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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

DHL Operations B.V. v. Karel Salovsky

Case No. D2006-0520

 

1. The Parties

The Complainant is DHL Operations B.V., Amsterdam, the Netherlands, represented by Linklaters Oppenhoff & Rдdler, Germany.

The Respondent is Karel Salovsky, Vancouver, Canada.

 

2. The Domain Names and Registrar

The disputed domain names <dhleasyship.com>, <dhlswiftship.com>, <dhlwebship.com>, <dhlcorporateship.com> and <dhlecourier.com> are registered with Go Daddy Software, Inc.

 

3. Procedural History

The Complaint was submitted by e-mail to the WIPO Arbitration and Mediation Center (the “Center”) on April 25, 2006. On April 26, 2006, the Complaint was received in hard copy. On April 29, 2006 the Center sent an Acknowledgement of Receipt of Complaint to the Parties. The communication was made to Respondent by e-mail.

At the Center’s request for registrar verification of April 26, 2006, concerning the disputed domain names, Go Daddy Software, Inc. transmitted its verification response to the Center by e-mail on April 26, 2006, confirming that Respondent is listed as the Registrant of the disputed domain names and providing the contact details for the Registrant and the technical and administrative contact.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, 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 sent the Complaint and a formal Notification of Complaint and Commencement of Administrative Proceeding to Respondent on May 1, 2006, by courier and e-mail, using the contact details listed in the Registrar’s WHOIS database. In accordance with the Rules, paragraph 5(a), the due date for response was May 21, 2006. Respondent submitted a response by e-mail on May 20, 2006. Accordingly, the Center sent an Acknowledgement of Receipt of Response to the Parties on May 23, 2006, by e-mail.

On June 2, 2006, the Center notified Go Daddy Software, Inc. that the domain name <dhleasyship.com> was set to expire on June 2, 2006 and requested a confirmation that the domain name would be placed in Registrar HOLD and Registrar LOCK status until the present proceedings would be concluded. On June 2, 2006 Go Daddy Software, Inc. confirmed that it had automatically renewed the domain name <dhleasyship.com>, which will, as a result, expire on June 2, 2007.

The Center appointed Ms. Foteini Papiri as the sole panelist in this matter on June 8, 2006. The Panelist 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. Thus, the Panel finds that it was properly constituted.

Notification of the Appointment of the Administrative Panel and Projected Decision Date were sent by e-mail to Complainant and to Respondent on June 8, 2006.

The registration agreement for the domain names at issue has been executed in English. Complainant has submitted its Complaint in English and Respondent has submitted its Response in English. In the absence of any special circumstance for the Panel to determine otherwise, as provided in the Rules, paragraph 11, the language of this proceeding is English.

The Panel, sharing the assessment of the Center, independently finds that the Complaint was filed in accordance with the requirements of the Policy, the Rules and the Supplemental Rules, and that payment of the fees was properly made.

The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines.

 

4. Factual Background

Because the Complaint is formally in compliance with the Policy, the Rules and the Supplemental Rules, and to the extent that certain of Complainant’s contentions and documents enclosed with the Complaint have not been contested, the Panel finds the following facts as having been sufficiently established:

Complainant is one of the world’s major logistics corporations, offering international express, overland transport and airfreight solutions, tracing its origins back to 1979 (Complaint, Annex 4) and having its seat and principal place of business in Amsterdam, the Netherlands. Complainant operates and offers its services in numerous countries of the world including Canada, Respondent’s country of residence. Complainant’s main activities involve supply, logistics, warehousing, distribution logistics, global airfreight and ocean freight, project freight forwarding and European overland transport service. Since April 1, 2003, Danzas, Deutsche Post Euro Express and DHL have been integrated under the re-positioned DHL brand in the context of Deutsche Post World Net, owners of DHL, having reorganized activities in the Express and Logistics Divisions as part of the Group-wide value enhancement programme “star.”

Complainant owns multiple trademark and service mark registrations for the DHL mark or other marks incorporating the designation DHL, in particular in connection with, inter alia, transportation of documents, goods and parcels by land, sea and air, express courier services, packaging, storage of goods in depots, delivery of goods, freighting, shipping, sacks for transporting packages and documents, cardboards and paper boxes used for packaging, adhesive labels, stationeries, cardboard tubes and envelopes, wall hangings (namely maps, posters and calendars), promotional clothing, customs brokerage services and forwarding of cargo. Complainant provided the Panel with ample evidence of trademark and service mark registrations for the DHL mark and a number of other marks incorporating the designation DHL in Germany, the United Kingdom of Great Britain and Northern Ireland, the United States of America and Canada, as well as Community Trademark and International registrations (with designations in several countries) (Complaint, Annex 5). Complainant owns a number of trademark registrations in Canada, being the Respondent’s country of residence, incorporating the designation “dhl”, including for the mark DHL (filing date 05/15/86).

In addition Complainant owns trademark registrations for the sign EASYSHIP in Germany (filing date 03/31/93) and the United Kingdom (filing date 04/28/92). Complainant also owns trademark registrations for EASYSHIP in Canada and Australia (filing dates 06/21/93 and 03/31/93 respectively). Complainant has produced evidence of ownership by the entity DHL EXPRESS (USA) of trademark registrations for EASYSHIP and SWIFTSHIP in the United States of America (filing dates 01/07/91 and 07/29/03 respectively), and of an application by that entity for trademark registration for CORPORATESHIP in the United States of America (filing date 07/16/03). However no evidentiary support has been produced in relation to that entity's status or otherwise as a subsidiary of the Complainant. (Complaint, Annex 7).

Over the years, consumers have come to recognize the DHL mark as indicating a product or service originating with Complainant and the DHL mark enjoys widespread recognition and reputation in relation to international transport and logistics solutions.

According to Whois database records furnished by Complainant, the records for the disputed domain names were created on the following dates:

<dhleasyship.com> created on June 2, 2004 (Complaint, Annex 1);

<dhlswiftship.com> created on January 23, 2005 (Complaint, Annex 1);

<dhlwebship.com> created on January 23, 2005 (Complaint, Annex 1);

<dhlcorporateship.com> created on April 3, 2005 (Complaint, Annex 1);

<dhlecourier.com> created on April 3, 2005 (Complaint, Annex 1).

 

5. Parties’ Contentions

A. Complainant

Complainant contends that: (1) the domain names <dhleasyship.com>, <dhlswiftship.com>, <dhlwebship.com>, <dhlcorporateship.com> and <dhlecourier.com> are identical or confusingly similar to the mark in which Complainant has rights; (2) Respondent has no rights or legitimate interests in respect of the domain names; (3) the domain names were registered and are being used in bad faith.

In particular, Complainant contends that Complainant enjoys worldwide recognition and reputation for its registered mark DHL and that the domain names <dhleasyship.com>, <dhlswiftship.com>, <dhlcorporateship.com> are composed of Complainant’s well-known DHL mark and Complainant’s registered marks EASYSHIP, SWIFTSHIP, CORPORATESHIP respectively, and that the disputed domain names are, therefore confusingly similar to such marks.

Claimant further contends that all disputed domain names, i.e. <dhleasyship.com>, <dhlswiftship.com>, <dhlwebship.com>, <dhlcorporateship.com> and <dhlecourier.com> are confusingly similar to its registered mark DHL, as they all incorporate it as their most distinctive element, the suffixes “easyship”, “swiftship”, “webship”, “corporateship” and “ecourier” being merely descriptive of Complainant’s business activities.

Moreover, Complainant contends that Complainant is the proprietor of several trademark registrations incorporating the well-known DHL mark in combination with terms indicative of Complainant’s activities, such as DHL WORLDWIDE EXPRESS, DHL CONNECT, DHL MIDDAY EXPRESS, DHL GLOBALTRACK, DHL SOLUTIONS. Complainant contends that the domain names <dhleasyship.com>, <dhlswiftship.com>, <dhlwebship.com>, <dhlcorporateship.com> and <dhlecourier.com>, also incorporating the well-known DHL mark in combination with terms indicative of Complainant’s activities, may lead the public to confuse these as belonging to, being affiliated with or operated by Complainant.

Complainant contends that Respondent has no rights or legitimate interests in respect of the domain names. Complainant contends that Respondent is not generally known under the domain names, does not possess rights in the mark DHL, does not use the domain names for any legitimate, non-commercial or equitable purpose or in connection with a bona fide offering of goods and services. Complainant contends that Complainant has not licensed or otherwise authorized Respondent to register the domain names or use its marks

Complainant also contends that the domain names were registered in bad faith, as it is highly unlikely that the domain names, incorporating Complainant’s well-known DHL mark as their most meaningful portion, were registered without prior knowledge of Complainant’s marks. Complainant contends that Respondent approached Complainant with an e-mail to offer the domain names for sale. Complainant contends that Respondent registered or acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to Complainant or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain names.

As the domain names resolve to “parked” web pages, where links relating to competitor commercial sites are displayed, Complainant finally contends that by using the domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location.

B. Respondent

Respondent in his Response contends the following:

Respondent contends that Respondent legally acquired the assets of KJS Enterprises from Karel Salovsky (Sr) in July 2005. Respondent contends that KJS Enterprises was a web-development consulting company that focused on providing turn-key web solutions for end-clients ranging from acquisition of domain names to establishing web presence. Respondent contends that the acquisition of the business included not only the client base, but also an inventory of domain names, at a pre-determined cost of CDN $125 per domain name.

Respondent contends that the domain names <dhleasyship.com>, <dhlswiftship.com>, <dhlwebship.com>, <dhlcorporateship.com> and <dhlecourier.com> were legally acquired by his predecessor in title as part of an end client project. The end client is alleged to have been affiliated with DHL Express in Canada. Respondent contends that the project never went past the proposal stage due to the end client being unable/unwilling to secure funding in relation to the proposed web site.

Respondent concedes that the domain names <dhleasyship.com>, <dhlswiftship.com>, <dhlwebship.com>, <dhlcorporateship.com> and <dhlecourier.com> are only a portion of the total number of DHL-related “.com” and “.ca” domain names registered as part of the project.

Respondent concedes that Respondent does not have current interests in the domain names <dhleasyship.com>, <dhlswiftship.com>, <dhlwebship.com>, <dhlcorporateship.com> and <dhlecourier.com>.

Respondent contends that the purpose of initiating contact with Complainant via e-mail on March 7, 2006, was not to profit, but rather to achieve cost recovery. Respondent also contends that Respondent incurred a cost of CDN $125 per domain name as a result of the acquisition of the assets of KJS Enterprises.

Respondent contends that the domain names were registered by his predecessor in title in good faith and they have not been used by either Respondent’s predecessor in title or Respondent himself, as they resolve to “parked” web pages.

Respondent further contends that the fact that the “parked” web pages include links to other web sites related to, inter alia, the transportation, logistics and freight business is not within the control of Respondent, as once the domain name is registered with Go Daddy Software, Inc. it automatically resolves to such a web site incorporating relevant links, and there was never any intention on the part of Respondent to direct traffic to Complainant’s competitor web sites.

Respondent offers to transfer the domain names <dhleasyship.com>, <dhlswiftship.com>, <dhlwebship.com>, <dhlcorporateship.com> and <dhlecourier.com>, as well as ten more DHL-related “.com” and five more DHL-related “.ca” domain names at the cost of CDN $125 per domain name.

 

6. Discussion and Findings

This dispute is properly within the scope of the Policy, and the Panel has jurisdiction to decide the dispute. The registration agreements, pursuant to which the domain names that are the subject of this Complaint were registered, incorporate the Policy.

Respondent is required to submit to a mandatory administrative proceeding in accordance with paragraph 4(a) of the Policy, because Complainant asserts, in compliance with the Rules, that:

(i) the disputed domain names are 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 domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

Under Rules, paragraph 10(a), the Panel is allowed inter alia to independently visit Respondent’s web site in order to obtain additional light in this default proceeding.

On June 20, 2006, the Panel attempted to visit Respondent’s web sites at the URLs “www.dhleasyship.com”, “www.dhlswiftship.com”, “www.dhlwebship.com”, “www.dhlcorporateship.com” and “www.dhlecourier.com”, using the Internet Explorer browser. The domain names <dhleasyship.com>, <dhlswiftship.com>, <dhlwebship.com>, <dhlcorporateship.com> and <dhlecourier.com> opened to “parked” web pages containing several links relating, but not limited to, the transportation, shipping and freight industry.

A. Identical or Confusingly Similar

Complainant has rights in the mark DHL registered for numerous goods and services in multiple jurisdictions. Complainant’s DHL mark is registered and used in the course of trade in numerous countries including Canada, Repondent’s country of residence. Complainant has used the DHL mark extensively and the DHL mark has acquired considerable fame and recognition.1

Preliminarily, it is important to point out that it is established practice to disregard the absence of spaces, as well as the top-level part of the domain names, when assessing whether the domain name is confusingly similar to the mark at issue, as such elements are dictated by the very nature of the DNS, which does not permit the existence of spaces and the inclusion of a gTLD or a ccTLD is necessary to distinguish one namespace from others.

All the disputed domain names incorporate Complainant’s mark DHL, in combination with the terms “easyship”, “swiftship”, “webship”, “corporateship” and “ecourier”.

In particular in relation to the terms “easyship”, “swiftship” and “corporateship”, Complainant contends that Complainant or its major subsidiaries also hold mark registrations in EASYSHIP, SWIFTSHIP and CORPORATESHIP.

Complainant has produced evidence as to registration of EASYSHIP in Complainant’s name and registration of SWIFTSHIP and CORPORATESHIP in the name of DHL EXPRESS (USA) Inc.

It has been accepted in other administrative panel decisions that “[…] a company related as subsidiary or parent to the registered holder of a mark may be considered to have rights in the mark.”2 However, Complainant has not produced evidentiary support as to the relationship between Complainant and DHL EXPRESS (USA) Inc. and, therefore, the Panel cannot take account of the trademark registrations for SWIFTSHIP and CORPORATESHIP.

As far as the domain name <dhleasyship.com> is concerned, it consists of Complainant’s well-known DHL mark and Complainant’s registered mark EASYSHIP. It is established in earlier administrative panel decisions that a domain name that is the mere combination of two trademarks, in which a complainant holds rights, is to be considered as confusingly similar to such trademarks.3

As far as the domain names <dhlswiftship.com>, <dhlwebship.com>, <dhlcorporateship.com> and <dhlecourier.com> are concerned, they consist of Complainant’s well-known mark DHL, which constitutes their most significant meaningful portion and the descriptive terms “swiftship”, “webship”, “corporateship” and “ecourier” respectively, added after the mark DHL.

Complainant has used the mark DHL in connection with a wide variety of goods and services. As a consequence, the public has come to perceive goods and services that are offered under a DHL mark or a variation of the same as emanating from or being endorsed by or affiliated with Complainant. The addition of the registered mark EASYSHIP and the terms “swiftship”, “webship”, “corporateship” and “ecourier” respectively, indicative of Complainant’s services and operations, added after the mark DHL, is a variation of Complainant’s mark, which the average consumer would expect Complainant or its affiliates to use in connection with the mark DHL to identify its goods or services, especially since Complainant is primarily using its DHL mark in connection with goods and services in the international transport and logistics industry.

In particular the terms “swiftship”, “webship”, “corporateship” and “ecourier” all relate to services that Complainant offers to its clients. The first three terms are used by Complainant to indicate either tools to develop DHL shipping functionality (“swiftship”) or web-based shipping tracking services offered by Complainant (“webship” and “corporateship”) (Complaint, Annex 13), while the term “ecourier” is used by Complainant to designate a secure document exchange service with encryption, a function that allows legally-binding documents to be signed and archived from the client’s browser (Complaint, Annex 12). The incorporation of these terms in Respondent’s domain names attempts to create confusion in the minds of consumers with Complainant’s operation of different services. Given the nature of Complainant’s DHL mark and the well-known services that it provides, as well as a series of trademark or service mark registrations, owned by Complainant, incorporating the DHL mark in combination with other terms descriptive of its activities, in all aforementioned cases, the addition of descriptive terms to Complainant’s mark DHL does not only fail to distinguish the domain names from the mark, but also reinforces the association of the domain names with Complainant’s mark.

In that sense, Respondent creates a likelihood of confusion in the minds of the consumers, who expect the domain names <dhleasyship.com>, <dhlswiftship.com>, <dhlwebship.com>, <dhlcorporateship.com> and <dhlecourier.com> to resolve to web sites owned by, operated by or affiliated with Complainant.

Respondent has not contested Complainant’s contentions as to Complainant’s rights in either the mark DHL or the mark EASYSHIP.

The Panel finds that the domain name <dhleasyship.com> is confusingly similar to the DHL mark and the EASYSHIP mark, in which Complainant has proven to have rights, pursuant to paragraph 4(a)(i) of the Policy.

The Panel finds that the domain names <dhlswiftship.com>, <dhlwebship.com>, <dhlcorporateship.com> and <dhlecourier.com> are confusingly similar to the DHL mark, in which Complainant has proven to have rights, pursuant to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant has a strong presence in the international transport and logistics industry, and Complainant’s first use of the DHL mark predates the domain name registrations. In connection with Complainant’s offering of goods and services, the DHL mark has acquired widespread recognition and goodwill. Because Complainant’s DHL trademark and service mark registrations including those in Canada, as set out above, were issued before the registration of the disputed domain names, the Panel finds that Complainant has prior trademark and service mark rights and Respondent had actual or most likely knowledge of the well-known mark DHL.

Respondent contends that the domain names <dhleasyship.com>, <dhlswiftship.com>, <dhlwebship.com>, <dhlcorporateship.com> and <dhlecourier.com> were legally acquired by his predecessor in title as part of an end-client project. The end-client is alleged to have been affiliated with DHL Express in Canada. Respondent contends that the project never went past the proposal stage due to the end-client being unable/unwilling to secure funding in relation to the proposed web site.

Respondent has not supported this contention with any evidence. The Panel can only draw inferences from the lack of evidentiary support and doubt that such a client and affiliation ever existed. Respondent stands as the registrant of the disputed domain names and the identity of the alleged client of KJS Enterprises cannot be verified. Even if the alleged client did exist, it would be that client, who would be in a position to invoke rights or legitimate interests in respect of the domain name registrations and not Respondent’s predecessor in title or Respondent himself.

The question also arises why the domain names were registered as assets of KJS Enterprises if they were really registered on behalf of the alleged client. In the absence of evidentiary support in relation to the alleged acquisition of assets belonging to KJS Enterprises by Respondent, the Panel is unable to concur with Respondent’s contention that such a transaction ever took place between a certain Karel Salovsky (Sr.) and Respondent in this proceeding, Karel Salovsky.

Even if such a transaction did take place, Complainant never granted, tacitly or otherwise, Respondent’s alleged predecessor in title or Respondent himself any license, rights, permission or authorization to use the DHL and EASYSHIP marks or incorporate either or both of them in domain name registrations. There is no business link between Complainant and Respondent’s alleged predecessor in title or Respondent himself, Respondent’s alleged predecessor in title or Respondent himself is not related in any way to Complainant and there is no sponsorship, endorsement or affiliation between the two that would justify Respondent’s alleged predecessor in title or Respondent himself registering domain names that wholly incorporate Complainant’s mark or marks.

Currently, the domain names <dhleasyship.com>, <dhlswiftship.com>, <dhlwebship.com>, <dhlcorporateship.com> and <dhlecourier.com> open to “parked” web pages containing several links relating, but not limited to, the international transport and logistics industry.

Respondent appears to have no corporate, partnership or fictitious business name or business listing registration under the disputed domain names, nor has it claimed any rights with respect to these domain names. Respondent also failed to demonstrate legitimate interests or bona fide offering of goods or services in respect of the disputed domain names.

In any case, the result of the test independently conducted by the Panel did not show any evidence as to independent rights or legitimate interests of Respondent in the domain names pursuant to paragraph 4(c) under the Policy, nor could the Panel find any indication of bona fide offering of goods or services. Furthermore, there is no evidentiary support that Respondent, as an individual, business, or other organization, has been commonly known by the domain names or that it is making a legitimate non-commercial or fair use of the domain names.

Therefore, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain names at issue, pursuant to paragraphs 4(a)(ii) and 4(c) of the Policy.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, Complainant must prove registration and use in bad faith. Paragraphs 4(b)(i)-(iv) of the Policy contain a non-exhaustive list of circumstances, which shall constitute evidence of registration and use of a domain name in bad faith.

Complainant contends that the domain names were registered or acquired in bad faith and primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to Complainant or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain names, and that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location.

Respondent contends that the domain names were registered by his predecessor in title in good faith and they have not been used by either Respondent’s predecessor in title or Respondent himself, as they resolve to “parked” web pages. Respondent also contends that the domain names were acquired as assets of KJS Enterprises from Karel Salovsky (Sr.), who registered the domain names as part of an end client project on behalf of a client affiliated with DHL Express Canada.

Again in the absence of evidentiary support, the Panel doubts that, on the one hand, the alleged client ever existed, and that, on the other hand, such a transaction between a certain Karel Savolsky (Sr.) and Respondent, Karel Salovsky, ever took place. Even if a client did in fact exist and even if the transaction did in fact take place, Respondent’s predecessor in title has registered the five disputed domain names and fifteen more DHL-related domain names, i.e. a total of twenty DHL-related domain names, as Respondent discloses in his Response, on behalf of an alleged client, whose identity or motives are not disclosed.

It is reasonable to infer from these circumstances that both Respondent’s predecessor in title and Respondent himself, prior to the registration of the domain names, which wholly incorporate Complainant’s registered DHL mark, were individually aware of the fact that Complainant was the owner of the DHL mark because of the widespread and long-standing advertising and marketing of goods and services under the DHL mark.

In fact, the registration of domain names that wholly incorporate Complainant’s DHL mark with the addition of the registered mark EASYSHIP and the descriptive terms “swiftship”, “webship”, “corporateship” and “ecourier” respectively, i.e. descriptive terms in the line of business that Complainant is involved, indicate that Respondent’s predecessor in title, or Respondent himself, if Respondent’s predecessor in title is Respondent’s fabrication, registered or acquired the domain names in bad faith.

Respondent initiated contact with Complainant on March 7, 2006, in order to offer to sell the domain names. A copy of the e-mail, which Respondent has not contested, is attached as Annex 14 to the Complaint. In the e-mail Respondent states that the domain names “[…] are for sale. They were part of the assets of a web-development company I recently purchased, and may be of interest, as they are related to existing DHL service offerings. If interested, please initiate contact and submit offers to this e-mail address. Thank you in advance for your consideration. K Salovsky”.

Respondent in his Response contends that the purpose of initiating contact with Complainant via e-mail on March 7, 2006, was not to profit, but rather to achieve cost recovery. Respondent also contends that Respondent incurred a cost of $125 CDN per domain name as a result of the acquisition of the assets of KJS Enterprises.

Respondent also in his Response offers to transfer the domain names <dhleasyship.com>, <dhlswiftship.com>, <dhlwebship.com>, <dhlcorporateship.com> and <dhlecourier.com>, as well as ten more DHL-related .com and five more DHL-related .ca domain names at the cost of CDN $125 per domain name.

As mentioned above, the domain names <dhleasyship.com>, <dhlswiftship.com>, <dhlwebship.com>, <dhlcorporateship.com> and <dhlecourier.com> currently resolve to “parked” web pages, displaying links relating, but not limited to, the field of international transport and logistics.

Complainant contends that by using the domain names Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location in the meaning of paragraph 4(b)(iv) of the Policy.

Respondent contends that the inclusion of links relevant to Complainant’s activities in the “parked” web pages is beyond its control as that depends on the registrar.

Neither Complainant nor Respondent has submitted conclusive evidence that warrant or support either contention and, therefore, the Panel cannot accept either position. It may be true that by registering or acquiring the domain names at issue, which constitute confusing variations of Complainant’s mark, Respondent de facto creates a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site and that Internet traffic, as a result, is diverted to Respondent’s “parked” web pages instead of Complainant’s web site, but it cannot be verified with certainty whether the links are indeed automatically generated by Registrar or sponsored, to generate revenue and commercial gain for Respondent.

However, because of the fact that Complainant’s mark predates the registration of the domain names and because of the widespread and long-standing advertising and marketing of goods and services under the DHL mark, it is reasonable to believe that Respondent was aware of the fact that the domain name registrations incorporate Complainant’s well-known DHL mark and that he did in fact, if not register himself, at least acquire the domain names, in bad faith and primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to Complainant or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain names. In this respect, the Panel is satisfied that the circumstances surrounding Respondent’s conduct are indicative of registration and use of the domain names in bad faith according to paragraph 4(b)(i) of the Policy.

For all the aforementioned reasons, the Panel finds that Complainant has proven paragraph 4(a)(iii) under the Policy.

Consequently, all the prerequisites for cancellation or transfer of the domain names are fulfilled, according to the remedies available under paragraph 4(i) of the Policy.

Complainant has requested, in the first instance, transfer of the domain names.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <dhleasyship.com>, <dhlswiftship.com>, <dhlwebship.com>, <dhlcorporateship.com> and <dhlecourier.com> be transferred to Complainant.


Foteini Papiri
Sole Panelist

Dated: June 22, 2006


1 See also DHL Operations B.V. v. Ali Kazempour, WIPO Case No. D2004-1094.

2 Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington, WIPO Case No. D2003-0796.

3 Sociйtй des Produits Nestlй SA v. Stuart Cook, WIPO Case No. D2002-0118; Credit Industriel et Commercial S.A. v. Richard J, WIPO Case No. D2005-0569; Sociйtй Nationale de Tйlйvision France 2 v. Richard J. aka Richard Jones, WIPO Case No. D2005-0864.

 

Источник информации: https://internet-law.ru/intlaw/udrp/2006/d2006-0520.html

 

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