WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DHL International GmbH v. Hop Nguyen, Pohnguyen
Case No. D2017-1725
1. The Parties
The Complainant is DHL International GmbH of Bonn, Germany, represented by T&G Law Firm LLC, Viet Nam.
The Respondent is Hop Nguyen, Pohnguyen of Hanoi, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <dhlvietnam.com> is registered with FastDomain, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2017. On September 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 8, 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 September 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 18, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 19, 2017.
The Center appointed David Stone as the sole panelist in this matter on November 8, 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 was founded in the United States of America in 1969 and has since become one of the world’s leading postal and logistics company. It has a strong presence in more than 220 countries, including Viet Nam, where it has been operating since 2006 as DHL-VNPT Express Ltd and is the market leader in the provision of express delivery services and supply chain solutions.
The Complainant operates its primary website at “www.dhl.com” and promotes its business in Viet Nam at “www.dhl.com.vn”. In Viet Nam it is the registered owner of the following national trade marks (the “DHL Trade Marks”):
- DHL: trade mark number 4-0059021-000, registered on December 9, 2004;
- DHL FREIGHT: trade mark number 4-0108561-000, registered on September 3, 2008; and
- DHL EXPRESS: trade mark number 4-0108562-000, registered on September 3, 2008.
More generally, the Complainant is the registered owner of the trade mark DHL in various classes in jurisdictions around the world.
The WhoIs records indicate that the disputed domain name was registered on May 15, 2012. The evidence submitted by the Complainant shows that the disputed domain name resolves to a website promoting the services of a competing delivery service called “Dove Express”.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to the DHL Trade Marks because it comprises the letters “dhl” in addition only to the geographic indication “vietnam” and the generic Top-Level Domain (“gTLD”) “.com”. The incorporation of a well-known trade mark in full in a disputed domain name is a compelling factor in favour of a finding of confusing similarity. See Nokia Group v. Mr. Giannattasio Mario, WIPO Case No. D2002-0782. The word “vietnam” does not serve to distinguish the disputed domain name from the DHL Trade Marks. See Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768. Furthermore, the inclusion of a gTLD in a domain name is a standard registration requirement, and so is disregarded for the purposes of determining the degree of similarity. See, for example, DHL International GmbH v. Do Dung, Manhdung, WIPO Case No. D2017-1058.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not connected to the Complainant in any way, and has no authority, licence or permission from the Complainant to use the DHL Trade Marks. When, in such circumstances, the Complainant’s rights in the trade marks at issue predate the Respondent’s registration of the disputed domain name, as here, the onus is on the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. See Gerd Petrik v. Johnny Carpela, WIPO Case No. D2004-1043; DHL International GmbH v. Richard Yaming, WIPO Case No. D2012-1081; DHL Operations B.V. and DHL International GmbH v. Diversified Home Loans, WIPO Case No. D2010-0097. In addition, the Respondent is using the website to which the disputed domain name resolves to provide delivery services via a business named Dove Express and to link to a second website, “www.dovevn.com”, that is managed by the same third party. Given the Complainant’s global reputation as a postal and logistics company, it is apparent from this that the Respondent is using the disputed domain name to exploit the goodwill in the DHL Trade Marks for the benefit of Dove Express, and is not making a bona fide offering of goods or services.
Finally, the Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. The DHL Trade Marks are known around the world, and the Complainant believes that the Respondent must have actual knowledge of them. It is therefore extremely unlikely that the Respondent would include “dhl” in a domain name for any reason other than to create a false impression of an association with the Complainant and lead the public to believe that the disputed domain name refers to products and services of the Complainant or of someone authorised by the Complainant. The disputed domain name resolves to a website promoting services of the same type as those provided by the Complainant, and so, as well as disrupting the Complainant’s business, the Respondent’s intention seems to be to divert customers for commercial gain. Both objectives constitute evidence of registration and use in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets out the three requirements that the Complainant must prove in order to succeed:
(i) that the disputed domain name is identical or confusingly similar to a trade mark or service mark 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 Panel is satisfied that the Complainant holds trade mark rights in the DHL Trade Marks, as outlined in section 4 above.
As held by previous UDRP panels, the addition of a geographical indication to a trade mark does not alone suffice to render the combination different enough from the trade mark to avoid a finding of confusing similarity. See Inter-IKEA Systems B.V. v. Evezon Co. Ltd, WIPO Case No. D2000-0437; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713. The disputed domain name takes exactly this form, with the DHL Trade Marks being clearly recognizable in the disputed domain name, and so the Panel finds that the Complainant has satisfied the condition in paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the criteria that determine whether a domain name registrant has rights or legitimate interests in a domain name:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) as an individual, business or other organisation, the Respondent has been commonly known by the disputed domain name even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent has been making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trade mark or service mark at issue.
The Respondent is not commonly known by the disputed domain name, has not received the Complainant’s permission to use the DHL Trade Marks, and is using the disputed domain name to offer or promote commercial services similar to those provided by the Complainant. This amounts to a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and seeks to exploit the Complainant’s brand for commercial gain. In such circumstances the burden of producing evidence demonstrating otherwise shifts to the Respondent, but it has failed to do so. The Panel therefore finds that the Complainant has satisfied the condition in paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out the non-exhaustive criteria for bad faith. Generally, for the purposes of the Policy, bad faith constitutes the intention to register and use a domain name in order to:
(i) sell, rent or transfer the domain name to the trade mark owner (or a competitor thereof) for a profit;
(ii) prevent the trade mark owner from registering its trade mark in a domain name;
(iii) disrupt the business of a competitor; or
(iv) divert Internet traffic for commercial gain.
Where a domain name incorporates a sufficiently well-known trade mark, its registration by someone with no rights or legitimate interests in it is considered to be in bad faith on the ground that the registrant knew or ought to have known of the trade mark’s existence. See DHL International GmbH v. Richard Yaming, WIPO Case No. D2012-1081; DHL International GmbH v. DHL / Ecommerce Admin, WIPO Case No. D2015-0980; SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092; The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113. Here, where the disputed domain name is being used in connection with services similar to those provided by the Complainant, this is compounded by the fact that its registration is designed to disrupt the Complainant’s business and, by leading consumers to the competitor’s website, to divert Internet traffic for commercial gain. For this reason the Panel concludes that the Complainant has satisfied the condition in paragraph 4(a)(iii) of the Policy.
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, <dhlvietnam.com>, be transferred to the Complainant.
Date: November 21, 2017