WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DPDgroup International Services GmbH & Co. KG v. Domain Admin, WhoIS IDC Privacy Service c/o IDC (BVI) Limited / Kaza Baza
Case No. D2019-2376
1. The Parties
The Complainant is DPDgroup International Services GmbH & Co. KG, Germany, represented by Fidal, France.
The Respondent is Domain Admin, WhoIS IDC Privacy Service c/o IDC (BVI) Limited, United Kingdom / Kaza Baza, France.
2. The Domain Name and Registrar
The disputed domain name <dpddelivery.com> is registered with NetEarth One Inc. d/b/a NetEarth (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2019. On September 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 30, 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 October 2, 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 October 3, 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 October 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 24, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 25, 2019.
The Center appointed Cherise Valles as the sole panelist in this matter on October 29, 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 an international parcel delivery company that is headquartered in France.
The Complainant owns a number of trademarks in jurisdictions around the world for the term DPD, including the following:
- International trademark No. 761146 for the DPD logo, registered on May 26, 2001, in classes 36 and 39;
- International trademark No. 1217471 for the DPD logo, registered on March 28, 2014, in classes 9, 16, 35, 39 and 42; and
- International trademark No. 1271522 for the DPD GROUP logo, registered on August 25, 2015, in class 39
The Complainant also owns and operates numerous domain names incorporating the term DPD, including <dpd.com> (registered on March 20, 1991), <dpd.asia>, <dpd.net> and <dpd.eu>.
The disputed domain name was registered on September 10, 2019.
5. Parties’ Contentions
The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:
The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
- The disputed domain name is confusingly similar to the Complainant’s registered trademark, DPD, in light of the fact that it wholly incorporates the Complainant’s mark.
The Respondent lacks rights or legitimate interests in the disputed domain name.
- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.
The disputed domain name has been registered and is being used in bad faith.
- The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use.
The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements:
(i) the domain name is identical or confusingly similar to a trademark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name was registered and is being used in bad faith.
The Complainant has the burden of proof in establishing each of these elements.
The Respondent has failed to file a Response in this proceeding. The Panel may draw appropriate inferences from the available evidence submitted by the Complainant.
A. Identical or Confusingly Similar
To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.
The Complainant is the sole and exclusive owner of multiple registrations worldwide for the term DPD and DPD logos, as indicated in Section 4 above. The disputed domain name wholly incorporates the Complainant’s DPD trademark.
The addition of the word “delivery” to the Complainant’s DPD trademark in the disputed domain name does not prevent a finding of confusing similarity.
In light of the foregoing, the Panel finds that the disputed domain name <dpddelivery.com> is confusingly similar to the Complainant’s registered trademark and that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name (with “you” referring to the respondent):
“[a]ny of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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.”
The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).
Previous UDRP panels have established that in order to shift the burden of production to the respondent, it is sufficient for the complainant to make a prima facie showing that the respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not satisfied this burden. In the absence of a Response or assertion that any such right or legitimate interest exists, this must lead to a presumption that the Complainant has satisfied the second element of the Policy.
To the best of the Complainant’s knowledge, the Respondent is not commonly known under the name “dpddelivery.com”. The term “DPD” corresponds to the Complainant’s trademark in its entirety, and it is not descriptive in any way and to the best of the Complainant’s knowledge, the Respondent does not make use of a business name which includes the term “DPD” nor has the Respondent registered any trademarks incorporating this term. Moreover, there has never been any relationship between the Complainant and the Respondent. The Respondent is not licensed, or otherwise authorized, be it directly or indirectly, to register or use, the Complainant’s trademarks in any manner whatsoever, including in, or as part of, the disputed domain name.
There is no evidence that the Respondent has made demonstrable preparations to use the disputed domain name, nor is there any evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods and services. The Panel concludes that the Respondent is deliberately seeking to confuse Internet users who arrive at the website to which the disputed domain name resolves by reproducing the Complainant’s DPD trademark, by seeking to cause them to believe such website is the Complainant’s website or is associated with the Complainant’s website.
In addition, the Panel notes the composition of the disputed domain name carries a risk of implied affiliation with the Complainant.
In light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case and concludes that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The Panel notes the composition of the disputed domain name where the Respondent added the term “delivery” to the trademark DPD. The Panel finds that the added term “delivery” merely serves to heighten potential Internet users confusion with the Complainant’s domain names, websites and the postal and delivery services that the Complainant offers through them. It has been held by a previous UDRP panel that the word “delivery” is a reference to the Complainant’s commercial field of activity, which has the effect of enhancing the potential degree of confusion as it refers to the Complainant and its parcel and postal delivery service. See DPDgroup International Services GmbH & Co. KG v Eden Crowin, WIPO Case No. D2018‑0887.
The webpage to which the disputed domain name resolves reproduces the Complainant’s trademarks, including those listed above. The webpage identically reproduces the look and feel of the Complainant’s website, and has been designed as an imitation of the Complainant’s website.
The Respondent is impersonating the Complainant purporting to sell escrow and delivery services through the webpage to which the disputed domain name resolves. Various Internet users reported that the Respondent claimed an amount of money in exchange for goods that were never delivered. The Respondent’s use of such webpage suggests that the Respondent’s intention in registering the disputed domain name was to take unfair advantage of the Complainant’s trademarks and reputation in order to confuse Internet users as to the source or affiliation of the Respondent’s website.
Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under 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 <dpddelivery.com> be transferred to the Complainant.
Date: November 11, 2019