WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DPDgroup International Services GmbH & Co. KG v. WhoisGuard Protected, WhoisGuard, Inc. / Hoster Node
Case No. D2017-1629
1. The Parties
The Complainant is DPDgroup International Services GmbH & Co. KG of Aschaffenburg, Germany, represented by Inlex IP Expertise, France.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama / Hoster Node of London, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <dpdspedition.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2017. On August 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 21, 2017, 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 August 24, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on August 26, 2017.
The Center verified that the Complaint together with the amendment 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 August 31, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 20, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 22, 2017.
The Center appointed Alfred Meijboom as the sole panelist in this matter on October 4, 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 is a company registered in Germany and is a provider of parcel delivery services. It is the owner of various registered trademarks, including the following:
- International trademark number 761146 for a figurative mark , registered on May 26, 2001 for services in classes 36 and 39 and designating 53 territories;
- European Union trademark number 006159487 for DPD DYNAMIC PARCEL DISTRIBUTION registered on August 1, 2007 for services in classes 35 and 39;
- International trademark number 1217471 for a figurative mark, registered on March 28, 2014 for goods and services in classes 9, 16, 35, 39 and 42 and designating 59 territories;
- International trademark number 1271522 for a figurative mark , registered on August 25, 2015 for services in classes 39 and designating 68 territories.
The disputed domain name was registered on June 7, 2017 and resolves to a website that is an imitation of the Complainant’s website.
5. Parties’ Contentions
The Complainant alleges that the disputed domain name is confusingly similar to the trademarks with their common element DPD as this element is reproduced in the disputed domain name together with the term “spedition”, which means “carrier, shipping” in German, thereby enhancing the confusion.
The Complainant further alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name because the Respondent has no contractual or proprietary rights in respect of the disputed domain name, was not authorized or licensed by the Complainant to register and use the disputed domain name and the Respondent nevertheless uses the disputed domain name to copy the Complainant’s identity, reproducing the Complainant’s trademarks and logos and taking ownership of the Complainant’s history and services offering.
The Complainant further claims that the Respondent registered and used the disputed domain name in bad faith as it reproduced the Complainant’s identity for the purpose of phishing.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Respondent did not file a response. However, as set out in section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the consensus view of UDRP panels is that the respondent’s default does not automatically result in a decision in favor of the complainant. The complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. Although the panel may draw appropriate inferences from the respondent’s default, paragraph 4 of the Policy requires the complainant to support its assertions with actual evidence in order to succeed in these proceedings. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, the panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The Panel finds that in this case there are no such exceptional circumstances.
Under the Policy, the Complainant must prove that:
(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 has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks identified in paragraph 4 above. Like the panels in DPD Dynamic Parcel Distribution GmbH & Co. KG v. King John, WIPO Case No. D2016-2522 and DPD Dynamic Parcel Distribution GmbH & Co.KG v. Priscilia Dubois, WIPO Case No. D2016-2352, this Panel is also of the opinion that the term DPD represents the essential element of the Complainant’s trademarks and the Complainant has made substantial use of the mark DPD in commerce. The term DPD is included in the disputed domain name in its entirety.
Consequently, the first element of paragraph 4(a) of the Policy is met.
B. Rights or Legitimate Interests
The Complainant must show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent may rebut (e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel takes note of the various undisputed allegations of the Complaint and in particular that no authorization has been given by the Complainant to the Respondent to use or register the disputed domain name, that the Respondent has not been commonly known by the disputed domain name, that the disputed domain name was used for a phishing scam with the intention of defrauding Internet users into making an advance payment to a bank account provided by the Respondent to the detriment of such Internet users who may have been confused such as to believe that the website under the disputed domain name which copied the Complaint’s identity was therefore actually the Complainant’s.
Fraudulent commercial use of the disputed domain name in this way qualifies neither as a bona fide offering of goods or services nor as a legitimate noncommercial or fair use. As such, the Panel is satisfied that the Complainant has undisputedly shown that the Respondent was involved in phishing activities via the disputed domain name, which in itself is sufficient to find that the Complainant has succeeded in making a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name (e.g., Société Française du Radiotéléphone-SFR v. Madeleine Corvaisier, WIPO Case No. D2011-0225; Terex Corporation v. Williams Sid, Partners Associate, WIPO Case No. D2014-1742).
The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, there is evidence of registration and use of the disputed domain name in bad faith where the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service offered on the Respondent’s website or location.
In the Panel’s view, it is obvious that at the time the Respondent registered the disputed domain name it must have had the Complainant’s trademarks in mind as they had already been registered for many years and actually used by the Complainant on a world wide scale, which is further confirmed by the fact that (i) the word “spedition”, meaning shipping or delivery company in German, which language is also the language of the Complainant’s global headquarters, was added to the Complaint’s trademark which not only enhances the confusion between the disputed domain name and the Complainant’s trademark but also shows that the Respondent must have been aware of the Complainant’s main activities, and (ii) the Respondent is using the disputed domain name to resolve to a website which copies the Complainant’s identity, including the trademarks identified in paragraph 4 above. The Panel is therefore satisfied that the Respondent registered the disputed domain name in bad faith.
To the Panel’s mind it is further obvious that the use which the Respondent makes of the disputed domain name to effectively pass itself off as the Complainant, apparently so as to obtain payments from Internet users as a result of the intentionally created confusion between the disputed domain name and the Complainant’s trademarks, constitutes use of the disputed domain name in bad faith (e.g. Visa Europe ltd. contre Sophie Dupont, WIPO Case No. D2014-0119).
Consequently, the third and last element of paragraph 4(a) of the Policy is also met.
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 <dpdspedition.com> be cancelled.
Date: October 20, 2017