WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DPDgroup International Services GmbH & Co. KG v. WhoisGuard Protected / Hoster Node
Case No. D2018-2005
1. The Parties
The Complainant is DPDgroup International Services GmbH & Co. KG of Aschaffenburg, Germany, represented by Fidal, France.
The Respondent is WhoisGuard Protected of Panama / Hoster Node of London, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <dpdcourier.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 September 3, 2018. On September 3, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 3, 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 September 5, 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 September 5, 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 September 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 2, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 3, 2018.
The Center appointed Evan D. Brown as the sole panelist in this matter on October 7, 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 is in the business of parcel delivery and owns a number of trademark registrations comprised of the letters DPD in both word and stylized form. For example, International trademark No. 1217471 issued on March 28, 2014. The Respondent registered the disputed domain name on March 3, 2018 and has established a bogus website at the disputed domain name that includes the Complainant’s trademarks and purports to offer international transports and logistics services. The Complainant alleges that the Respondent is also using the disputed domain name and the website located there to engage in a fraudulent email scheme. The Complainant alleges that it was informed by a customer that the Respondent has used email addresses containing the disputed domain name to seek fraudulent prepayment for fake orders.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s registered trademarks; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or 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.
The Panel finds that all three of these elements have been met in this case.
A. Identical or Confusingly Similar
The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark. See Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505. In this case, the disputed domain name contains the Complainant’s trademark DPD in its entirety. The additional word “courier” in this context – that is, being a word related to the services provided by the Complainant – does not avoid the confusing similarity.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657. The Complainant has demonstrated its rights because it has shown that it is the owner of valid and subsisting trademark registrations for variations of the mark DPD as noted above.
Accordingly, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of demonstrating rights or legitimate interests shifts to the Respondent.
The Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. By failing to respond to the Complaint, the Respondent did not overcome its burden of demonstrating rights or legitimate interests, and no other facts in the record tip the balance in the Respondent’s favor.
Paragraph 4(c) of the Policy instructs respondents on a number of ways they could demonstrate rights or legitimate interests (“you” and “your” in the following refers to the particular respondent):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In this case, the principal indicator of the lack of rights or legitimate interests comes from the alleged fraudulent nature of the Respondent’s use of the disputed domain name to develop a bogus website and generate fraudulent email. See Regeneron Pharmaceuticals, Inc. v. Nikki Dockum, Tred, WIPO Case No. D2018-0155; Syngenta Participations AG v. Guillaume Texier, Gobain Ltd, WIPO Case No. D2017-1147 (registrant cannot acquire rights or legitimate interests by the use of a domain name as an email address from which to send phishing emails). Accordingly, the Respondent does not have any rights or legitimate interests in regard to the disputed domain name.
C. Registered and Used in Bad Faith
The Policy requires the Complainant to establish that the disputed domain name was registered and is being used in bad faith. Based on the available record, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. Using the disputed domain name to establish a bogus website that mimics a legitimate website providing services of the same nature as the Complainant does, and using those sites and the disputed domain name to engage in a fraudulent email campaign, are strong examples of bad faith under the Policy.
Accordingly, the Complainant has satisfied this third element 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 <dpdcourier.com> be cancelled.
Evan D. Brown
Date: October 18, 2018