WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

DPDgroup International Services GmbH & Co. KG v. Whois Guard Protected, WhoisGuard Inc. / Kaza Baza

Case No. D2019-2184

1. The Parties

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

The Respondent is Whois Guard Protected, WhoisGuard Inc., Panama / Kaza Baza, France.

2. The Domain Name and Registrar

The disputed domain name <dpd-delivery.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 6, 2019. On September 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 9, 2019, 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 September 10, 2019, 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 September 11, 2019.

The Center verified that the Complaint, together with the amendment of 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 16, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 6, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 14, 2019.

The Center appointed Geert Glas as the sole panelist in this matter on October 18, 2019. 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, DPDgroup International Services GmbH & Co. KG, is a German company offering parcel delivery services.

The Complainant owns a substantial portfolio of national, European and international trademarks that include the letters “DPD”. Among others, the Complainant registered the following international trademarks:

International Trade Mark DPD, registration no. 761146 registered on May 26, 2001 in classes 36, and 39;

International Trade Mark DPD, registration no. 1214203 registered on March 12, 2014 in classes 9, 16, 35, 39 and 42; and

International Trade Mark DPD, registration no. 1217471 registered on March 28, 2014 in classes 9, 16, 35, 39 and 42.

The Complainant also owns the domain name <dpd.com>, which it registered on March 20, 1991 as well as a series of other domain names including the terms “dpd” or “dpd-group”.

The Registrar’s WhoIs database shows that the disputed domain name <dpd-delivery.com> (the “Domain Name”) was first registered on July 2, 2019. The Registrar’s WhoIs database does not indicate the identity of the Respondent, hiding behind the shield of a privacy service. Upon request from the Center, the Registrar identified the Respondent as being Kaza Baza on September 9, 2019.

It appears from the screenshot attached as an exhibit to the Complaint that the Domain Name resolved to a website on which a company named DPD Escrow & Delivery Services offered escrow and delivery services. The following logo is reproduced on the website:

Prior to the filing of the Complaint, the Complainant sent several emails to the Respondent, which would have remained unanswered.

5. Parties’ Contentions

A. Complainant

The following is a summary of the Complainant’s contentions.

The Complainant requests that the Domain Name be transferred to it on the following grounds:

(i) the Domain Name is confusingly similar to a trademark or service mark in which the Complainant has rights

The Complainant contends that the addition of “delivery” to its DPD trademark is not sufficient to distinguish the Domain Name from the Complainant’s DPD trademark. On the contrary, the Complainant affirms that such addition would actually heighten the confusion of potential Internet users since the Complainant’s main business activity revolves around delivery services.

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name since the Respondent (i) is not commonly known by the Domain Name, (ii) has not been authorised by the Complainant to use the DPD trademark, (iii) has no affiliation or connection with the Complainant and (iv) is not using the Domain name in connection with a bona fide offering of goods or services. The Complainant contends that this last element is supported by the fact that the Respondent is using the Domain Name to deliberately create confusion with the Complainant’s business.

The Complainant also contends that the Respondent’s lack of rights or legitimate interest in respect of the Domain Name is further evidenced by the fact that, prior to filing the present complaint with the Center; the Complainant sent several emails to the Respondent which remained unanswered.

(iii) The Domain Name was registered and is being used in bad faith.

The Complainant contends that the webpages to which the Domain Name resolves reproduce some of the Complainant’s device trademarks (i.e., the above mentioned international trademarks No. 1214203 and No.1217471) as well as the look and feel of the Complainant’s website.

The Complainant therefore contends that the Respondent has built a very confusing imitation of the Complainant’s website in order to take advantage of the Complainant’s reputation and scam Internet users.

The Complainant adds that various persons having ordered services on the website to which the Domain Name resolves have paid for services, which were never performed.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated that it is the owner of numerous international, European and national trademarks, which satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2).

The Domain Name incorporates the Complainant’s DPD trademark in its entirety followed by a hyphen and the word “delivery”.

Several UDRP panel decisions have stated that wholly incorporating a complainant’s registered trademark in a domain name may be sufficient to establish confusing similarity even when another term is added to the trademark (See, e.g., GA Modeline S.A v. Mark O’Flynn, WIPO Case No. D2000-1424; Viacom International Inc. v. Erwin Tan, WIPO Case No. D2001-1440; and eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307).

Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) do not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements (See WIPO Overview 3.0, section 1.8).

Accordingly, the Panel finds that the first element under paragraph 4(a)(i) of the Policy has been established.

B. Rights or Legitimate Interests

Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, the consensus view is that, once the complainant has made a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy (See e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Dow Jones & Company, Inc., (First Complainant) and Dow Jones LP (Second Complainant) v. The Hephzibah Intro-Net Project Limited (Respondent), WIPO Case No. D2000-0704 and the WIPO Overview 3.0, section 2.1).

The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.

Indeed, based on the evidence submitted by the Complainant, the Panel finds that there is no evidence that the Respondent (i) has made a legitimate noncommercial use of the Domain Name, (ii) has used the Domain Name in relation with a bona fide offering of goods and services or (iii) has been authorised by the Complainant to use the DPD trademark and (iv) has been commonly known by the Domain Name.

Given that the Respondent did not reply to the Complainant’s contentions and did not present any plausible explanation for its use of the Complainant’s DPD trademark, the Panel considers that the Complainant has satisfied its burden of proof under this element of the Policy.

Accordingly, the Panel finds that the second element under paragraph 4(a) (ii) of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel turns to the question of whether the Domain Name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy describes some circumstances which, if found to exist, will be evidence of the registration and use of the domain name in bad faith. They are presented in the alternative and consist of a not exhaustive list of circumstances of bad faith:

(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s 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 the respondent’s website or location or of a product or service on the respondent’s website or location.

(a) Registered in bad faith

The Complainant has been benefitting from trademark protection on the DPD trademark for almost two decades.

As noted in a previous panel decision: “The Complainant’s DPD mark is not a common abbreviation or combination of letters and as a result enjoys a level of distinctiveness in relation to the services for which it is used by the Complainant” (See DPDgroup International Services GMBH & Co. KG v. Eden Crowin, already cited). Considering that the Respondent chose to register a domain name composed of this distinctive combination of letters and the word “delivery” which corresponds to the Complainant’s main activity, the Panel is of the opinion that the Respondent could not have been unaware of the DPD trademark and of the Complainant’s rights in this trademark when registering the Domain Name.

(b) Used in bad faith

It appears from a screenshot attached as an exhibit to the Complaint that the Domain Name was used for a website offering escrow and delivery services on which the Complainant’s device DPD trademark and the look and feel of its website were reproduced. For this reason, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s 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 the Respondent’s website (See e.g., Groupe Partouche v. Madarin Data LTD, Pousaz Raymond, WIPO Case No. D2010-1649; Claudie Pierlot v. Yinglong Ma, WIPO Case No. D2018-2466; Caterpillar, Inc. v. Dirk Dohmen, WIPO Case No. D2016-0138). Moreover, the Panel finds that the addition of the word “delivery” to the Domain Name serves to heighten potential Internet user confusion with the Complainant’s services.

Consequently, the Panel finds that the Respondent registered and used the Domain Name in bad faith.

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-delivery.com> be transferred to the Complainant.

Geert Glas
Sole Panelist
Date: November 1, 2019