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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

DHL Operations B.V. v. Serkan Dikmen

Case No. D2006-1426

 

1. The Parties

The Complainant is DHL Operations B.V., of Amsterdam, Netherlands, represented by Linklaters, Germany.

The Respondent is Serkan Dikmen, of Istanbul, Turkey.

 

2. The Domain Name and Registrar

The disputed domain name <dhlgermany.com> is registered with Yellow Start, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 6, 2006. On November 9, 2006, the Center transmitted by email to Yellow Start, Inc. a request for registrar verification in connection with the domain name at issue. On November 14, 2006, Yellow Start, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 29, 2006. 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”), 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 November 30, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 20, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 21, 2006.

The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on January 8, 2007. 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.

On November 15, 2006, and December 28, 2006, the Respondent sent e-mail messages to the Center. Because such messages were sent before the response term, they do not qualify as a “response”. Even though such messages cannot be fully understood because the are written in an extremely poor English, it can be extracted from them that the Respondent claims that there was no wrongdoing on his part for registering the disputed domain name.

Despite the alleged lack of proficiency of the Respondent in the English language, it has been established, as per Section 11(a) of the Policy, that the language of the proceeding is indeed English, as the Register expressly confirmed that “the English language was used to inform the Registrant of both the Domain Registration Agreement as well as the Customer Master Agreement during the domain name Registration and Customer Signup process.”

 

4. Factual Background

The Complainant is a corporation established in 1979 having its seat and principal place of business in Amsterdam, The Netherlands.

The Respondent is a natural person resident in Turkey.

The Complainant renders “all kind of transport services by land, sea and air”. Complainant is part of the major logistics group of companies worldwide. Complainant’s group is also the world’s largest express transporter of documents, goods and parcels.

The Complainant holds a large number of applications and registrations worldwide for trademarks that consist of the designation “DHL” or contain this designation as a significant component. The Complainant submitted proof of a series of registrations for its DHL trademark in Germany, the UK, the European Union, and Turkey. These trademark registrations cover, 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, namely sacks for transporting packages and documents, cardboards and paper boxes used for packaging, adhesive labels, stationery, cardboard tubes and envelopes, wall hangings, namely maps, posters and calendars, promotional clothing, customs brokerage services, and forwarding of cargo.

The Complainant and its affiliates hold several domain names containing “DHL” such as <dhl.com>; <dhl.co.uk> (in The United Kingdom); <dhl.com.tr> (in Turkey) and <dhl.de> (in Germany).

The Complainant’s core business is international transportation of documents, goods and parcels. As shown on the Internet page “www.dhl.com” the Complainant has a business location in nearly every country in the world. Also in Turkey, the country of the Respondent, the Complainant operates various business locations.

 

5. Parties’ Contentions

A. Complainant

The Complainant alleges to be recognized worldwide by the public due to its omnipresence resulting from its thousands of yellow trucks and airplanes with the sign DHL. Complainant claims that its DHL trademark is well-known within Germany, Turkey and the rest of Europe as well as internationally, as decided in the case DHL Operations B.V. v. Ali Kazempour, WIPO Case No. D2004-1094:

“the ‘DHL’ marks are notorious all over the world”.

The Complainant claims that the generic top level domain “.com” is not apt to produce any distinctiveness in the Respondent’s domain name when compared to the Complainant’s DHL trademark, nor is the addition of the element “germany”, especially because the Complainant has well-established trademarks in Germany.

Thus, the Complainant understands that Internet users finding the Respondent’s domain name are likely to incorrectly believe that the domain name refers to the Complainant’s affiliate in Germany.

B. Respondent

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

 

6. Discussion and Findings

According to Paragraph 4(a) of the Policy the Complainant must prove each of the following:

(i) that the domain name registered by the Respondent is identical or confusingly similar to the trademarks or service marks in which the Complainant has rights; and

(ii) that the Respondent has no rights or no legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is used in bad faith.

A. Identical or Confusingly Similar

It is well established that the addition of a country name is not per se enough to produce distinctiveness. Each case must be analyzed in accordance with its own merits but in view of the proven notoriety worldwide of the trademark “DHL” it is reasonable to assume that most people would associate the disputed domain name with the Complainant’s mark and its activities in such country.

Several WIPO decisions have held that the addition of a geographical qualifier does not grant distinctiveness to a domain name, for example, AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553; BP p.l.c. v. Kang-Sungkun Portraits Production, WIPO Case No. D2001-1097; Advance Magazine Publishers, Inc. v. Models USA Inc., WIPO Case No. D2002-0907; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713.

Therefore, the Panel finds that the domain name <dhlgermany.com> is confusingly similar to the Complainant’s registered trademark DHL.

B. Rights or Legitimate Interests

This Panelist has examined the Respondent’s Web Page and observed that the Respondent apparently does not run any business activity in connection with the disputed domain name. In such Web Page the Respondent only posts a list of sponsored links. Therefore, the domain name <dhlgermany.com> is not used by the Respondent in connection with a bona fide offering of goods and services.

In addition, the Complainant has never authorized the Respondent to make use of the trademark DHL and there is no relationship between the parties.

Respondent has not replied to the Complaint and has not presented any other evidence or elements to justify any rights or legitimate interest in connection with the disputed domain name. Therefore, the Panel has found no indication that any of the circumstances described in Paragraph 4(c)(i)-(iii) of the Policy could apply to the present matter.

Accordingly, the panel finds that the Respondent has no right or legitimate interest in respect to the disputed domain name pursuant to Paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists certain non-exhaustive circumstances which, if found by the Panel to be present, are evidence of the registration and use of the domain name in bad faith.

The registration of the disputed domain name occurred on August 21, 2006, long after Complainant’s registrations for the trademark “DHL” and domain names containing such sign, which, combined with the notoriety of Complainant’s trademark, show that Respondent must have been aware of Complainant’s trademark at the time of registration and use of the said domain name.

The addition of the name of a country, i.e., Germany, to Complainant’s trademark indicates that the Respondent is clearly trying to lure Internet users of such country.

The fact that Respondent Web Page hosts a list of sponsored links also shows that the Respondent intentionally uses the domain name <dhlgermany.com> aiming at profit from the Complainant’s renowned trademark by diverting Internet users. The confusion created by the domain name at suit may disrupt the Complainant’s business.

Many WIPO decisions have considered that redirecting users to other sites that offer services and goods, even if unrelated to the complainant’s to gain profit from the reputation of complainant’s trademarks, is an indicium of bad faith. See ATT&T Corp. v. John Zuccarini d/b/a RaveClub Berlin, WIPO Case No. D2001-1503; Society for Human Resource Management v. Local Services INC., WIPO Case No. D2004-0127.

For the mentioned reasons, the Panel finds that the Respondent has registered and uses the disputed domain name in bad faith. The Panel therefore concludes that the Complainant has met the requirements set forth in Paragraph 4(a)(iii) of the Policy.

 

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 name <dhlgermany.com> be transferred to the Complainant.

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Gabriel F. Leonardos
Sole Panelist

Dated: January 24, 2007