WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

DPDgroup International Services GmbH & Co. KG v. WhoisGuard Protected, WhoisGuard, Inc. / Hoster Node

Case No. D2017-2109

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 <dpd-cargo.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 October 27, 2017. On October 30, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 November 2, 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 November 3, 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 November 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 26, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 28, 2017.

The Center appointed Philippe Gilliéron as the sole panelist in this matter on December 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 an international parcel delivery company and owns numerous trademarks in various jurisdictions consisting in all or in part of the DPD acronym, such as:

- International trademark with registration number 761146 (DPD, fig.), registered on May 26, 2001, under classes 36 and 39 of the Nice Classification.

- IR 1217471 (DPD, fig.), registered on March 28, 2014, under classes 9, 16, 35, 39 and 42 of the Nice Classification.

The Complainant also owns numerous domain names such as <dpd.asia>, <dpd.biz>, <dpd.ch>, <dpd.com>, <dpd.net>, <dpd.in>, <dpd.lu>, <dpd.fr>, <dpd.eu> and <dpd.ru>.

The domain name <dpd-cargo.com> was registered on May 3, 2017. The website attached to the disputed domain name fully captures the graphic official layout of the Complainant’s websites and reproduces the Complainant’s trademarks.

On July 27, 2017, the Complainant sent a cease and desist letter to the Respondent, requiring the immediate suspension of the website associated with the disputed domain name, to no avail.

5. Parties’ Contentions

A. Complainant

The Complainant first considers that the disputed domain name <dpd-cargo.com> is confusingly similar to its trademarks as it entirely contains the registered acronym DPD and that the addition of the term “cargo”, purely descriptive, is unlikely to exclude the likelihood of confusion resulting from such reproduction.

The Complainant further affirms that the Respondent has no rights or legitimate interests in respect of the disputed domain name as it is not commonly known by the domain name <dpd-cargo.com> or a name corresponding to the disputed domain name, the disputed domain name is not being used in connection with any bona fide offering of goods or services and that the Complainant has never granted the Respondent any authorization or license to use the DPD trademark.

The Complainant finally believes that the disputed domain name was registered and is being used in bad faith as the Respondent uses the Complainant’s trademarks on the website attached to the disputed domain name that and reproduces the Complainant’s graphic layout most likely in order to carry out phishing operations.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

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

(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

According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant holds numerous trademarks in various jurisdictions, primarily consisting of the acronym “DPD”.

UDRP panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark for purpose of the Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358; and F. Hoffmann-La Roche AG v. Relish Entreprises, WIPO Case No. D2007-1629). Such happens to be the case here.

This is all the more true when the inserted trademark consists of the dominant part of the disputed domain name, and the added elements are merely descriptive.

Such happens to be the case. The applicable generic Top-Level Domain (“gTLD” suffix, in the present case “.com”, is usually disregarded under the confusing similarity test and the addition of a descriptive term such as “cargo” does not avoid confusing similarity (see, among others: Playboy Entreprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768; Inter-IKEA Systems B.V. v. Evezon Co. Ltd, WIPO Case No. D2000-0437; Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life, WIPO Case No. D2002-0363).

As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied.

B. Rights or Legitimate Interests

According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.

As the panel stated in Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, demonstrating that the Respondent has no rights or legitimate interests in the domain name “would require complainant to prove a negative, a difficult, if not impossible, task.” Thus, in that decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion.” Following that decision, subsequent UDRP panels acknowledged that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, the burden of production shifts to the respondent to come forward with evidence to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied to paragraph 4(a)(ii) of the Policy (see, e.g., section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

In the present case, the Complainant is the owner of numerous DPD trademarks. The Complainant has no business or other relationship with the Respondent. The Complainant thus has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name.

Absent any Response, there is no doubt in the Panel’s opinion that the Respondent is neither commonly known by the disputed domain name, nor has made a legitimate noncommercial or fair use of the disputed domain name. Rather, the website at the disputed domain name copies the look and feel of that of the Complainant, creating the misleading impression that the Respondent’s website is operated by or affiliated with the Complainant.

Consequently, in light of the above, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled.

C. Registered and Used in Bad Faith

For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).

In the present case, the Complainant is the owner of numerous trademarks consisting in all or in part of the acronym “DPD”. Considering the content of the website attached to the disputed domain name that reproduces the Complainant’s trademarks with a graphical layout of the website similar to the Complainant’s official ones, the Respondent was obviously aware of the Complainant’s trademarks at the time of registration of the disputed domain name. As a result, the Panel holds that the disputed domain name was registered in bad faith.

Based upon the overall circumstances of the case, the Panel has no doubt that the disputed domain name was registered by the Respondent to exploit the Complainant’s goodwill and attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark, most likely in a fraudulent way for phishing purposes.

Consequently, the Panel is of the opinion that the disputed domain name <dpd-cargo.com> has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.

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 <dpd-cargo.com> be cancelled.

Philippe Gilliéron
Sole Panelist
Date: December 5, 2017