WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

DFDS A/S v. Private by Design, LLC / Han Zhiyu

Case No. D2021-3841

1. The Parties

The Complainant is DFDS A/S, Denmark, represented by BrandIT GmbH, Switzerland.

The Respondent is Private by Design, LLC / Han Zhiyu, United States of America.

2. The Domain Name and Registrar

The disputed domain name <dfds.live> is registered with Porkbun LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2021. On November 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 18, 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 the Complainant on November 22, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On November 23, 2021, the Respondent sent an informal email communication to the Center (stating “why you are sending me such a message”). The Complainant requested a suspension of the proceeding on December 2, 2021, on which date the Center informed the Parties that the proceeding was suspended until January 2, 2022. On December 28, The Complainant requested reinstitution of the proceeding and submitted an amended Complaint. Further to the Complainant’s request, the proceeding was reinstituted as of December 29, 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 December 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 18, 2022. On December 30, 2021, the Respondent sent three informal email communications to the Center (in effect asking what the case was about). The Respondent did not submit any formal response. On January 19, 2022, the Center notified the Parties that it would proceed to panel appointment.

The Center appointed Jane Seager as the sole panelist in this matter on January 31, 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

Founded in 1866 through a merger of four Danish steamship companies, the Complainant DFDS A/S (Det Forenede Dampskibs-Selskab, Aktieselskab) is an international transport company, providing ferry and logistics services. The Complainant’s operations include two commercial divisions – the ferry division, moving freight and passengers across Europe, and the logistics division, providing transport and logistics solutions for a wide range of businesses.

The Complainant is the owner of a number of trademarks for DFDS, including but not limited to the following:

- European Union Trade Mark No. 000353243, DFDS, registered on October 26, 1998;

- International Trademark Registration No. 897881, DFDS, registered on October 7, 2005, designating Armenia, Azerbaijan, Belarus, Georgia, Kyrgyzstan, Moldova, Norway, the Russian Federation, Turkmenistan, Turkey, Ukraine, and Uzbekistan.

The Complainant is also the owner of various domain names comprising its DFDS trademark, including <dfds.com>, from which it operates its main website.

The disputed domain name was registered on January 24, 2021. The disputed domain name does not appear to have been used in connection with an active website, and was inactive at the time that the Complaint was submitted to the Center.

On April 7, 2021, the Complainant attempted to send a cease-and-desist letter to the Respondent via the Registrar’s contact form for contacting the registrant, and via the Registrar itself. The Respondent did not reply to the Complainant’s cease-and-desist letter, or subsequent reminders. On December 2 and 8, 2021, the Complainant sent emails to the Respondent, to attempt settling the case. On December 3 and 8, 2021, the Respondent replied: “Hello, I received your request, I checked my domain name, but did not find this domain name” and “Hello, I received your letter and you also responded, but in fact I did not register this domain name, please let me know” (annex D to the Complaint).

5. Parties’ Contentions

A. Complainant

The Complainant asserts rights in the trademark DFDS, and submits that the disputed domain name is identical to its trademark.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant asserts that it has never granted any licence or authorization to the Respondent to register or use the disputed domain name. The Complainant argues that the Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services, nor is the Respondent commonly known by the disputed domain name. The Complainant submits that the composition of the disputed domain name, combining the Complainant’s trademark DFDS with the generic Top‑Level Domain (“gTLD”) “.live” reflects the Respondent’s intention to create an association, and a subsequent likelihood of confusion, with the Complainant and its DFDS trademark in Internet users’ minds.

The Complainant further argues that the disputed domain name was registered and is being used in bad faith. The Complainant asserts that the trademark DFDS is distinctive and widely known, and that the composition of the disputed domain name indicates that the Respondent registered the disputed domain name having the Complainant’s trademark in mind. The Complainant further submits that the disputed domain name is passively held by the Respondent, in bad faith.

B. Respondent

On November 23, 2021, prior to the Center’s formal notification of the Complaint to the Respondent, the Respondent sent an informal email communication to the Center stating “Hello, I want to know why you are sending me such a message?”

On December 30, 2021, the Respondent sent three informal email communications to the Center, which stated, in turn:

“Hello, this looks very serious, I don’t know what mistake I made, what should I do? Please sue me?”

“Who am I being sued, and why am I being sued? Because I did not break any laws?”

“What is the problem that caused me to be sued? What am I because of? I asked you about this question many times, but I never got a reply”

The Respondent did not submit a substantive response to the Complainant’s contentions.

6. Discussion and Findings

In order to prevail, the Complainant must demonstrate, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the Policy:

(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 respect of the disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the trademark DFDS. Registration details of selected trademarks owned by the Complainant are set out in the factual background section above.

The disputed domain name includes the Complainant’s DFDS trademark in its entirety, without addition or alteration, under the gTLD “.live”.

It is well established that the applicable Top-Level Domain is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.

The Panel finds that the disputed domain name is identical to the Complainant’s trademark. The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element; see WIPO Overview 3.0, section 2.1.

As noted above, the disputed domain name does not resolve to an active website. There is no evidence of the Respondent having made any active use of the disputed domain name whatsoever. Nor has the Respondent come forward with any evidence of demonstrable preparations to use the disputed domain name in connection with any bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.

The Respondent registered the disputed domain name using a privacy service. The underlying registrant of the disputed domain name has been revealed as “Han Zhiyu”, whose name bears no resemblance to the disputed domain name. There is no evidence of the Respondent having made use of the disputed domain name in such a manner that would give rise to any legitimate claim of being commonly known by the disputed domain name pursuant to paragraph 4(c)(ii) of the Policy. Nor can the Respondent be said to have made any legitimate noncommercial or fair use of the disputed domain name as contemplated by paragraph 4(c)(iii) of the Policy. The Panel further notes that the Respondent has not attempted to assert that the disputed domain name was registered as an acronym; see WIPO Overview 3.0, section 2.10.2.

The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has failed to produce relevant evidence to rebut the Complainant’s prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant’s rights in the trademark DFDS substantially predate the Respondent’s registration of the disputed domain name. The Complainant has provided evidence of its longstanding international use of the trademark DFDS. A mere cursory search in any reputable Internet search engine would reveal that the letters “DFDS” are widely associated with the Complainant. The Panel infers that the Respondent knew or should have known of the Complainant’s rights in the trademark DFDS, and proceeded to register the disputed domain name, without authorization to make use of the Complainant’s trademark in a domain name or otherwise, in bad faith.

As noted above, the disputed domain name does not resolve to an active website, and does not appear to have been used for any other purpose by the Respondent. It is well established that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the disputed domain name may be put; see WIPO Overview 3.0, section 3.3; see also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Panel finds that all of the above-listed factors are applicable in the present case:

(i) The Complainant’s trademark DFDS is a coined term, without any apparent descriptive meaning, that enjoys international recognition in association with the Complainant’s transport services.

(ii) Despite having been duly notified of the Complaint and the nature of the present proceeding (and communicating with the Center and the Complainant, in some cases disclaiming knowledge of the disputed domain name), the Respondent has not come forward with any evidence of actual or contemplated good-faith use of the disputed domain name.

(iii) The Respondent registered the disputed domain name using a privacy service, and the Complainant has produced evidence indicating that the underlying registrant details appear to include a false or inaccurate street address.

(iv) In light of the identity between the disputed domain name and the Complainant’s trademark, and noting the Respondent’s failure to produce any evidence of actual or planned bona fide use of the disputed domain name, there is no evidence of any good-faith use to which the disputed domain name could be put by the Respondent that would not create some degree of confusion with the Complainant’s trademark.

For reasons set out above, the Panel finds that the disputed domain name was registered and is being used in bad faith. The Complainant has satisfied the requirements 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 disputed domain name <dfds.live> be transferred to the Complainant.

Jane Seager
Sole Panelist
Date: February 14, 2022