WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DPDgroup International Services GmbH & Co. KG v. WhoisGuard Protected / Hoster Node
Case No. D2019-1039
1. The Parties
The Complainant is DPDgroup International Services GmbH & Co. KG, Germany, represented by Fidal, France.
The Respondent is WhoisGuard Protected, Panama / Hoster Node, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <dpd-cargo.com> (“Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2019. On May 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 7, 2019, 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 May 9, 2019, 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 May 9 and 24, 2019.
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 May 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 16, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 17, 2019.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on June 26, 2019. 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 global parcel delivery service headquartered in Germany and owns numerous trade mark registrations for the DPD word and device marks across multiple jurisdictions, including, inter alia:
(i) International Trade Mark DPD, registration no. 1217471, registered on March 28, 2014 in classes 9, 16, 35, 39 and 42; and
(ii) European Union Trade Mark DPD GROUP, registration no. 013720636, registered on June 8, 2015 in classes 9, 16, 35, 39 and 42
(altogether, the “DPD marks”).
The Complainant also owns an extensive number of domain names, including but not limited to <dpd.asia>, <dpd.iz>, <dpd.ch>, <dpd.com>, <dpd.net>, <dpd.in>, <dpd.lu>, <dpd.fr>, <dpd.eu> and <dpd.ru>.
There is no information about the Respondent other than the fact that the Respondent is an individual based in the United Kingdom. The Disputed Domain Name was registered on April 4, 2019.
At the time of writing this Decision, the Disputed Domain Name currently resolves to an “Under Maintenance” page, which states that “please note that we will be performing important server maintenance during which time the website will be unavailable for approximately few hours”.
5. Parties’ Contentions
The Complainant’s primary contentions can be summarised as follows:
(a) The Disputed Domain Name is confusingly similar to the Complainant’s DPD trade marks;
(b) the Respondent is not commonly known by the Disputed Domain Name and the Disputed Domain Name is not being used in connection with any bona fide offering of goods or services. Moreover, the Complainant has never granted the Respondent any authorisation, licence or consent to use the DPD marks. Therefore, the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(c) the Disputed Domain Name was registered and is being used in bad faith as the Respondent has used the Complainant’s DPD marks on a website that completely reproduces the Complainant’s website’s overall look and feel, including the graphic layout adopting the same red and grey colours as those on the Complainant’s website.
The Respondent did not reply to the Complainant’s contentions.
The fact that the Respondent has not submitted a formal Response does not automatically result in a decision in favor of the Complainant. However, the Respondent’s failure to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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 or is being used by the Respondent in bad faith.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the DPD trade marks, based on its multiple trade mark registrations across various jurisdictions.
It is well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the generic Top-Level Domain (“gTLD”) extension “.com” may be disregarded. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRO Questions, Third Edition (“WIPO Overview 3.0”).
The Disputed Domain Name incorporates the Complainant’s registered trade mark DPD in its entirety, combined with the descriptive term “cargo”. The addition of the descriptive word “cargo” to form the Disputed Domain Name does not avoid a finding of confusing similarity. See section 1,8 of the WIPO Overview 3.0 (“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.”)
As such, the Panel finds that the Disputed Domain Name is identical or confusingly similar to the Complainant’s DPD mark and accordingly, paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts the Complainant has not authorised the Respondent to use the DPD marks, and that there is no relationship between the Complainant and the Respondent which would otherwise entitle the Respondent to use the DPD marks. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.
Although at the time of writing this Decision the Disputed Domain Name resolves to an “Under Maintenance” page, the Panel has examined the evidence provided by the Complainant, including a screenshot of the website at the Disputed Domain Name which displays a website layout that is highly similar to the overall look and feel of the Complainant’s “www.dpd.fr” website. The foregoing screenshot also shows that the Respondent has used the Complainant’s DPD word and device marks on the website to which the Disputed Domain Name resolves. Given that the Complainant has not granted any right or licence to the Respondent to use the DPD marks, there is no evidence to suggest that the Disputed Domain Name has been used in connection with any legitimate noncommercial or fair use within the meaning of paragraph 4(c)(iii) of the Policy.
In light of the above, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
UDRP panels have consistently found that the mere registration of a domain name that is confusingly similar to a widely-known trade mark by an unaffiliated entity (particularly domain names which incorporate a mark plus a descriptive term) can already by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0. As such, the fact that the Disputed Domain Name incorporates the Complainant’s DPD mark in its entirety already creates a presumption of bad faith. The addition of the descriptive word “cargo” to the DDN increases the likelihood of confusion to consumers, as the word “cargo” is descriptive of the services marked and offered by the Complainant. An Internet user seeking parcel delivery services would likely be wished into thinking that the Respondent’s website is affiliated with the Complainant.
The Panel also notes that the Respondent was named in a previous UDRP proceeding in 2017 involving the exact same domain name as the present Disputed Domain Name, where the domain name in that decision was ordered to be cancelled. See DPDgroup International Services GmbH & Co. KG v. WhoisGuard Protected, WhoisGuard, Inc. / Hoster Node, WIPO Case No. D2017-2109.
By registering the same domain name <dpd-cargo.com> for a second time after its cancellation in the previous UDRP proceeding and by reproducing the Complainant’s website layout and DPD marks, there is no doubt that the Respondent intentionally registered the Disputed Domain Name to exploit the Complainant’s goodwill and create a likelihood of confusion with the Complainant’s DPD marks for commercial gain. UDRP panels have held that two instances of abusive domain name registration is sufficient to establish a pattern of bad faith conduct. See section 3.1.2 of the WIPO Overview 3.0. The Panel therefore finds that the Respondent has been engaging in a pattern of bad faith conduct by its multiple abusive registrations of the Disputed Domain Name.
In addition, the Respondent’s failure to respond to the Complainant’s contentions combined with the fact that the Respondent used a WhoIsGuard privacy protection service to register the Disputed Domain Name further demonstrate that the Disputed Domain Name is registered and used in bad faith.
In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Names in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied.
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 transferred to the Complainant.
Date: July 9, 2019