WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DPDgroup International Services GmbH & Co. KG. v. Whois Privacy Protection Foundation / Aurelius Mark
Case No. D2020-0149
1. The Parties
Complainant is DPDgroup International Services GmbH & Co. KG., Germany, represented by Fidal, France.
Respondent is Whois Privacy Protection Foundation, the Netherlands / Aurelius Mark, Romania.
2. The Domain Name and Registrar
The disputed domain name <group-dpd.net> (the Disputed Domain Name) 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 January 21, 2020. On January 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 23, 2020, the Registrar transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on January 23, 2020.
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 Respondent of the Complaint, and the proceedings commenced on January 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 16, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 17, 2020.
The Center appointed Peter Wild 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. Factual Background
Complainant, also operating under “www.dpd.com”, is a major logistics company, active in the fields of courier parcel delivery and pick up, with a focus on e-commerce. It operates internationally, including in Romania.
Complainant is the owner of numerous DPD trademark such as DPD GROUP and registrations such as International trademark DPD 761146 registered in May 26, 2001, in classes 36 and 39 and International trademark DPD registration No. 1217471, registered on March 28, 2014, in classes 9, 16, 35, 39 and 42;
Complainant is also the owner of domain names which include the trademark DPD, such as <dpd.com> reserved on March 20, 1991, and a number of domain names with “dpd” under other Top-Level Domains (“TLDs”) such as “.de”.
The Disputed Domain Name <group-dpd.net> was registered on December 19, 2019, and points to a website which reproduces Complainant’s trademark DPD as well as its graphic layout composed of red and grey colors, square block forms etc. A comparison of the Complainant’s website and the Respondent’s website clearly shows that the latter reproduces the Complaint an website's look and feel, including a direct copy of Complainant’s logo.
5. Parties’ Contentions
According to Complainant, the Disputed Domain Name is confusingly similar to Complainant’s trademark DPD as it is included in its entirety.
The addition of the generic term “group” is not sufficient to escape the finding that the Disputed Domain Name is confusingly similar to the trademark DPD, which does not change the overall impression of the designation. It does not prevent the likelihood of confusion between the Disputed Domain Name and Complainant’s trademark.
Complainant furthermore claims that Respondent has no own rights or legitimate interest in the term DPD and that the Disputed Domain Name has been filed and is used in bad faith, even in a fraudulent way, copying the graphics, logo and touch and feel of Complainant’s website and phishing personal information data from users. According to Complainant, Respondent used the Disputed Domain Name to induce Internet users to access Respondent’s website in the belief that they are accessing a website of Complainant, and inducing those users further into disclosing personal information based on a fraudulent email scheme based on the Disputed Domain Name. Complainant claims that such a practice constitutes phishing.
According to Complainant, Respondent pretended on the website to offer purchase/sale/delivery related escrow services. Clients of Complainant informed Complainant that they were made to submit personal data including passport copies and send money in a so-called escrow account. Complainant claims Respondent used the Disputed Domain Name to induce Internet users to access Respondent’s website in the belief that they are accessing the website of Complainant, and inducing those users further into disclosing personal information.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Disputed Domain Name contains, in its entirety and prominently, Complainant’s trademark DPD. The added term “group” is purely descriptive for an organisation and also part of its company name and some of Complainant’s trademarks DPD GROUP, such as International Registration DPD GROUP (and device) registration no. 1271522, of 2015.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) Section 1.8 provides that “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”.
In line with this, the Panel decides that the Disputed Domain Name <group-dpd.net> is confusingly similar to Complainant’s trademark DPD. The Panel also finds that the Disputed Domain Name is confusingly similar to Complainant’s DPD Group trademark. The first condition of the Policy is met.
B. Rights or Legitimate Interests
Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests, see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Once such prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
There is no reason to believe that Respondent’s name somehow corresponds with the Disputed Domain Name and Respondent does not appear to have any trademark rights associated with the terms “dpd” or “Groupdpd”. See VUR Village Trading No. 1 Limited t/a Village Hotels v. Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1596.
The Respondent is not identified in the WhoIs database as “group-dpd”. From the available record, there is no evidence that the Respondent is commonly known by the disputed domain name. The Panel therefore finds under paragraph 4(a)(ii) of the Policy that Respondent is not commonly known by the Disputed Domain Name.
According to Complainant, Respondent is not affiliated with nor authorized by Complainant in any way to use the trademark. Furthermore, the Disputed Domain Name <group-dpd.net> points to a fraudulent website which indicates that Respondent did not make any legitimate use of Disputed Domain Name since its registration. Respondent did not claim any rights or legitimate interests, as it did not file a response at all.
Based on these facts, the Panel holds that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and the second condition of the Policy is met.
C. Registered and Used in Bad Faith
Given the distinctiveness of Complainant’s trademarks and reputation at the time of the registration for the Disputed Domain Name, it is reasonable to infer that Respondent has registered the Disputed Domain Name with full knowledge of Complainant’s trademarks, constituting opportunistic bad faith, especially as Respondent added the term “group” which Complainant also uses to describe its business and forms part of some of its trademarks. The Panel finds it hard to see any other explanation that Respondent knew Complainant’s well known trademarks. See Ferrari S.p.A v. American Entertainment Group, Inc, WIPO Case No. D2004-0673 and Revlon Consumer Products Corporation v. Terry Baumer, WIPO Case No. D2011-1051. Furthermore, Respondent reproduces Complainant's trademark and graphic elements on its website, promoting complementary services at the Disputed Domain Name. From this it is obvious that Respondent knew of Complainant and its trademarks at the time when it registered the Disputed Domain Name. The Panel therefore concludes that the Disputed Domain Name was registered in bad faith.
It is also obvious to the Panel that Respondent has intentionally attempted to attract, for commercial and/or fraudulent purposes, Internet users to its website by creating a confusion with Complainant’s trademarks. Indeed, upon arriving at the Respondent’s website, Internet users seeing the Complainant’s trademarks are likely to think that they are at the Complainant’s website, or at least that the services being promoted are affiliated to Complainant.
Respondent used the Disputed Domain Name to lead Internet users to access Respondent’s website in the belief that they are accessing the website of Complainant, and prompting those users further into disclosing personal information based on a fraudulent email scheme based on the Disputed Domain Name. Moreover, Complainant was informed by a customer that Respondent apparently perpetrating criminal activities (phishing and scams) requesting prepayment for a fake order. Clearly, the Respondent is intending to confuse Complainant’s actual or potential customers and suppliers into believing that Respondent is Complainant, or is otherwise associated or affiliated with Complainant and thereby abusing the goodwill of Complainant. The Respondent is deliberately creating confusion with the Complainant’s in order to give credibility to its scams and phishing operations.
For these reasons the Panel holds that the disputed domain name was registered and used in bad faith and the third condition of the Policy is met.
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.net> be transferred to Complainant.
Date: February 28, 2020