WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DPDgroup International Services GmbH & Co v. David Connor
Case No. D2020-3091
1. The Parties
The Complainant is DPDgroup International Services GmbH & Co, Germany, represented by Fidal., France.
The Respondent is David Connor, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <dpd-gmbh.net> (the “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 November 19, 2020. On November 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 20, 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 November 30, 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 amendment to the Complaint on December 1, 2020.
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 December 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 31, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 19, 2021.
The Center appointed Nicholas Smith as the sole panelist in this matter on February 4, 2021. 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 a German company that operates a leading domestic parcel delivery network throughout Europe. Its 77,000 employees deliver 5.3 million parcels a day operating from a network of 47,000 pickup points. The Complainant’s turnover in 2019 was EUR 7,8 billion.
The Complainant is the owner of trademark registrations for marks consisting of the letters “dpd” (the “DPD Mark”) in various jurisdictions including an International Trade Mark registered on March 28, 2014 (no. 1217471) designating numerous countries including Australia, China, India, Japan, Singapore, Turkey, and the United States.
The Domain Name <dpd-gmbh.net> was registered on October 9, 2020. The Domain Name is presently inactive but prior to the commencement of the proceeding resolved to a website (“the Respondent’s Website”) that purported to offer parcel delivery services under the DPD Mark. The Respondent’s Website contained a number of striking similarities with the Complainant’s official website at “www.dpd.com”, including reproducing the Complainant’s logo, which features the words “dpd delivery” next to a stylized red box. The Respondent’s Website purported to give the impression of an enterprise providing delivery services in Europe and also purported to offer a secure payment option for buyers and sellers in online marketplaces.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s DPD Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the DPD Mark, having registered the DPD Mark in the United States and other jurisdictions. The Domain Name is confusingly similar to the DPD Mark as it wholly incorporates the DPD Mark and adds “-gmbh” which is a descriptive term which refers to the legal status of the Complainant.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known by the Domain Name nor does the Respondent have any authorization from the Complainant to register the Domain Name. The Respondent is not making a legitimate noncommercial or fair use of the Domain Name. Rather the Respondent is using the Domain Name to resolve to a website that sells postal and payment services competing with the Complainant under the same mark as the Complainant, which may amount to a fraud on the Complainant’s customers.
The Domain Name was registered and is being used in bad faith. By using the Domain Name to resolve to a website that offers competing services, the Respondent is using the Domain Name to divert Internet users searching for the Complainant to the Respondent’s Website for commercial gain. Such conduct amounts to registration and use of the Domain Name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the DPD Mark, having a registration for the DPD Mark as a trademark in the United States.
Disregarding the “.net” generic Top-Level Domain as an essential element of any domain name, the Domain Name incorporates the DPD Mark with the addition of the descriptive term (in that it describes a company’s legal status) “-gmbh”. The addition of a descriptive term to a complainant’s mark does not prevent 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”) and Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004‑0056.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s DPD Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any 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 is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the DPD Mark or a mark similar to the DPD Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial or fair use.
The Respondent has used the Domain Name to operate a website that clearly impersonates the Complainant’s website at “www.dpd.com”, purporting to offer parcel delivery and related e-commerce services under the Complainant’s DPD Mark. Such conduct does not, on its face, amount to the use of the Domain Name for a bona fide offering of goods or services.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. Moreover, the Domain Name is presently inactive. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Name under the Policy. In the absence of such a Response, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(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 the respondent’s website or location (Policy, paragraph 4(b)).
The Panel finds that the Respondent was aware of the Complainant and its reputation in the DPD Mark at the time the Domain Name was registered. The Respondent’s Website purported to offer services in direct competition with the Complainant and reproduced the Complainant’s logo. The registration of the Domain Name in awareness of the DPD Mark and in the absence of rights or legitimate interests amounts under these circumstances to registration in bad faith.
The Respondent has used the Domain Name, being confusingly similar to the DPD Mark, to offer services, be they genuine or otherwise, in competition with the Complainant and in the Complainant’s jurisdiction. Consequently the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its Website by creating a likelihood of confusion with the Complainant and the Complainant’s DPD Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website (Policy, paragraph 4(b)(vi). The fact that the Domain Name is presently inactive does not prevent a finding of bad faith.
Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith 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 Domain Name, <dpd-gmbh.net> be transferred to the Complainant.
Date: February 17, 2021