WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DPDgroup International Services GmbH & Co. KG. v. Tommy Bosshaft
Case No. D2020-1222
1. The Parties
The Complainant is DPDgroup International Services GmbH & Co. KG., Germany, represented by Fidal, France.
The Respondent is Tommy Bosshaft, Hong Kong, China.
2. The Domain Name and Registrar
The disputed domain name <dpdsendungsverfolgung.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2020. On May 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 15, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 15, 2020 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 May 18, 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 the Respondent of the Complaint, and the proceedings commenced on May 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 14, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 15, 2020.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on June 17, 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
The Complainant is an international franchise network of parcel deliverers. DPD transports approximately 1.3 billion parcels to worldwide destinations every year and has about 75,000 employees worldwide.
The Complainant owns numerous well-known International trademark registrations, which include the word element DPD is the dominant element, including registration nos. 761146, registered in May 26, 2001 in classes 36 and 39; 1217471, registered on March 28, 2014 in classes 9, 16, 35, 39, and 42; and 1271522 registered on August 25, 2015 in classes 9, 16, 35, 39, and 42. These registrations designate various countries worldwide, including countries in the European Union and China. The international registrations of which contain the acronym “dpd” as the only word element, will hereinafter be referred to as the “Trademark” in singular.
Furthermore, the Complainant is the owner of several domain names reflecting the Trademark, including <dpd-sendungsverfolgung.de>, which was registered on July 24, 2013.
The Domain Name was registered on February 16, 2015. At the time of the filing of the Complaint, the Domain Name resolved to a website (“Website”) which seems to provide shipment tracking information regarding parcels transported by Complainant showing the Trademark, including device marks registered and used by Complainant.
5. Parties’ Contentions
The Complainant contends the following.
The Domain Name is confusingly similar to the Trademark. The Domain Name incorporates the Trademark in its entirety as its leading element, together with the descriptive term “sendungsverfolgung” (which means “shipment tracking” in German). This descriptive element does not distinguish the Domain Name from the Trademark. In addition, the Domain Name is highly similar to the Complainant’s domain names.
The Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent is not authorized or permitted to use the Trademark, nor is the Respondent associated with the Complainant. Furthermore, the Respondent is not using the Domain Name in connection with a bona fide offering of goods and services. The Respondent has sought to confuse Internet users who arrive at the Website into thinking that it is the Complainant’s website or is associated with it when this is not the case. The Website contains a contact section containing an email address and a website which are both not working.
The Domain Name was registered and is being used in bad faith. The Complainant is globally well-known. The Domain Name was registered years after the Trademark was first registered. The Respondent must have been well aware of the Complainant and its rights and seeks to mislead consumers by creating a misleading impression of association with the Complainant. The Respondent is deliberately creating confusion with the Complainant in order to give credibility to its scams and phishing operations.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant must demonstrate that it has rights in a trademark or service mark and, if so, the Domain Name must be shown to be identical or confusingly similar to that mark.
The Complainant has shown that it has rights in the Trademark.
The Domain Name incorporates the Trademark and adds the word “sendungsverfolgung” (the German translation for “shipment tracking” or the more usual expression “track & trace”). The Panel finds that the dominant part of the Domain Name is “dpd”. The addition of the purely descriptive element “sendungsverfolgung” does not prevent a finding of confusing similarity.
The addition of the generic Top-Level Domain (“gTLD”) “.com” is in this matter irrelevant in the determination of the confusing similarity between the Trademark and the Domain Name. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; and Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429. See also, Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903: “[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks..
Thus, the Panel finds that the Domain Name is confusingly similar to the Trademark.
For all the foregoing reasons, the Panel is satisfied that the first element of the Policy is met.
B. Rights or Legitimate Interests
The Respondent did not reply to the Complainant’s contentions. For that reason, the Panel has carefully considered the factual allegations that have been made by the Complainant and are supported by the submitted evidence.
In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the Domain Name, such as:
(i) use or preparation to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making 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 does not seem to be affiliated with the Complainant in any way. There is no evidence that “dpdsendungsverfolgung” is the Respondent’s name or that the Respondent is commonly known as “dpdsendungsverfolgung”. There is also no evidence that the Respondent is, or has ever been, a licensee of the Complainant or that the Respondent has ever asked, or has ever been permitted in any way by the Complainant to register or use the Complainant’s Trademark, or to apply for or use any domain name incorporating the Trademark.
The Respondent did not demonstrate any use or demonstrable preparation to use the Domain Name in connection with a bona fide offering of goods or services. In fact, the Panel is of the view, that the Respondent uses the Domain Name to impersonate the Complainant by creating the Website which contains the Trademark and copies the look and feel of the Complainant’s website in order to lend a veneer of authenticity to the Website.
As the Respondent does not seem to be affiliated with the Complainant in any way, it is difficult to imagine how the Respondent’s conduct in adopting a Domain Name which incorporates the Complainant’s well-known Trademark, could be regarded in any way as bona fide or legitimate. The Respondent’s adoption of the Domain Name was clearly to attract Internet users seeking the Complainant’s website and to create confusion. The Respondent was not authorized to use the Trademark and such conduct is inherently misleading. As such, it cannot give rise to a right or legitimate interest in the Domain Name (see Robert Bosch GmbH v. Asia Ventures, Inc., WIPO Case No. D2005-0946). To that extent the Panel considers that it that the Website is not used for bona fide purposes. Given the impersonation of the Complainant, the Panel does not consider it to be necessary to apply in detail the “Oki Data test” (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.8).
Finally, given the circumstances of this case, the Panel finds that the Respondent’s lack of rights or legitimate interests in the Domain Name may also be inferred by the fact that no response was filed by the Respondent. According to earlier UDRP panels, “non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights” (see GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang, WIPO Case No. D2005-0090; and Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493).
Therefore, based on the evidence, the Panel is satisfied that the second element of the Policy is met.
C. Registered and Used in Bad Faith
The Panel refers to its findings under 4.B and finds that the Domain Name was registered and is being used in bad faith.
The Panel finds that the Trademark is, as well as the activities of the Complainant, well-known throughout at least the European Union.
Previous decisions rendered under the Policy state that there is bad faith where a respondent has created a website that is nearly identical to the website of the complainant (see, inter alia, The Dow Chemical Company v. dowaychemical email@example.com +86.7508126859, WIPO Case No. D2008-1078; and Ctrader Limited v. Niko Wibisono, WIPO Case No. D2013-1906) or that creates a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on your web site or location.
Taking the provided evidence into consideration, the Panel finds that the Respondent was fully aware of the Complainant and its Trademark at the moment of registering the Domain Name, which is a requisite for a finding of registration of the Domain Name in bad faith (see AB Gustaf Kähr v. Prasanth sp, inet, WIPO Case No. D2011-1455; Real Madrid Club De Futbol v. Michele Dinoia, WIPO Case No. D2010-0261; and Advance Magazine Publishers Inc. v. Pablo Palermao, WIPO Case No. D2008-0026). Furthermore, since the Respondent impersonates the Complainant with its Domain Name and the Website, the inherent risk exists that the Domain Name will be used for phishing schemes. Internet users receiving email from accounts associated with the Domain Name are likely to verify the authenticity of the email by checking the Website that is associated with the Domain Name. Given the impersonation of the website of the Complainant, Internet users can easily be misled. Moreover, the Panel finds that the use of the Domain Name disrupts Complainant’s business.
In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Name was registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <dpdsendungsverfolgung.com> be transferred to the Complainant.
Willem J. H. Leppink
Date: June 22, 2020