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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DHL Operations B.V. and Deutsche Post AG v. Kathy McCarty
Case No. D2007-1431
1. The Parties
The Complainants are DHL Operations B.V. of Amsterdam, Netherlands, and Deutsche Post AG of Bonn, Germany, represented by Jonas Rechtsanwaltsgesellschaft mbH, Germany.
The Respondent is Kathy McCarty, of Channing, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name <dhl-mailcorp.com> is registered with Register.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2007. On September 28, 2007, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On October 3, 2007, Register.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details listed in the Register.com database. 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 (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 by courier delivery, and the proceedings commenced on October 5, 2007. The Center’s attempts to communicate with the Respondent by email to the one email address provided by Register.com as that of the Respondent (in the three roles of registrant and administrative and technical contact) were unsuccessful. In accordance with the Rules, paragraph 5(a), the due date for Response was October 25, 2007. The Response was filed with the Center on October 9, 2007.
The Center appointed Alan L. Limbury as the sole panelist in this matter on October 24, 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.
4. Factual Background
The Complainants are part of a group of companies providing worldwide transport services by land, sea and air, including particularly the delivery of documents, goods and parcels. The first Complainant is a wholly owned subsidiary of the second Complainant. Each is the registrant of numerous trademarks comprising the designation DHL, either alone or as the distinctive component, such as DHL FREIGHT, DHL SOLUTIONS, DHL EXPRESS and DHL WORLDWIDE PACKAGE EXPRESS (“the DHL marks”).
The DHL marks are notorious all over the world: DHL Operations B.V. v. Ali Kazempour,
WIPO Case No. D2004-1094; DHL Operations B. V. v. Serkan Dikmen,
WIPO Case No. D2006-1426. The first United States of America registration, No.1398896, was in June 1985, comprising the designation DHL in logo form.
The disputed domain name was registered on April 24, 2007 for a period of one year. As at the date of the Complaint, it resolved to a website offering package and mail forwarding services under the banner “DHL MAIL” and under the corporate name “DHL Services Corp.”, with an address in Florida, United States of America and claiming to have been “serving our customers since 1997”. The home page displayed the Complainants’ distinctive DHL logo.
5. Parties’ Contentions
The Complainants seek cancellation of the domain name registration, saying the domain name is confusingly similar to their famous DHL marks; that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Respondent registered and is using the disputed domain name in bad faith.
The Respondent says that she has been the victim of identity theft and that she had no personal knowledge of the disputed domain name until she received a copy of the Complaint. She says she does not own the email address contained in the Register.com database. She denies having acted in bad faith. Having had nothing to do with the domain name, she consents to the remedy requested by the Complainants.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires the Complainants to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered in the name of the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In several cases administered by the National Arbitration Forum in which a respondent has agreed to comply with a complainant’s request for relief, panels have held that they may forego the traditional analysis under the Policy and order the transfer of the domain name, on the footing that no dispute exists on any of the three elements that would require resolution: Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., NAF Case No. FA133625; Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., NAF Case No. FA 212653; Disney Enterprises., Inc. v. Morales, NAF Case No. FA 475191.
In several WIPO cases panels have similarly been prepared to order the transfer of the disputed domain name on the basis of the respondent’s genuine consent, without reviewing the facts supporting the claim: e.g. Williams-Sonoma, Inc. v. EZ-Port,
WIPO Case No. D2000-0207; Slumberland France v. Chadia Acohuri,
WIPO Case No. D2000-0195. In other WIPO cases, apparent consent notwithstanding, panels have proceeded to analyze whether on the evidence the three elements of Policy are satisfied, particularly where there may be some reason to doubt the genuineness or effectiveness of the consent: e.g. Sociйtй Franзaise du Radiotйlйphone-SFR v. Karen,
WIPO Case No. D2004-0386; Eurobet UK Limited v. Grand Slam Co,
WIPO Case No. D2003-0745.
There have also been several cases administered by the National Arbitration Forum involving in particular the ICANN-accredited registrar Nameview in which transfer orders were made on the basis of respondent consent: ThoughtWorks, Inc. v. ThoughtWorks, Inc., NAF Case No. FA934366. See also Norgren, Inc. v. Norgren, Inc. c/o Domain Administrator, NAF Case No. FA670051; Diners Club International Ltd. v. Diners Club International Ltd. c/o Domain Admin, NAF Case No. FA551103; ; Zappos.com, Inc. v. Zappos.com Inc., NAF Case No. FA999674 and KSL Recreation Management Operations, LLC v. KSL Recreation Management Operations LLC, NAF Case No.FA876390.
The consent apparently relied on in these cases was that of the complainant, in the formal capacity of respondent, in the sense that the complainant’s name and contact details appeared in the WhoIs database. This appears to be because the registrar Nameview has an unusual practice in which the name and contact details of the registrant of record are sometimes changed (apparently after receiving notice of the complaint) to reflect those of the complainant.
This Nameview practice was recently discussed in the WIPO case Shon Harris v. www.shonharris.com c/o Whois Identity Shield,
WIPO Case No. D2007-0997. The Panel in this case understands that typically where such ‘Nameview’ cases arise with the Center, the registrant’s name and contact details are changed in the WhoIs database to reflect those of the complainant and these are then confirmed by Nameview in its response to the Center’s usual registrar verification request. This unusual reaction can result in the complainant obtaining actual control over the disputed domain name, and in other cases not. However this may be, the Panel understands that the Center’s current practice in such cases is to request the complainant to confirm in writing whether or not the complainant has obtained actual control over the disputed domain name(s). If this is confirmed, the matter is usually withdrawn. If not, the Panel understands that the Center would usually proceed with the case against the respondent as indicated in the WhoIs at the time the complaint was filed, in part because to require the complainant to amend its complaint in a manner that meant that it was apparently directed to itself would be pointless.
Whether or not such ‘Nameview’ cases fit readily within the traditional conception of “cyberflying” (which would not typically involve a modification to the registrant data to reflect that of the complainant, but rather of a third party), they undoubtedly complicate and in some cases may frustrate proceedings (consistent with an objective of “cyberflying”). Questions of the proper-role of ICANN-accredited registrars aside, such modifications would also suggest an element of bad faith in relation to the persons in control of such domain names, whoever they may be.
It remains to be seen whether panels in cases administered by the Center would in these circumstances consider a consent to transfer by a complainant itself to be sufficiently effective as to warrant dispensing with the traditional analysis under the Policy; that is, as if a respondent had genuinely consented to the relief sought. In the present case a brief analysis will be undertaken, if only because this is not a “cyberflying” case, and because of the unusual situation in which the Respondent finds herself.
A. Identical or Confusingly Similar
For the reasons stated in the almost identical case of DHL Operations B.V. v. Ali Kazempour,
WIPO Case No. D2004-1094 <dhlmail.com>, this Panel finds the disputed domain name to be confusingly similar to the Complainant’s DHL marks. People will undoubtedly wonder whether the disputed domain name is associated in some way with the Complainants: SANOFI-AVENTIS v. Jason Trevenio,
WIPO Case No. D2007-0648.
The Complainants have established this element.
B. Rights or Legitimate Interests
The Respondent disavows any rights or interest in the disputed domain name, since she was unaware of it until she received the Complaint. The Complainants have established this element.
C. Registered and Used in Bad Faith
In the unusual circumstances of this case, there can be no question of impugning the good faith of the Respondent, who appears to have had nothing to do with the registration or use of the disputed domain name and was unaware of it until she received the Complaint.
Whether or not the Respondent’s identity was deliberately “hijacked” by an unknown party for the purpose of shielding their own role in registering the disputed domain name, given the world-wide notoriety of the DHL marks in relation to the delivery of documents, goods and parcels, whoever registered the disputed domain name undoubtedly did so in bad faith and with knowledge of the Complainants rights. The content of the website to which the disputed domain name resolves demonstrates that the domain name is being used in bad faith, intentionally to attract, for commercial gain, Internet users to the website by creating the likelihood of confusion with the Complainants’ DHL marks as to the source of the website.
The Complainants have established that the disputed domain name was registered and is being used by someone in bad faith. Since the Respondent has been the victim of identity theft, this finding should in no way be taken as a reflection on her.
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 <dhl-mailcorp.com> be cancelled.
Alan L. Limbury
Dated: November 7, 2007