WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DPDgroup International Services GmbH & Co. KG v. Wise One, Wilson TECH
Case No. D2021-0109
1. The Parties
The Complainant is DPDgroup International Services GmbH & Co. KG, Germany, represented by Fidal, France.
The Respondent is Wise One, Wilson TECH, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <dpdcouriercompany.com> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 14, 2021. On January 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 14, 2021, 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 January 15, 2021, 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 January 18, 2021.
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 January 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 8, 2021. On January 19, 2021, the Respondent sent two informal email communications to the Center. The Respondent did not submit a formal response. Accordingly, the Center informed the Parties of the commencement of the Panel appointment process on February 11, 2021.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on February 25, 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
DPDgroup International Services GmbH & Co. KG, the Complainant in the present proceedings, is an international parcel delivery service. The Complainant operates in Europe, where it is one of the largest parcel delivery networks, with a direct presence in 23 countries, as well as in Asia, South Africa, India, Brazil, and several other countries in the world.
The Complainant is the owner of, among others, the following trademark registrations:
- the European Union (“EU”) Trademark DPD DYNAMIC PARCEL DISTRIBUTION No. 6159487 registered on January 8, 2009 (classes 35 and 39);
- the International Trademark No. 761146 registered on May 26, 2001 (classes 36 and 39);
- the International Trademark No. 1217471 registered on March 28, 2014 (classes 9, 16, 35, 39, and 42);
- the International Trademark No. 1271522 registered on August 25, 2015 (classes 9, 16, 35, 39, and 42);
The Complainant is also an owner of numerous domain names, including <dpd.com> registered on March 20, 1991. The detailed list of additional DPD-formative domain names owned by the Complainant is contained in Annex 5 to the Complaint.
On November 23, 2020 the Complainant registered the Domain Name. The Domain Name resolves to a website which reproduces the look and feel of the Complainant’s primary website.
5. Parties’ Contentions
The Complainant requests that the Domain Name be transferred to the Complainant.
First, the Complainant submits that the Domain Name is confusingly similar to the trademarks in which the Complainant has rights, as well to the domain names owned by the Complainant.
Second, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the Domain Name. In this regard, the Complainant asserts the Respondent is not commonly known under the Domain Name, as well as it does not make any use of a business name which includes the sign DPD and has no rights in any trademark composed of this sign. Moreover, the Complainant has not authorized licensed, permitted, or otherwise consented to the Respondent’s use of the Complainant’s trademarks in the Domain Name and has no relationship with the Respondent.
Third, the Complainant submits that the Domain Name was registered and is being used in bad faith. In this regard, the Complainant notes that the Respondent uses on the website resolving from the Domain Name the Complainant’s former company name – “Dynamic Parcel Distribution”. Moreover, the Complainant submits that comparison of the Complainant's website and the Respondent's website shows that the Respondent reproduces the look and feel of the Complaint’s website.
Furthermore, the Complainant claims that the Respondent uses the Domain Name to resolve to a website that promotes the complementary services to those offered by the Complainant. According to the Complainant, the Respondent deliberately uses the Complainant’s trademark in order to attract Internet users for commercial gain.
The Respondent did not reply to the Complainant’s contentions. On January 19, 2021, the Respondent sent two emails inquiring about the UDRP process. In the second email, the Respondent stated that the Domain Name was registered only for remote working and was selected as an abbreviation of descriptive terms.
6. Discussion and Findings
Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements, which can be summarized as follows:
(i) the disputed 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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The requested remedy may only be granted if the above criteria are met.
At the outset, the Panel notes that the applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”. See section 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the Domain Name is identical or confusingly similar to the Complainant’s trademark rights.
The Panel reiterates that the Complainant holds several valid trademark registrations. In particular, the Complainant holds the International and EU trademarks referenced in detail in section 4 of the Decision.
In the present case, the Domain Name incorporates the Complainant’s DPD trademark in its entirety. As numerous panels have held, incorporating a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696).
As per the figurative trademarks containing word elements in which the Complainant has rights, the word element “DPD” contained in these trademarks is recognizable in the Domain Name. Pursuant to WIPO Overview 3.0, section 1.7, when a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.
The addition of “couriercompany” is insufficient to avoid a finding of confusing similarity to the Complainant’s trademark. Pursuant to WIPO Overview 3.0, section 1.8, 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.
Given the above, the Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. Thus, the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(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.
As noted above, the Complainant’s trademark registrations predate the Respondent’s registration of the Domain Name.
The Complainant has not licensed or otherwise consented to the Respondent’s use of the Complainant’s trademarks in connection with the Domain Name, which is confusingly similar to the Complainant’s registered trademarks.
The Respondent has also not submitted any evidence that it has made 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 prior to the dispute. The Respondent has also not proved that it is 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. Rather, the Respondent is using the Domain Name to resolve to a website that reproduces the look and feel of the Complainant’s primary website, thereby impersonating or misleadingly suggesting sponsorship or endorsement by the Complainant, which the Complainant has confirmed is not the case.
Although given the opportunity, the Respondent has also not submitted any evidence indicating that it is the owner of any trademark rights similar to the Domain Name or that the Respondent is or has been commonly known by the Domain Name.
Further, pursuant to section 2.5.1 of the WIPO Overview 3.0, UDRP panels have held that where a domain name consists of a trademark plus an additional term, such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner.
Given the above, the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the Domain Name. Thus, there is no evidence in the case that refutes the Complainant’s submissions. The Panel concludes that the Complainant has also satisfied the requirement under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The third requirement the Complainant must prove is that the Domain Name has been registered and is being used in bad faith.
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:
(i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided there is a pattern of such conduct; or
(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.
The Panel finds that the evidence in the record demonstrates that the Respondent chose the Domain Name deliberately for the purpose of attempting to create an association with the Complainant. It has been proven to the Panel’s satisfaction that Complainant’s trademark is well-known and the Complainant’s rights in trademarks predate the registration of the Domain Name. The Panel accepts that Respondent could not likely reasonably ignore the high reputation of the service the trademarks identify. The Respondent’s association with the courier services further supports the finding that the Respondent was or should have been aware of the Complainant’s trademarks.
The Domain Name is so obviously connected to the Complainant’s trademark and well-known services that its very use by someone with no connection with the Complainant suggests opportunistic bad faith. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000‑0163.
There is this little doubt that Respondent intended to earn profit from Internet users by creating a likelihood of confusion with the Complainant’s trademark. The likelihood of confusion in this case is greatly enhanced by the fact that the Domain Name incorporates the Complainant’s trademark DPD DYNAMIC PARCEL DISTRIBUTION in its website, which is impersonating or suggesting sponsorship or endorsement by the Complainant to offer competing services without any disclaimer or explanation regarding the relationship (or lack thereof) between the Parties. The Panel notes that the Complainant has used in the past the name “Dynamic Parcel Distribution” as its company name. Also, the wording “D.P.D” appears alone on the website.
The Panel finds that the evidence in the record demonstrates that the Respondent registered and uses the Domain Name deliberately in order to take advantage of the Complainant’s reputation and to give credibility to its operations, as the Respondent uses the Domain Name to promote the complementary services to those offered by the Complainant.
Thus, for the reasons discussed above, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark and that Complainant has proven that Respondent’s registration and use of the Domain Name was in bad faith, according to paragraph 4(a)(iii) under 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 disputed domain name <dpdcouriercompany.com> be transferred to the Complainant.
Date: March 9, 2021