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Дела по доменам общего пользования
Дела по национальным доменам
and Mediation Center
DHL Operations B.V v. Net Marketing Group
Case No. D 2005-0868
The Complainant is DHL Operations B.V, Amsterdam, Netherlands, represented here by Linklaters Oppenhoff & Radler of Cologne, Germany.
The Respondent is Net Marketing Group, Derty CT, United States of America.
2. The Domain Name and Registrar
The disputed domain name, <wwwdhl.com>, is registered with eNom Inc,
Belleveue, Washington, United States of America.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center, (“The Center”) on August 16, 2005, On August 16, 2005, the Center transmitted by email to eNom a request for Registrar verification in connection with the domain name at Issue. On August 17, 2005, eNom transmitted its response confirming that the contact information for the domain name is available at the website “http://whois.enom.com” and that the domain name shall be locked during the proceedings.
The Center verified that the complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“The Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy and the WIPO Supplemental rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental rules”).
In accordance with the Rules paragraphs 2(a) and 4 (a), the Center notified the Respondent of the Complaint on August 22, 2005. In accordance to paragraph 5 (a) of the due date of the Respondents response was September 11, 2005. The Respondent did not submit any response within the stipulated time and the Center notified the Respondent’s default on September 15, 2005.
The Center appointed Harini Narayanswamy as the sole Panelist in this matter
on October 6, 2005. The Panel finds it was properly constituted. The Panel has
submitted the Statement of Acceptance and Declaration of Impartiality and Independence,
as required by the Center in compliance with the Rules paragraph 7.
4. Factual Background
The Complainant is “DHL Operations B.V”. The company was registered, by the “Kamer van Koophandel” Amsterdam in the year 1979. Its core business is international transportation of documents and goods.
The Complainant states that it merged with one of the largest enterprises in the German Federal Republic, ‘Deusche Post AG’. Since April 1, 2003, ‘Danzas’, ‘Deutsche Post Euro Express’ and ‘DHL’ have been integrated under the repositioned DHL brand, which is one of the major logistics brands worldwide. It also claims to be one of the world’s largest express providers, involved in supply logistics, warehousing, distribution logistics, global airfreight and ocean freight, project freight forwarding and European overland transport services.
The Complainant is the holder of numerous trademarks worldwide, which contain only the designation DHL or include it as a significant component of the trademark. The Complainant has provided details of its trademark Registrations in Germany, UK, USA, Australia, European and other International Registrations.
In addition to the registered trademarks, the Complainant and its major subsidiaries owns the following among other domain names: <dhl.com>, <dhl.co.uk>, and <dhlairborne.com>. In nearly every country of the world the Complainant states it has business locations. In the USA in particular, the country of the Respondent, the Complainant has a significant presence.
The Complainant states that its yellow trucks and aircrafts with the DHL trademark is well known the world over, as they are used to transport and deliver millions of mailings and parcels throughout the world.
The Domain name <wwwdhl.com> was created on April 29, 2000. The Net Marketing
Group, Derty, is shown as the present registrant of the domain name. The Whois
contact details also displays the text “Domain Avail for Sale”.
5. Parties’ Contention
The Complainant contends that the disputed domain name is almost identical to its trademark and company name ‘DHL’. By prefixing ‘www’, which term commonly refers to the World Wide Web, along with its mark, the public will assume that the domain name is affiliated to the Complainant as it closely corresponds to the Complainant’s own website and domain name “www.dhl.com”. It may even give rise to a false notion that the Respondent is connected or affiliated with the Complainant.
The Complainant categorically states that no permission or license has been granted to the Respondent to use its trademark DHL or to use “wwwdhl” in its domain name, and further states that the Respondent is not known by the domain name, nor has the domain name been used for any legitimate purpose, the Respondent therefore has no rights or legitimate interests in the domain name.
The Complainant asserts that the Respondent has registered and used the domain name in bad faith, as the Respondent must have been aware of the Complainants well known mark DHL mark at the time of registration of the domain name.
Since there is no legitimate interest or business relationship between Complainant and Respondent, and the Whois data base clearly displays that the domain name is available for sale, the Complainant asserts that the domain name ought to have been registered for the sole purpose of selling, renting or otherwise transferring it to the Complainant or to its competitor for valuable consideration. Further the Respondent not having provided proper contact details shows his bad faith intentions.
The Complainant requests for a transfer of the domain name <wwwdhl.com>.
The Respondent did not respond to the Complaint.
6. Discussions and Findings
On the basis of the submissions made and evidence adduced by the Complainant under paragraph 4(a), where the Complainant must prove that:
i. The domain name is identical or confusingly similar to a trademark or service mark in which a Complainant has rights.
ii. The Respondent does not have any rights or legitimate interests in the domain name.
iii. The domain name has been registered and used in bad faith.
The Panel finds on each of the above aspects, as follows:
Identical or Confusingly Similar
The Complaint has provided ample evidence to establish its rights and the fame of its mark DHL. The disputed domain name <wwwdhl.com> comprises of the Complainant’s well known mark DHL which is the main distinguishing element of the domain name, “www” prefixed to the mark is deceptively confusing for Internet users.
Adding the prefix “www”, is a frequently used modus operandi by manipulative domain name registrants to compose a domain name confusingly similar to a well-known trademark by adding of the prefix “www”. There are numerous such instances of domain name registrations and several UDRP cases which bears testimony to this fact.
Time and again Panels in UDRP proceedings have found
that a well known mark with “www” as a prefix is not only misleading
and confusing but it actually enhances the confusion of Internet users. See
for instance PepsiCo Inc vs La Porte Holdings Pepsiemployment.com a/k/a Henry
Chan, WIPO Case No. D2005-0687 and LDLC.COM
v. LaPorte Holdings <wwwldlc.com>, WIPO
In the context of Internet users, who are misled by the registration of such domain names, and for those who seek to gain by such abusive domain name registrations; it is the well-known mark which is of relevance. Adding “www”, with or without spaces dots or dashes or how so ever cleverly the trademark is camouflaged for internet use, such use of trademarks in domain names does constitute devious use of a well known trademark, calculated to confuse web users.
The Panel accordingly finds the domain name in dispute, <wwwdhl.com> confusingly similar to the Complainants well-known trademark DHL .
Rights or legitimate Interests
It is clear that the Registrant of the disputed domain name, the Respondent herein, has used the Complainant’s mark DHL, without the Complainant’s consent or permission. The Panel finds no evidence on record to show that the Respondent has been commonly known by the domain name or that the domain name is being used for any legitimate purpose. There is no active website linked to the domain name.
It is unlikely that the Respondent was unaware of the business and trademark
of the Complainant. There can be no honest legitimate use by the Respondent
of a well-known trademark, since any such use would inevitably mislead the public
to believe that there was some affiliation with the Complainant. This is inevitable
due to expectations the public would have from a well known mark. See for instance
Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO
Case No. D2001-1314.
Based on these circumstances and the fact that the Respondent failed to respond or justify his rights under paragraph 4(c) of the Policy; the Panel finds that the Complainant has made a prima facie case under paragraph 4(a)(ii) of the Policy.
Registered and Used in Bad Faith
It is obvious that the value and goodwill, of the Complainant’s mark DHL which has an extensive world wide recognition, would have been known to the Respondent at the time of registration of the disputed domain name. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith.
The Policy provides for an illustrative, non-exhaustive list where bad faith registration and use may be found under Paragraph 4(b). Previous UDRP Panel rulings have found that registrants who have opportunistically registered a domain name for the purpose of selling, renting or otherwise transferring it, constitutes bad faith. Although there is no overt offer made directly to the Complainant, the fact that the Who is data base clearly indicates that the “domain is for sale”, indicates the intention of the Respondent to sell the domain name.
The Panel’s independent search on the Internet for the disputed domain name, reveals the message:
“wwwdhl.com Contact Us...
Contact Us. Your Name:. Your E-Mail Address:. Company: (optional). Message:
Include any comments, suggestions or notes here. Minimum sale price for domain: ...
wwwdhl.com/contact.html - 2k - Supplemental Result”.
Offer to sell a domain name, unless Respondent has legitimate interests
establishes bad faith, even if there is no overt offer directly to the Complainant.
See CBS Broadcasting, Inc. v. Gaddoor Saidi, WIPO
Case No. D2000-0243.
There is no active website linked the domain name presently. While the non
use of a domain name by itself does not constitute bad faith, given the circumstances
in the present case and the indefensible choice of the domain name by the Respondent
coupled with an inactive website has been held in several previous decisions
to constitute bad faith. See Testra Corporation Ltd v. Nuclear Marshmallows,
WIPO Case D2000-0003.
Further the fact that address and contact details provided by the Respondent are inaccurate or insufficient, adds to bad faith aspects of the domain name registration.
The Panel finds that the Respondent has registered the disputed domain name
in opportunistic bad faith, as the Complainants trademark is a well known mark
of which the Respondent would have been aware at the time of registration of
the disputed domain name. The Respondent does not conduct any legitimate business
using the domain name and it is inconceivable that the domain name can be used
in a legitimate manner by the Respondent. In addition the Respondent has not
provided accurate contact details. These findings together with the finding
that the Respondent has no rights or legitimate interests in the domain name
convince the Panel that of bad faith registration and use of the domain name.
For the reasons mentioned above, in accordance with paragraph 4 (i) of the Policy and 15 of the Rules, the Panel orders the domain name <wwwdhl.com> be transferred to the Complainant.
Dated: October 12, 2005