WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DPDgroup International Services GmbH & Co. KG v. Domain ID Shield Service Co. Ltd. / Dr. Geo Mark
Case No. D2018-1521
1. The Parties
The Complainant is DPDgroup International Services GmbH & Co. KG of Aschaffenburg, Germany, represented by Fidal, France.
The Respondent is Domain ID Shield Service Co. Ltd. of Kowloon, Hong Kong, China /Dr. Geo Mark, Ikeja, Lagos, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <dpdexpresscourier.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 6, 2018. On July 6, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 9, 2018, 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 July 10, 2018 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 July 10, 2018.
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 July 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 31, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 1, 2018.
The Center appointed James Bridgeman as the sole panelist in this matter on August 13, 2018. 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 provides parcel and postal delivery services and has been carrying on business since 1977. It has grown to have 32, 000 pickup points in 230 different jurisdictions and has a portfolio of international registrations for the DPD mark which it uses in connection with the provision of its services including international trademark registration for DPD (and cube Device) registration number 761146 registered on May 26, 2001 in classes 36 and 39.
The Complainant has an established Internet presence and is the owner of a large portfolio of domain names including <dpd.asia>, <dpd.biz>, <dpd.eu>, <dpd.info> and <dpd.net>.
There is no information available about the Respondent except for that which is provided in the Complaint, as amended, and the communications between the Center and the Registrar. The Respondent availed of a privacy service which identified the Respondent following correspondence from the Center and the Complainant amended the Complaint accordingly.
The disputed domain name was registered on April 17, 2018 and resolved to an active website on the date of the Complaint.
As the first named Respondent appears to be an entity providing a privacy shield service, references to the "Respondent" in this decision are references to the second named Respondent, save where the context indicates otherwise.
5. Parties' Contentions
The Complainant relies on its rights in the above-listed portfolio of trademark registrations and alleges that the disputed domain name <dpdexpresscourier.com> is confusingly similar to the Complainant's DPD trademark.
The Complainant points out that the Complainant's DPD trademark has been wholly incorporated into the disputed domain name and argues that the additional words "express" and "courier" do not distinguish the disputed domain name from the Complainant's DPD trademark.
The Complainant argues that the additional elements, which are dictionary terms, enhance the degree of confusion because the word "courier" makes reference to the Complainant's parcel and postal delivery services and the term "express" is often used to convey the message that goods or services are processed or delivered quickly and without delay.
Thus, the addition of these words merely serves to heighten potential Internet user confusion with the Complainant's domain names, website and the postal and delivery services that it offers through them. Furthermore the UDRP panel in DPD Dynamic Parcel Distribution GmbH & Co.KG. v. Barath Singh, WIPO Case No. D2014-1823 agreed that "express is a term which can be readily associated with parcel distribution services, and companies providing such services are likely to offer express delivery".
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name. To the Complainant's knowledge, the Respondent is not commonly known by the name <dpdexpresscourier.com>, nor is the Respondent offering a bona fide offer of product or services.
Moreover, to the Complainant's best knowledge, the Respondent does not make any use of a business name which includes the sign DPD and has no rights on any trademark composed of this sign. The Complainant has been monitoring its trademarks worldwide for years and has never noticed any DPD trademark in the name of the Respondent.
The Complainant has not authorized licensed, permitted or otherwise consented to the Respondent's use of the trademark DPD in the disputed domain name and has no relationship with the Respondent.
A cease and desist letter was sent to the provider of the identity shield, which was initially identified as the registrant on the WhoIs in which the Complainant asserted its rights. As of the date of filing of the Complaint, this letter remained unanswered despite a reminder being sent. The Complainant argues that this emphasizes the fact that the Respondent has no interest in the disputed domain name whatsoever.
The Complainant argues that the Respondent has sought to confuse Internet users who arrive at its website by creating the impression that the Complainant is associated with it when this is not the case. The Respondent's activities do not amount to legitimate or bona fide conduct and supports an inference that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant also submits that the disputed domain name <dpdexpresscourier.com> was registered and is being used in bad faith arguing that in light of the reputation of the Complainant and the scope of its operations, it is obvious that the Respondent had knowledge of both the Complainant and its trademark at the time the disputed domain name was registered. Moreover, according to the decision in Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909 "in cases where the reputation of a complainant in a given mark is significant and the mark bears strong similarities to the disputed domain name, the likelihood of confusion is such that bad faith on the part of the respondent may be inferred".
Thus, the Respondent sought to make use of the reputation of the Complainant and registered the disputed domain name in bad faith. The decision DPDgroup International Services GmbH & Co. KG v. Eden Crowin, WIPO Case No. D2018-0887 reinforces the previous point saying that "the Complainant's DPD mark is not a common abbreviation or combination of letters and as result enjoys a level of distinctiveness in relation to the service for which it is used by the Complainant". Clearly, the Respondent did not choose to incorporate the letters DPD. The disputed domain name was not chosen by coincidence and is being used in order to divert Internet users to the Respondent's website for its own commercial purposes.
Furthermore, the Complainant argues that it is well established that when a disputed domain name is so obviously connected with a well known name and products, it's very use by someone with no connection with the products suggests opportunistic bad faith as has been decided in Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226. As a result, the disputed domain name obviously connected with a well known name, such as DPD in the field of parcel and postal services and used by someone with a connection to these services must also and all the more be considered as opportunistic bad faith.
As the Respondent has reproduced the Complainant's trademark on his website at the disputed domain name, promoting similar services to the Complainant, it is apparent that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating confusion with the Complainant's trademark. Upon arriving at the Respondent's website, Internet users seeing the Complainant's trademark are likely to think that they are at the Complainant's website, or at least that the services being promoted are affiliated to the Complainant.
The Respondent has registered and used the disputed domain name to induce Internet users to access the Respondent's website in the belief that they are accessing the website of the Complainant and inducing those users further into disclosing personal information based on a fraudulent email scheme based on the disputed domain name. Such a practice constitutes phishing. In this regard the Complainant refers to screenshots of the website to which the disputed domain name resolves and in particular:
- In the "Get in touch" section of the Respondent's website allows Internet users to send email "for information or for a refund" to three different emails which reproduce DPD mark
- In the "Our client" section it is indicated that "Over the years, we have amassed a long list of reputable clients who we continue to serve diligently and effectively. Our good work speaks for us" and claims that the Respondent's business was established in 1985 even though the website to which the disputed domain name <dpdexpresscourier.com> resolves was not created until April 2018. The Complainant submits that most companies in this field of activity tend to mention their biggest clients.
- In the "About us" section, the Respondent lays out the pretended company's history which seems to be entirely made up.
- The "Major services" section states that the Respondent's "Financial Security Group is a team of highly experienced financial planners and investment advisors who understand the importance of helping clients achieve financial independence" but the Respondent's website contains no Service terms or Dispute policy.
The Complainant submits that the Respondent is intending to confuse the Complainant's actual or potential customers and suppliers into believing that the Respondent is in fact the Complainant or is otherwise associated or affiliated with the Complainant and therefore the Respondent is deliberately creating confusion with the Complainant's business to give credibility to its scams and phishing operations.
As of the date of filing of the Complaint, neither the website nor the disputed domain name had been disabled.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to establish 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 Complainant claims rights in the DPD trademark, relying on the abovementioned portfolio of trademark registrations which have not been challenged by the Respondent.
The disputed domain name consists of the Complainant's DPD mark in combination with the English language words "express" and "courier" together with the ".com" generic Top Level Domain ("gTLD") extension.
The Complainant's DPD trademark is recognizable as the dominant element in the disputed domain name. The word "courier" is a reference to the commercial field of activity of the Complainant and the word "express" is a laudatory epithet inferring fast service. Neither of these two additional words impact on the recognizability of the Complainant's mark in the disputed domain name. In the circumstances of the present case the ".com" TLD extension may be ignored for the purposes of comparison as it is a commonplace technical element.
In these circumstances this Panel finds that the disputed domain name is confusingly similar to the DPD trademark in which the Complainant has rights and the Complainant has succeeded in the first element of the test in paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made out an unanswered prima facie case that the Respondent has no rights or legitimate interest in the disputed domain name. The disputed domain name is confusingly similar to the Complainant's trademark and in fact incorporates the mark in its entirety; the Complainant has not granted any right or licence to the Respondent to use its trademark in a domain name or otherwise; despite regular monitoring over a number of years, the Complainant has been unable to discover any evidence that the Respondent has ever used the DPD mark; the website to which the disputed domain name resolves appears to present a fictitious business and may well be used for the purposes of phishing; and notwithstanding the Complainant's efforts to communicate with the Respondent prior to the making of this Complaint, the Respondent has not responded in any way.
It is well established by UDRP panels under the Policy that in circumstances such as this where the Complainant has made out a prima facie case, the burden of production shifts to the Respondent to prove his rights or legitimate interest in the disputed domain name. The Respondent has failed to respond to this Complaint and has therefore failed to discharge the burden.
In the circumstances this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and the Complainant has therefore succeeded in the second element of the test in paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant's rights in the DPD trademark predate the registration of the disputed domain name on April 17, 2018. Given that the dominant element of the disputed domain name consists of the Complainant's trademark in its entirety, and that the word "courier" is a reference to the field of activity in which the Complainant carries on its extensive international transport business, it is improbable that the registrant was not aware of the Complainant, its reputation, its rights in the CPD and its business when the disputed domain name was selected and registered. This conclusion is supported by the fact that the website to which the disputed domain name resolves purports to offer services which are identical to the Complainant's business.
On the balance of probabilities the Respondent's business is a fiction and the website is being used to attract Internet users searching for the Complainant to the Respondent in order to collect information from visitors to the site which may well be used for phishing.
This Panel must conclude therefore that the disputed domain name was registered and is being used in bad faith to take predatory advantage of the Complainant's reputation in order to create a misleading impression that the Respondent's website is in some way associated with the Complainant's business. This can only be harmful to the Complainant, its trademark, reputation and business.
The Complainant has therefore succeeded in the third and final element of the test in paragraph 4(a)(iii) of the Policy and is entitled to the remedy requested, namely that the disputed domain name be transferred to 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 <dpdexpresscourier.com> be transferred to the Complainant.
Date: August 20, 2018