WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DFDS A/S v. qin xian sheng
Case No. D2021-3708
1. The Parties
Complainant is DFDS A/S, Denmark, represented by BrandIT GmbH, Switzerland.
Respondent is qin xian sheng, Singapore.
2. The Domain Name and Registrar
The disputed domain name <wwwdfds.com> is registered with Key-Systems GmbH (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2021. On November 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 8, 2021, the Registrar transmitted by email to the Center its verification response 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 November 9, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 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 Respondent of the Complaint, and the proceedings commenced on November 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 5, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 6, 2021.
The Center appointed Phillip V. Marano as the sole panelist in this matter on January 19, 2022. 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 an international transport company that provides ferry and logistics services throughout Europe and maintains an official online presence through its <dfds.com> domain name. Complainant owns valid and subsisting registrations for the DFDS trademark in numerous jurisdictions, including the trademark for DFDS (Reg. No. 39,533,639) in Germany and DFDS (Reg. No. 353243) in the European Union with the earliest priority dating back to June 24, 1996.
Respondent registered the disputed domain name on June 20, 2021. At the time this Complaint was filed, the disputed domain name resolved to a Chinese-language website replete with pornographic images and hyperlinks to third party pornography and gambling websites.
5. Parties’ Contentions
Complainant asserts ownership of the DFDS trademark and has adduced evidence of trademark registrations in numerous jurisdictions around the world, with earliest priority dating back to June 24, 1996. The disputed domain name is confusingly similar to Complainant’s DFDS trademark, according to Complainant, because it incorporates the DFDS trademark and the addition of the letters “www” does not prevent a finding of confusing similarity.
Complainant further asserts that Respondent lacks any rights or legitimate interests in the disputed domain name based on: the absence of any license or authorization between Complainant and Respondent; the lack of any evidence that Respondent is known by the letters “dfds” or the disputed domain name; the absence of any registered third party trademark rights in the term “wwwdfds”; Respondent’s intentional typosquatting targeting Complainant’s <dfds.com> domain name and website; and Respondent’s direction of the disputed domain name to pornographic and gambling content.
Complainant argues that Respondent has registered and used the disputed domain name in bad faith for numerous reasons, including: the well-known nature of Complainant’s DFDS trademark, particularly as marketed to consumers in Asia, where Respondent resides; Respondent’s intentional typosquatting targeting Complainant’s <dfds.com> domain name and website; and Respondent’s direction of the disputed domain name to pornographic and gambling content.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
To succeed in its Complaint, Complainant must establish in accordance with paragraph 4(a) of the Policy:
i. The disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights;
ii. Respondent has no rights or legitimate interests in respect of the disputed domain name; and
iii. The disputed domain name has been registered and is being used in bad faith.
Although Respondent did not reply to Complainant’s contentions, the burden remains with Complainant to establish by a balance of probabilities, or a preponderance of the evidence, all three elements of paragraph 4(a) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3 (“A respondent’s default would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true […] UDRP panels have been prepared to draw certain inferences in light of the particular facts and circumstances of the case, e.g. where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent.”); see also The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 (“The Respondent’s default does not automatically result in a decision in favor of the Complainant. The Complainant must still prove each of the three elements required by Policy paragraph 4(a)”).
A. Identical or Confusingly Similar
Ownership of a nationally or regionally registered trademark serves as prima facie evidence that Complainant has trademark rights for the purposes of standing to file this Complaint. WIPO Overview 3.0, section 1.2.1. Complainant submitted evidence that the DFDS trademark has been registered in numerous jurisdictions with priority dating back to June 24, 1996, roughly twenty-five years before the disputed domain name was registered by Respondent. Thus, the Panel finds that Complainant’s rights in the DFDS trademark have been established pursuant to the first element of the Policy.
The only remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant’s DFDS trademark. In this Complaint, the disputed domain name is confusingly similar to Complainant’s DFDS trademark because, disregarding the “.com” generic Top-Level Domain (“gTLD”), the trademark is contained in its entirety within the disputed domain name. WIPO Overview 3.0, section 1.7 (“This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name … [I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar...”). In regards to gTLDs, such as “.com” in the disputed domain name, they are generally viewed as a standard registration requirement and are disregarded under the first element. WIPO Overview 3.0, section 1.11.
Furthermore, it is well established that domain names which consist of common, obvious or intentional misspellings of trademarks are considered to be confusingly similar for the purposes of the first element of the Policy. WIPO Overview 3.0, section 1.9 (“Examples of such typos include (i) adjacent keyboard letters, (ii) substitution of similar-appearing characters … (iii) the use of different letters that appear similar in different fonts, (iv) the use of non-Latin internationalized or accented characters, (v) the inversion of letters and numbers, or (vi) the addition or interspersion of other terms or numbers”). See e.g. Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043 (“This is clearly a ‘typosquatting’ case where the disputed domain name is a slight misspelling of a registered trademark to divert internet traffic … In fact, the domain name comprises the Complainant’s trademark … with a single misspelling of an element of the mark: a double consonant ‘s’ at the end.”) Respondent’s addition of the “www” prefix and acronym for the “world wide web” within the disputed domain name clearly fits the definition of typosquatting, attempting to capture traffic for Internet users who mistakenly omit a period and type “wwwdfds.com” directly into their browser, as numerous prior UDRP panels have recognized. See e.g.General Electric Company v. mr domains (Marcelo Ratafia), WIPO Case No. D2000-0594 (finding that the addition of the prefix “www-” in the domain names did not prevent a finding of confusing similarity).
In view of Complainant’s registration for the DFDS trademark, and Respondent’s incorporation of that trademark in its entirety in the disputed domain name, the Panel concludes that Complainant has established the first element of the Policy.
B. Rights or Legitimate Interests
Complainant must make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, shifting the burden of production on this element to Respondent to come forward with evidence demonstrating such rights or legitimate interests. Where, as in this Complaint, Respondent fails to come forward with any relevant evidence, Complainant is deemed to have satisfied the second element of the Policy. WIPO Overview, section 2.1.
There is no evidence that Respondent, identified by the Registrar as “qin xian sheng”, is commonly known by the disputed domain name or Complainant’s DFDS trademark.
Under paragraph 4(c)(iii) of the Policy, neither legitimate noncommercial use or fair use of the disputed domain name can coexist with “intent for commercial gain to misleadingly divert consumers or to tarnish the complainant’s trademark”. WIPO Overview 3.0, section 2.4. No rights or legitimate interests derive from tarnishment of another’s trademark by using it to divert Internet users to pornographic websites. See e.g. Andrey Ternovskiy dba Chatroulette v. Protection of Private Person / Aleksandr Katkov, WIPO Case No. D2017-0381 (finding the respondent’s use of the domain name <chatroulettelolz.com> to redirect Internet users to pornographic websites “should and could not be considered a bona fide offering of goods or services”); L’Oréal v. Robert Caceres, Dollarviews, WIPO Case No. D2015-1200 (finding that use of a domain name for a website displaying pornographic videos “does not constitute an example of rights and legitimate interests as per paragraph 4(c) of the Policy”); Neste Oil Oyj v. Nesin Dmitry / Privacy Protection Service INC, WIPO Case No. D2014-0883 (noting that “pornographic content of the Respondent’s website ought to be regarded as a proof of lacking right or legitimate interest”); Bayerische Motoren Werke AG v. shilin Li¸ WIPO Case No. D2021-1573 (finding no bona fide offering of goods or services or legitimate noncommercial or fair use where “[r]espondent is currently using the disputed domain name on a webpage featuring pornographic and gambling content”).
In view of, the lack of any evidence supporting any Respondent rights or legitimate interests in the disputed domain name, and Respondent’s attempts to misdirect Internet users to pornographic website content and gambling services by trading off the goodwill of Complainant’s DFDS trademark, the Panel concludes that Complainant has established the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy proscribes the following non-exhaustive circumstances as evidence of bad faith registration and use of the disputed domain name:
i. Circumstances indicating that Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out of pocket costs directly related to the disputed domain name; or
ii. Respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
iii. Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
iv. By using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The act of “typosquatting” or registering a domain name that is a common misspelling of a mark in which a party has rights has often been recognized as evidence of bad faith. WIPO Overview 3.0, section 3.2.1 (“Particular circumstances UDRP panels take into account in assessing whether the respondent’s registration of a domain name is in bad faith include: (i) the nature of the domain name (e.g., a typo of a widely known mark …”). See also Paragon Gifts, Inc. v. Domain.Contact, WIPO Case No. D2004-0107 (citing National Association of Professional Baseball Leagues, d/b/a Minor League Baseball v. Zuccarini, WIPO Case No. D2002-1011); ESPN, Inc. v. XC2, WIPO Case No. D2005-0444 (finding that the practice of “typosquatting” is evidence of bad faith). The Panel concurs with this approach. It is evident that Respondent registered and used the typosquatted disputed domain name to intentionally attract, for commercial gain, Internet users to the website linked to disputed domain name in a manner that confuses and misleads Internet users. Thus, the Panel infers Respondent’s bad faith based on the fact that the Respondent is trying to gain profit of mistakes such as typographical errors made by Internet users, when inputting the disputed domain name <wwwdfds.com> into a web browser instead of the “www.dfds.com” URL for Complainant’s official website.
Furthermore, the use of a domain name to tarnish a complainant’s trademark, including for commercial purposes in connection with pornographic content, constitutes evidence of a respondent’s bad faith. WIPO Overview 3.0, section 3.12. See Red Bull GmbH v. Whois Agent, Domain Protection Services, Inc. / esco escortlar, escort sitesi, WIPO Case No. D2017-1639 (finding the respondent’s use of the domain for a pornographic website constituted “a strong indication of bad faith registration and use”, because it showed respondent’s main purpose was “to create a likelihood of confusion among customers and/or to tarnish the Complainant’s RED BULL trademark for commercial gain or any other illegitimate benefit”); Bank of Jerusalem Ltd. v. Shek Cheung Chung, WIPO Case No. D2017-1153 (finding bad faith where the domain resolved to a website “at which adult content and links to websites at which pornographic contact [was] being offered, tarnishing Complainant and its trademark, and for which Respondent [was] likely receiving commercial gain”).
In view of Respondent’s typosquatting on Complainant’s DFDS trademark, as well as Respondent’s tarnishment of Complainant’s DFDS trademark in connection with pornographic and gambling website content, the Panel concludes that Complainant has established the third element 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 disputed domain name, <wwwdfds.com>, be transferred to Complainant.
Phillip V. Marano
Date: February 9, 2022