s initial use of the Disputed Domain Name to resolve to a website that purported to promote services bearing the DHL Mark in an attempt to have customers believe that the services were sponsored by the Complainant demonstrates the Respondent’s bad faith registration and use of the Disputed Domain Name under the Policy, paragraph 4(b)(iv). Such use created the false impression that the Respondent’s website was affiliated with or endorsed by the Complainant when it was not. Although the Disputed Domain Name no longer resolves to the website referenced above, this Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.
Second, bad faith may be found where the Respondent knew or should have known of the registration and use of the Complainant’s Mark prior to registering the Disputed Domain Name. See Façonnable SAS v. Names4sale, WIPO Case No. D2001-1365. Such is true in the present case in which the Respondent registered the Disputed Domain Name long after the Complainant first used the DHL Mark.
The continuous and public use of the DHL Mark would make it disingenuous for the Respondent to claim that it was unaware that the registration of the Disputed Domain Name would interfere with the Complainant’s rights. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights and publicity in the complainant’s trademarks). Thus, the timing of the Respondent’s registration and use of the Disputed Domain Name indicates that it was made in bad faith.
Moreover, the registration of a domain name that is confusingly similar to a well-known registered trademark by an entity that has no relationship to that mark may be sufficient evidence of bad faith registration and use. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known service and product by someone with no connection to the service and product suggests opportunistic bad faith). Based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith in an attempt to create a likelihood of confusion with the DHL Mark.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant
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 <chuyenphatdhl.com> be transferred to the Complainant.
Lynda M. Braun<
Date: July 14, 2017