Complainant is DPDgroup International Services GmbH & Co. KG, Germany, represented by Fidal, France.
Respondent is Dealer Sub, DealerSub, United States of America.
The disputed domain name <dpdtrackers.com> is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2021. On March 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 16, 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 March 23, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on March 23, 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 Respondent of the Complaint, and the proceedings commenced on March 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 15, 2021. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 19, 2021.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on April 30, 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.
Complainant, DPDgroup International Services GmbH & Co. KG, is one of the world’s largest parcel delivery networks, providing its services since it was founded in 1976, in Aschaffenburg, Germany. The company is owned by La Poste, one of the largest postal groups in Europe.
Today, the company owns 42 offices throughout every continent, and has a team with over 97,000 delivery experts, which move a total of 7,5 million parcels each day through more than 58,000 pickup points. The goal of Complainant’s business is to be a reference on commerce acceleration and sustainable delivery.
In light of the above, considering the valuable goodwill and reputation achieved by DPDgroup, Complainant has filed several International trademark registrations – for services related to financial affair,investment, capital management and wealth / asset management – to ensure company’s rights over the exclusive use of the brand. Some examples are listed below:
|
Registration Date |
Registration Number |
Trademark |
Owner |
|
May 26, 2001 |
International Registration n° 761146 |
|
DPDGROUP INTERNATIONAL SERVICES GMBH & CO. KG |
|
March 28, 2014 |
International Registration n° 1217471 |
|
DPDGROUP INTERNATIONAL SERVICES GMBH & CO. KG |
|
August 25, 2015 |
International Registration n° 1271522 |
|
DPDGROUP INTERNATIONAL SERVICES GMBH & CO. KG |
It is also important to note that Complainant (directly or through entities of the same group of companies) is the owner of several domain names containing the abbreviation “dpd”, including the domain name <dpd.com>, which Complainant owns since March 20, 1991. Meanwhile, the disputed domain name <dpdtrackers.com> was registered by Respondent on December 25, 2020 – many years after the registration of Complainant’s trade name, domain name <dpd.com> and trademarks. The homepage of the website hosted by the disputed domain name reproduces Complainant’s trademark.
Complainant submits that the disputed domain name <dpdtrackers.com> is confusingly similar to its registered trademark DPD, as well as with its registered domain <dpd.com>. This is because the disputed domain name incorporates the sign DPD in its entirety and, therefore, will likely be associated with the mentioned trademark regardless the existence of the term “trackers” upon the abbreviation “dpd” in the disputed domain name.
In this regard, Complainant argues that the addition of the word “trackers” after its trademark in the disputed domain name would be insufficient to avoid a finding of confusing similarity. Complainant affirms, thus, that any Internet user when visiting the website provided under the disputed domain name <dpdtrackers.com> will reasonably expect to find a website related to Complainant’s business, fulfilling paragraph 4(a)(i) of the Policy and paragraph 3(b)(viii), (b)(ix)(1) of the Rules.
Furthermore, Complainant affirms that Respondent does not have any rights or legitimate interests in respect of the trademark DPD nor any permission to register the trademark as a domain name.
This is because Respondent is not commonly known by the name “dpdtrackers.com” and is neither acting in a bona fide offer of product or services. Moreover, Complainant affirms that Respondent has no rights to the sign DPD since it does not own a business name or a trademark registration composed by the abbreviation “dpd”.
Therefore, Respondent would be deliberately trying to create confusion with Complainant’s business, which shows the illegitimate nature of Respondent’s interest on the disputed domain name, also fulfilling paragraph 4(a)(ii) of the Policy and paragraph 3(b)(ix)(2) of the Rules.
At last, Complainant states that the domain name <dpdtrackers.com> was registered and is being used in bad faith. This is due to the fact that the homepage of the website hosted by the disputed domain name reproduces Complainant’s trademark with no authorization, as well as its graphic layout and aesthetics composed by the colors red and grey, squared forms in black, etc., which can lead Internet users to confusion, disrupting Complainant’s business. This way, Respondent would be taking undue advantage of Complainant’s credibility to scam and phish operations, which is a fraudulently use of the disputed domain name, fulfilling the terms of paragraph 4 (a)(iii) of the Policy and paragraph 3(b)(ix)(3) of the Rules.
Respondent did not reply to the Complainant’s contentions.
To succeed in a UDRP complaint, complainants must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied, as following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(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.
The burden of proving these elements is upon Complainant.
Respondent had 20 days to submit a response in accordance with paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if a respondent does not respond to the Complaint, the Panel’s decision shall be based upon the Complaint.
Complainant demonstrated that it owns International trademark registrations for DPD.
The Panel finds that, in the present case, the disputed domain name <dpdtrackers.com> does not only incorporates the entirety of Complainant’s trademark DPD, but it is also followed by the term “trackers”, which is related to courier and delivery service and, thus, alludes to Complainant’s business. The addition of the term “trackers” after the trademark DPD in the disputed domain name would not prevent a finding of confusing similarity under the first element.
Thus, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark and that the requirement of the first element of paragraph 4(a) of the Policy is satisfied.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) as follows: “[w]hile 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 domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
In this case, noting the facts and contentions listed above, the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests, so the burden of production shifts to Respondent. As Respondent has not replied to Complainant’s contentions, that burden has not been discharged, and the Panel has considered Complainant’s unrebutted prima facie case to be sufficient to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name <dpdtrackers.com>.
Therefore, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)).
Paragraph 4(b) of the Policy lists a number of circumstances that, without limitation, are deemed evidence of the registration and use of a domain name in bad faith. Those circumstances include: “(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
Firstly, the Panel finds that it is high unlikely that Respondent had no knowledge of Complainant’s rights to the trademark DPD at the time of registration of the disputed domain name, especially because Complainant is a well-known firm providing post services, which is a restricted and specific field, and that its inception and fame in the market predate the registration of the disputed domain name by Respondent. In this sense, by a quick Google search on the letters “dpd”, the first result shown is DPDgroup International Services’ official website, followed by a Wikipedia page on the Complainant’s business.
The Panel notes that the disputed domain name reproduces Complainant’s trademark DPD in its entirety along with the term “trackers”. The addition of the term “trackers”, specifically, may lead consumers to easily associate the disputed domain name <dpdtrackers.com> with Complainant and its services provided under the trademark DPD.
With regards to the content of the page hosted by the disputed domain name <dpdtrackers.com>, the Panel points out that such page is described as “DPD shipment tracking system”, which proposes to track the packages delivered by DPD. In addition, Respondent uses with no authorization Complainant’s DPD’s logo and visual identity in its website, making evident its intention of causing a misleading association with Complainant when registering and using the disputed domain name.
Secondly, the Panel notes that Complainant’s trademark DPD was first registered in 1993, while the disputed domain name <dpdtrackers.com> was registered by Respondent only in 2020.
Therefore, the evidence shows that Respondent was aware of Complainant’s rights to the trademark DPD at the time of registration of the disputed domain name and, when using the trademark DPD as the distinctive parcel of the disputed domain name <dpdtrackers.com>, was trying to attract DPD’s customers to its website by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of it.
Lastly, in conjunction with all the above mentioned, the Panel notes that the fact that Respondent did not present a response to the Complaint reinforces the conclusion that Respondent acted in bad faith.
Accordingly, the Panel concludes that the disputed domain name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy. As such, the Panel finds that Complainant has satisfied 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 disputed domain name <dpdtrackers.com> be transferred to Complainant.
Gabriel F. Leonardos
Sole Panelist
Date: May 14, 2021
