WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

DPDgroup International Services GmbH & Co. KG v. Privacy service provided by Withheld for Privacy ehf / Francesco Manuelle Motta

Case No. D2021-2576

1. The Parties

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

The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Francesco Manuelle Motta, Spain.

2. The Domain Name and Registrar

The disputed domain name <dpd-parcels.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 August 9, 2021. On August 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 9, 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 August 12, 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 August 12, 2021.

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 September 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 23, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 29, 2021.

The Center appointed Mathias Lilleengen as the sole panelist in this matter on October 8, 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 large parcel delivery network with some 32,000 pickup points in 230 different countries.It has been operating since 1977.

The Complainant owns numerous trademark registrations that incorporate DPD, such as International trademark n° 1214203 registered on March 12, 2014 and International trademark n° 1217471 registered on March 28, 2014. The Complainant has also several domain names registered, such as <dpd.com> and <dpd.asia>.

The Domain Name was registered on May 9, 2021. At the time of the Complaint, and the time of drafting the Decision, the Domain Name resolved to a website that reproduces the trademark and the graphic layout of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant provides evidence of trademark registrations. The Complainant argues that the Domain Name is confusingly similar to the trademark DPD. The addition of “parcels” does not distinguish the Domain Name from the Complainant’s DPD trademark. It merely serves to heighten potential confusion.

The Respondent is not authorized to use the Complainant’s trademark. The Respondent is not commonly known by the Domain Name. To the Complainant’s knowledge, the Respondent holds no intellectual property rights in DPD. In addition, the Respondent cannot claim any use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. On the contrary, the Respondent is deliberately creating confusion by reproducing on the Respondent’s webpage - without authorization - the Complainant’s trademark.

The Complainant argues that the Respondent was aware of the Complainant’s activity and trademark, due to the Respondent’s use of the Domain Name. The Respondent’s webpage reproduces the Complainant’s trademark and graphic layout. The Respondent tries to create a likelihood of confusion with the Complainant’s trademark to attract Internet users to believe that there is an affiliation between the Complainant and the Respondent’s website operated under the Domain Name, in order to give credibility to scam and phishing operations.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has established that it has rights in the trademark DPD.

The test for confusing similarity involves the comparison between the trademark and the Domain Name. The Complainant’s DPD trademark is recognizable in the Domain Name. The addition of “-parcels” does not prevent a finding of confusing similarly between the Domain Name and the Complainant’s DPD trademark. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

For the purpose of assessing under paragraph 4(a)(i) of the Policy, the Panel may ignore the generic Top-Level Domain (“gTLD”) “.com”, see WIPO Overview 3.0, section 1.11.

The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register the Domain Name or otherwise make use of its trademark. There is no evidence that the Respondent has registered the Domain Name as a trademark or acquired unregistered trademark rights. The Respondent cannot establish rights in the Domain Name, as it has not made use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering. The Respondent’s use of the Domain Name is not bona fide. On the contrary, the Respondent has deliberately tried to create confusion by reproducing the Complainant’s trademark and graphic elements on the Respondent’s webpage.

The Panel finds that the Complainant has made out an unrebutted case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

As explained above, on the Respondent’s webpage, the Respondent reproduces without authorization the Complainant’s trademark and graphic layout. Therefore, the Respondent must have been aware of the Complainant when the Respondent registered the Domain Name. The Panel agrees with the Complainant that the Respondent has tried to create a likelihood of confusion with the trademark to mislead Internet users to believe that there is an affiliation between the Complainant and the Respondent’s website operated under the Domain Name. As the Complainant is a parcel delivery network, the addition of “-parcels” does not distinguish the Domain Name from the Complainant, it increases the likelihood of confusion. Moreover, the Respondent has not provided any evidence of actual or contemplated good faith use.

For the reasons set out above, the Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of paragraph 4(a)(iii) of the Policy.

7. Decision

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-parcels.com> be transferred to the Complainant.

Mathias Lilleengen
Sole Panelist
Date: October 20, 2021