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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

DPDgroup International Services GmbH & Co. KG. v. Yoyin Sola

Case No. D2020-1262

1. The Parties

Complainant is DPDgroup International Services GmbH & Co. KG., Germany, represented by Fidal, France.

Respondent is Yoyin Sola, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <dpdxcourier.com> is registered with Web4Africa Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 19, 2020. On May 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 21 and 29, 2020, the Registrar transmitted by email to the Center its verification responses 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 Complainant on May 29, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to Complaint on June 3, 2020.

The Center verified that the Complaint together with the amendment to 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 June 5, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 25, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 26, 2020.

The Center appointed Lorelei Ritchie as the sole panelist in this matter on July 3, 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 is a multinational company based in Germany. Since 1977, Complainant has offered parcel and postal delivery services under the name and mark DPD. In this regard, Complainant has 32,000 parcel and postal delivery pickup locations across 230 countries. Complainant has several registered trademarks for variants on its DPD mark. These include International Registration No. 761146 (Registered May 26, 2001) for DPD and design, as well as International Registration No. 1217471 (Registered March 28, 2014) for DPD stylized; and International Registration No. 1271522 (Registered August 25, 2015) for DPD Group and design.

Complainant owns the registration for the domain name <dpd.com>, as well as domain names with other dpd formative terms including, for example, <dpdgroup.com>. Complainant uses the domain names and associated websites to inform customers about its DPD mark and its parcel and postal delivery services and products.

The disputed domain name <dpdxcourier.com> was registered on March 24, 2020. Respondent has no affiliation with Complainant. Respondent has used the URL associated with the disputed domain name to resolve to a website that advertises competing parcel and postal delivery services, but which appears to mimic an official website of Complainant, and to attempt to confuse consumers by asserting “We Are Dpdx Courier: From Pickup to Destination”. Complainant has not authorized any activities by Respondent, nor any use of its trademarks thereby.

5. Parties’ Contentions

A. Complainant

Complainant contends that the (i) disputed domain name <dpdxcourier.com> is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.

In particular, Complainant contends that it has a “well-known” name and mark in the field of parcel and postal delivery services. Complainant further contends that it has trademark registrations for its DPD mark, as well as domain name registrations for variations on this term. Complainant contends that Respondent has merely used the disputed domain name to set up a website meant to lure in customers looking for Complainant and its parcel and postal delivery services, likely in a “phishing” scheme. Complainant further contends that Respondent has no rights or legitimate interests in the disputed domain name registration and use of the disputed domain name. Rather, Complainant contends that Respondent has acted in bad faith in setting up a website, when Respondent clearly knew of Complainant’s rights. Accordingly, Complainant requests that the disputed domain name <dpdxcourier.com> be cancelled.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

This Panel must first determine whether the disputed domain name <dpdxcourier.com> is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name directly incorporates Complainant’s registered trademark DPD, and merely adds the terms “x” and “courier”, which are likely to be perceived by consumers as referring to “express” parcel and postal delivery services – which are also known as courier services - offered by Complainant.

Complainant’s trademark DPD is clearly recognized in the disputed domain name.

Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, General Electric Company v. Recruiters, WIPO Case No. D2007-0584 (transferring <ge-recruiting.com>); Inter Ikea Systems B.V. v. Polanski, WIPO Case No. D2000-1614 (transferring <ikeausa.com>); Microsoft Corporation v. Step-Web, WIPO Case No. D2000-1500 (transferring <microsofthome.com>); CBS Broadcasting, Inc. v. Y2K Concepts Corp., WIPO Case No. D2000-1065 (transferring <cbsone.com>).

The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “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”.

Respondent did not submit a reply to the Complaint, however. Rather, as mentioned in Section 4 of this Panel’s decision, Respondent has used the disputed domain name to divert Internet users to a website that advertises competing services and which appears to mimic Complainant’s website but which is unaffiliated with Complainant or Complainant’s services. Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interest in the disputed domain name, which Respondent has not rebutted.

The Panel therefore finds that Respondent has no rights or legitimate interests in respect of the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

There are several ways that a complainant can demonstrate that a domain name was registered and is being used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] web site or location”. As noted in Section 4 of this Panel’s decision, Respondent has set up a URL associated with the disputed domain name to resolve to a website that advertises competing parcel and postal delivery services, but which appears to mimic an official website of Complainant, and to attempt to confuse consumers by asserting “We Are Dpdx Courier: From Pickup to Destination”.

Hence, Respondent is trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain. Given the nature of the site content and the disputed domain name which incorporates Complainant’s well-known DPD mark, with the addition of the terms “x” and “courier”, the Panel finds strong evidence that Respondent registered and used the disputed domain name with knowledge of Complainant’s prior rights, and in particular with regard to Complainant’s parcel and postal delivery services offered under the DPD mark. See DPDgroup International Services GmbH & Co. KG. v. Domain ID Shield Service Co. Ltd./Dr. Geo Mark, WIPO Case No. D2018-1521 (finding that Complainant has an “extensive international transport business”.)

Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy.

7. Decision

For all 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 <dpdxcourier.com> be cancelled.

Lorelei Ritchie
Sole Panelist
Dated: July 14, 2020

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