WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DPDgroup International Services GmbH & Co. KG v. Whois Privacy Protection Foundation / Aurelius Mark
Case No. D2019-3141
1. The Parties
The Complainant is DPDgroup International Services GmbH & Co. KG, Germany, represented by Fidal, France.
The Respondent is Whois Privacy Protection Foundation, Netherlands / Aurelius Mark, Romania.
2. The Domain Name and Registrar
The disputed domain name <group-dpd.com> is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2019. On December 19, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 20, 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 December 20, 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 amended Complaint on December 23, 2019.
The Center sent an email communication to the parties on December 20, 2019, regarding the language of the proceeding, as the Complaint has been submitted in English and the language of the registration agreement for the disputed domain name is Romanian. The Complainant submitted a request for English to be the language of the proceeding on December 23, 2019. The Respondent did not submit any communication regarding the language of the proceeding.
The Center verified that the Complaint together with the amended 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 January 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 30, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 7, 2020.
The Center appointed Marilena Comanescu as the sole panelist in this matter on February 20, 2020. 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. Language of the Proceeding
The Complainant has requested that the language of proceeding be English and the Respondent did not react to the Center’s email related to the language of the proceeding, nor provided any Response in any language whatsoever.
Under paragraph 11 of the Rules, the language of the proceeding is the language of the registration agreement of the disputed domain name, unless both parties agree otherwise, or the panel determines otherwise based on the circumstances of the administrative proceeding. Past UDRP panels have decided that proceeding should be conducted in another language generally when it is necessary due to different nationalities of the parties and when the complainant does not understand the language of the registration agreement and it would therefore be unfairly disadvantaged by the fact that it must translate all the documents involved in such proceeding.
In the present proceeding, the Complainant does not understand Romanian. The Respondent, having been notified of the present proceeding in both English and Romanian, has failed to file a Response, or to comment on the language of the proceeding. The Panel considers that the Complainant will only be disadvantaged if required to translate the Complaint into Romanian and the proceeding will be unduly delayed.
Moreover, the disputed domain name includes the English word “group” and the Respondent was involved in at least one prior UDRP procedure decided in English, see Section 5 below.
For all the above, the Panel decides that English is the language of the proceeding.
5. Factual Background
The Complainant is a German company offering parcel and postal services since 1977, currently having 32,000 pickup points in 230 different countries around the world.
The Complainant holds a large portfolio of DPD trademarks, including the following:
- the European Union trademark registration number 013720636 for the words DPD GROUP with figurative element, filed on February 9, 2015 and registered on June 8, 2015, and covering goods and services in Nice classes 9, 16, 35, 39, and 42; and
- the International trademark registration number 761146 for the mark DPD with figurative element, registered on May 26, 2001, and designating many countries worldwide including Romania, and covering services in Nice classes 36 and 39.
The DPD trademark has been found as having reputation or being well-known in its field of activity by previous UDRP panels. See for example DPDgroup International Services GmbH & Co. KG v. Domain ID Shield Service Co. Ltd. / Dr. Geo Mark, WIPO Case No. D2018-1521; or DPDgroup International Services GmbH & Co. KG v. Whois Privacy Protection Foundation / Albert Lanken, WIPO Case No. D2019-2957.
The Complainant holds numerous domain names incorporating the mark DPD, such as <dpd.com> (the main one), <dpd.asia>, <dpd.eu>, <dpd.ro> and <mydpd.com>.
The disputed domain name was registered on December 13, 2019, and, at the time of filing the Complaint, it was connected to a website which was offering similar services (escrow and delivery services) to those offered by the Complainant and was displaying, without any authorization, the Complainant’s DPD trademarks and graphic layout composed of red and grey colors and square block forms.
Further, the website at the disputed domain was used for fraudulent purposes, requesting the Internet users accesing the disputed domain name to provide personal information or even the prepayment of fake orders. Annexes 7, 8, 9, and 15 to Complaint support such allegations.
The Respondent revealed by the Registrar was involved in at least one UDRP dispute decided against it, namely DPDgroup International Services GmbH & Co. KG v. Whois Privacy Protection Foundation / Aurelius Mark, WIPO Case No. D2019-2878.
6. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to its well-known trademark DPD, the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
7. Discussion and Findings
In view of the abscence of a Response, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel will further analyze the potential concurrence of the above circumstances.
A. Identical or Confusingly Similar
The Complainant holds rights in the DPD trademark.
The disputed domain name <group-dpd.com> reproduces the Complainant’s trademark DPD with an additional dictionary term. However, such addition does not prevent a finding of confusing similarity as the Complainant’s trademark is clearly recognizable within the disputed domain name.
Numerous UDRP panels have considered that the addition of other terms (whether descriptive, pejorative, meaningless or otherwise) to trademarks in a domain name is not sufficient to escape a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g.,“.com”, “.info”, “.org”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name. See section 1.11 of the WIPO Overview 3.0.
Given the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark DPD, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Complainant asserts that the Respondent does not hold any trademark rights, license or authorization to use the mark DPD, that the Respondent is not commonly known by the disputed domain name, and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services.
Under the Policy, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. See section 2.1 of the WIPO Overview 3.0.
The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case.
To the contrary, 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; and the website to which the disputed domain name resolves copies the layout of the Complainant’s official website and appears to present a fictitious business and may well be used for the purposes of phishing. This is definitely not an activity falling under the circumstances listed by paragraph 4(c) of the UDRP as demonstrating the Respondent’s rights or legitimate interests in the disputed domain name, nor an activity from which rights or legitimate interests could arise.
For all these reasons, the Panel finds that the second element of the Policy is established, and the Respondent has no rights or legitimate interests in respect of the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Complainant has held trademark rights in DPD for decades.
The disputed domain name was created in 2019 and incorporates the Complainant’s mark in its entirety.
From the above, the Panel finds that the disputed domain name was registered in bad faith, knowing the Complainant and targeting its trademark.
The Respondent is using without permission the Complainant’s well-known trademark in order to get traffic on its web portal and to obtain commercial gain from the false impression created for Internet users with regard to a potential connection with the Complainant. This impression is created particularly by the incorporation of the Complainant’s trademark in the disputed domain name, the content on the website provided thereunder which includes the Complainant’s trademarks and layout, and lack of disclaimer.
Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location” is evidence of registration and use in bad faith.
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.
Further, it was consistantly found by past UDRP panels that the mere registration of a domain name that is identical or confusingly similar to a third party’s well-known trademark can constitute, by itself, a presumption of bad faith registration for the purpose of Policy. See section 3.1.4 of the WIPO Overview 3.0.
The Respondent registered the disputed domain name under a privacy service, the Respondent’s contact details in the WhoIs are innacurate, the Respondent refused to participate in the present proceeding and was involved in at least one UDRP proceeding decided against it. Having in view the other circumstances of this case, such facts constitute further evidence of bad faith behavior.
For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
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 <group-dpd.com> be transferred to the Complainant.
Date: March 5, 2020