The Complainant is DHL International GmbH of Bonn, Germany, represented by Jonas Rechtsanwaltsgesellschaft mbH, Germany.
The Respondent is DHL, Ecommerce Admin1 of Kent, United Kingdom of Great Britain and Northern Ireland (the “UK”).
The disputed domain name <dhlcommerce.com> is registered with eNom (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2015. On June 9, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 9, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 16, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 6, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 7, 2015.
The Center appointed Nicolas Ulmer as the sole panelist in this matter on July 15, 2015. 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.
The Complainant is a German-headquartered international company and an acknowledged leader in the global express delivery, freight and logistics industry. The Complaint and its annexes list dozens of trade mark registrations of the Complainant and its affiliates for DHL either alone or with other elements, in numerous classes and in all parts of the world, including Germany, the European Union, the United States of America and the UK. The Complainant and its affiliates are also the owners of many domain names incorporating their DHL name and trademark, such as <dhl-usa.com>, <dhl.de> and <dhl.co.uk>.
As explained below, the Respondent may be connected with the English company “Sitewizard Ltd.”.
The disputed domain name was registered on December 10, 2010, and is apparently inactive.
The Complainant first points out that it appears that the Respondent in this case is identical or at least connected to the Respondent in the recently completed case of DHL International GmbH v. Support Sitewizard, Sitewizard Ltd., WIPO Case No. D2015-0180 (hereinafter Sitewizard), with Mr. Richard Ells and Mr. Adrian Reeves communicating with the Complainant or acting for the Respondent in both cases. In support of this contention the Complainant annexes the Response in Sitewizard, where the Respondent in that case admitted that “the domain names dhlecommerce and dhlcommerce were both registered by Sitewizard on 2010-12-10.” As the first of these domain names was transferred to the Complainant by the Sitewizard decision, and the second is the disputed domain name in this case the Complainant suggests that the Sitewizard result and reasoning are fully applicable here.
The Complainant goes on to contend that: the disputed domain name is obviously confusingly similar to its very well-known business name and numerous trademarks and that the addition of the word “commerce” to DHL does nothing to diminish this similarity; that the Respondent was never given any license or right to use the DHL trademarks and is not known by the disputed domain name and has no rights or legitimate interests in such name; and that given the notoriety and fame of DHL the disputed domain name can only have been registered in bad faith. As to bad faith use the Complainant does not allege active use of the disputed domain name by the Respondent but, rather, argues that these are circumstances such that “no other action, aside from registering the [famous] domain name is required for demonstrating bad faith.” DHL Operations B.V. v. Ali Kazempour, WIPO Case No. D2004-1094; accord Sitewizard. As further evidence of bad faith use the Complainant cites and annexes the response Mr. Ells submitted to the Complainant’s May 19, 2015 email demanding transfer of the disputed domain name, as indicative that the Respondent was in bad faith seeking compensation for the disputed domain name. That response reads, in pertinent part: “since your email, rather rudely, suggests we should hand over this without any form of compensation, I am, sadly, forced to ask you to submit a UDRP proceeding […]”.
The Complainant asks that the disputed domain name be transferred to it.
The Respondent did not reply to the Complainant’s contentions.
The disputed domain name leads with and entirely reproduces the Complainant’s well-known trademark DHL, with the addition of the word “commerce”. The addition of the descriptive or generic term “commerce” does little or nothing to diminish the evident confusing similarity with the Complainant’s trademarks and may even add to it, as the Complainant and its DHL affiliates are involved in and identified with commerce.
Accordingly, the Complainant has met its burden under paragraph 4(a)(i) of the Policy.
A complainant needs to establish at least a prima facie case showing that the respondent has no rights or legitimate interests in respect of the disputed domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Once such a prima facie case is made, the burden shifts to the respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. See also, Meizu Technology Co., Ltd. v. “osama bin laden”, WIPO Case No. DCO2014-0002; H & M Hennes & Mauritz AB v. Simon Maufe, Akinsaya Odunayo Emmanuel and Nelson Rivaldo, WIPO Case No. D2014-0225.
In the present case the Complainant has clearly asserted that it has never given permission to the Respondent to use its trademarks in the disputed domain name or otherwise, that there it has no business relationship or affiliation with the Respondent, and that it has no knowledge or belief of any legitimate interests or rights of the Respondent in the disputed domain name.
Furthermore, nothing in the file for this matter suggests that the Respondent has any legitimate interest or right in the disputed domain name, or that it is known by such a name.
The Respondent having failed to answer the Complaint, the Complainant has accordingly met its burden under paragraph 4(a)(ii) of the Policy
The Complaint well-establishes the world-wide notoriety and well-known status of the Complainant’s DHL trademark; it is not plausible that the disputed domain name was chosen serendipitously and without knowledge of the Complainants rights and business. The Panel finds that the registration of the disputed domain name was in bad faith.
While there is no evidence of active use of the disputed domain name it is well established since the Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (hereinafter “Telstra”) case that the passive holding of a domain name registered in bad faith may constitute bad faith use within the meaning of the Policy. This was the conclusion in the analogous Sitewizard decision, cited above, and the Panel comes to the same conclusion here. More generally, the Panel agrees with the Complainant’s pleading that the concatenation of proven factors here, including the incorporation of a famous trademark in two domain names on the same day, with one of these already having been ordered transferred to the Complainant in the Sitewizard case, shows the lack of any plausible, actual or contemplated use of the disputed domain name that would not be illegitimate.
The Panel further notes that the Respondent’s registration of the disputed domain name under the “DHL, Ecommerce Admin” name appears as a bad faith attempt to pass off as the Complainant, and that the Respondent is not actually known by that name.
The Respondent’s behaviour in replying to the Complainant’s demand to transfer the disputed domain name, as described above, may constitute a bad faith attempt to obtain payment for the disputed domain name in excess of legitimate expenses; but that response is somewhat ambiguous, possibly deliberately so. It can, however, be affirmed that the response, which the Respondent made with knowledge of the Sitewizard decision, in no way provides any good faith explanation for the Respondent’s conduct, and the Panel does not see one. .
For all of the foregoing reasons the Panel finds that the disputed domain name has been registered and used in bad faith.
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 <dhlcommerce.com> be transferred to the Complainant.
Nicolas Ulmer
Sole Panelist
Date: July 27, 2015
1 As indicated by the WhoIs administrative contact details and explained below, the Respondent may be also known as “Sitewizard Ltd.”