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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Deutsche Post AG v. Yonghua Zhang

Case No. D2008-0326

 

1. The Parties

The Complainant is Deutsche Post AG, Bonn, Germany, represented by Jonas Rechtsanwaltsgesellschaft mbH, Germany.

The Respondent is Yonghua Zhang, Shenzhen, China.

 

2. The Domain Name and Registrar

The disputed domain name <dpwn.mobi> (the “Domain Name”), is registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn.

 

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2008 electronically and in hardcopy on March 6, 2008. On March 7, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name at issue. On March 10, 2008, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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”).

3.2 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 March 17, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 6, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 7, 2008.

3.3 The Complainant submitted the Complaint in English and therein requested that English be the language of the proceedings. On March 10, 2008, the Center invited the Respondent (in both the Chinese and English languages) to comment on the Complainant’s request. All subsequent communications from the Center were in both Chinese and English. On March 17, 2008, the Center noted that the Respondent had not communicated any reply to the Complainant’s request for the proceedings to be conducted in the English language. Accordingly, the Center notified the Complaint as filed in English and noting that it would accept a Response in English or Chinese and would appoint a Panel familiar with both languages mentioned; discretion as to the issue of the language of the proceedings was to be determined by this Panel.

3.4 The Center appointed Dr. Colin Yee Cheng Ong to act as sole panelist in this matter on April 15, 2008. The Panel finds that it was properly constituted. It 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

4.1 The Complainant’s registered name is “Deutsche Post AG” and the company was registered in the Company Register under No. 6792 by the “Amtsgericht Bonn”. The Complainant provided evidence to show that according to this registration, the subject of the Complainant’s business is the provision of services in the field of communication, transport, logistics and, in particular postal services.

4.2 The Complainant is the legal successor to the former German state-owned German Federal Post Office (“Deutsche Bundespost”) which was privatized in 1994. It internationally operating is under the trade name “Deutsche Post World Net” and its integrated Deutsche Post, DHL and Postbank companies offer tailored, customer-focused solutions for the management and transport of goods, information and payments. According to the Complainant, the DPWN Deutsche Post World Net is the world’s largest logistics provider today and is well-known all over the world. It currently has some 500,000 employees in more than 220 countries and territories.

4.3 The Complainant submitted a short company profile of the Complainant’s group DPWN (Deutsche Post World Net) as published by Transport Intelligence Ltd., which showed DPWN as one of the world’s leading providers of expert research and analysis dedicated to the global logistics and express industry.

4.4 The Complainant provided proof that it is the sole legal holder of numerous trademarks worldwide of the designation DPWN or DEUTSCHE POST WORLD NET or marks which contain this designation as distinctive and significant component.

The Complainant has annexed to its Complaint a long list of the trademarks, which include the following word marks:

German Trademark Registrations

No. 30048866.1 DPWN in classes 09; 12; 14; 16; 25; 28; 35; 36; 38; 39; 42 (filing date 30/06/2000);

No. 39969227 DEUTSCHE POST WORLD NET in classes 16; 35; 36; 39 (filing date 05/11/1999);

United States of Amercia Trademark Registrations

No. 2833538 DPWN in classes 9; 12; 14; 16; 25; 28; 35; 36; 38; 39; 42 (filing date 04/08/2000);

No. 2982378 DEUTSCHE POST WORLD NET in class 38 (filing date 26/04/2000);

Australian Trademark Registrations

No. 845380 DPWN in classes 9; 12; 14; 16; 25; 28; 35; 36; 38; 39; 42 (filing date 07/08/2000);

No. 829722 DEUTSCHE POST WORLD NET in classes 9; 12; 14; 16; 25; 28; 35; 36; 38; 39; 42 (filing date 29/03/2000);

Canadian Trademark Registration

No. 597741 DPWN in classes 09; 12; 14; 16; 25; 28; 35; 36; 38; 39; 42 (filing date 04/08/2000);

European Community Trademark Registrations

No. 1733021 DPWN in classes 9; 12; 14; 16; 25; 28; 35; 36; 38; 39; 42 (filing date 30/06/2000);

No. 1563246 DEUTSCHE POST WORLD NET in classes 9; 12; 14; 16; 25; 28; 35; 36; 38; 39; 42 (filing date 17/03/2000);

International Registrations (designating, inter alia, China)

No. 761496 DPWN claimed in 53 countries in classes 09; 12; 14; 16; 25; 28; 35; 36; 38; 39; 41; 42 (filing date 31/10/2000);

No. 742928 DEUTSCHE POST WORLD NET claimed in 49 countries in classes 09; 12; 14; 16; 25; 28; 36; 38; 39; 42 (registration date 04/08/2000);

No. 736227 DEUTSCHE POST claimed in 43 countries in classes 06; 08; 09; 16; 20; 25; 28; 35; 36; 38; 42 (registration date 10/05/2000);

4.5. The Complainant provided further evidence that it is the owner of various domain names including the mark DPWN such as <dpwn.de>, <dpwn.net>, <dpwn.com> and <dpwn.info>. The Complainant’s web presence accessible under “www.dpwn.com” showed that internationally, the Complainant is the head of the world’s largest logistics servious group: DPWN, and that its integrated Deutsche Post, DHL and Postbank companies offer worldwide transportation services of goods, information and payments. The Complainant transports and delivers millions of mailings and parcels throughout the world including in China.

 

5. Parties’ Contentions

A. Complainant

5.1 The Complainant contends that the Domain Name is identical or confusingly similar to a trademark in which it holds rights for the following reasons:

(i) The Domain Name in dispute reproduces precisely and entirely the DPWN trademark and is legally identical with the Complainant’s trademark DPWN and confusingly similar to the Complainant’s trademarks and domain names which incorporate DPWN and DEUTSCHE POST WORLD NET. The disputed Domain Name <dpwn.mobi> fully incorporates the Complainant’s trademarks DPWN and as such, the disputed Domain Name is (virtually) identical to the highly distinctive DPWN marks in which the Complainant has exclusive rights all over the world.

(ii) That it is commonly accepted that generic top level domains as “.com”, “.net” or “.mobi” do not produce any distinctiveness as the public will recognise these parts as a mere description of the generic type of the domain name (as quoted in the Complaint). The addition of the gTLDs which are required for registration of the domain names have no distinguishing capacity in the context of domain name and do not alter the value of the trademark represented in a domain name. Therefore, such inclusion must not be taken into account in assessing the identity or similarity between the disputed domain name and the Complainant’s marks (Sociйtй Gйnйrale and Fimat International Banque v. Lebanon Index/La France DN and Elie Khouri, WIPO Case No. D2002-0760; New York Life Insurance Company v. Arunesh C. Puthiyoth, WIPO Case No. D2000-0812).

(iii) That the Domain Name <dpwn.mobi> is confusingly similar to the Complainant’s registered trademark DEUTSCHE POST WORLD NET since the contested Domain Name <dpwn.mobi> is a simple abbreviation of the protected designation “Deutsche Post World Net”. The Complainant also contends that its worldwide customers access the Internet presence of the “Deutsche Post World Net” group under its domain names <dpwn.com>, <dpwn.info> or <dpwn.net>. Thus, the public will automatically think that the disputed Domain Name is also connected to the Complainant.

5.2 The Complainant contends that the Respondent has no legitimate rights and interests in the Domain Name for the following reasons:

(i) Before the Respondent became aware of the conflict, the Respondent had not used or made demonstrable preparations to use the Domain Name or any name corresponding to the Domain Name in connection with a bona fide offering of goods and services.

The Respondent has not been commonly known under the Domain Name <dpwn.mobi>.

(ii) The Respondent does not own any rights in the mark DPWN or DEUTSCHE POST WORLD NET. The Complainant had not licensed or otherwise permitted the Respondent to use its company name or trademarks or to apply for the registration of the Domain Name in dispute. As such, the Respondent should not be considered as having any legitimate interest in the distinctive worldwide trademarks DPWN and DEUTSCHE POST WORLD NET.

5.3 The Complainant, lastly, contends that the Domain Name was registered and is being used in bad faith for the following reasons:

(i) The Domain Name <dpwn.mobi> was created on September 26, 2006. Neither the Respondent nor any other person not connected to the Complainant had a legitimate interest in registering the Complainant’s famous trademark DPWN as a Domain Name. Therefore, it was not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the Domain Name.

(ii) The Complainant’s trademarks and domain names DPWN and DEUTSCHE POST WORLD NET listed under Section V. A. 1-3 have been widely used by the Complainant’s internationally operating group Deutsche Post World Net for many years and are well-known throughout the world. As such, it is inconceivable that the registration for <dpwn.mobi> was made without full knowledge of the existence of the Complainant and its marks. The Complainant referred to several UDRP decisions in which it was stated that bad faith may be inferred from the registration of a well-known mark in DHL Operations B.V. v. Ali Kazempour, WIPO Case No. D2004-1094.

(iii) That the disputed Domain Name <dpwn.mobi> was not registered in good faith by the Respondent is also shown by the fact that the Respondent failed to respond to the Complainant’s cease and desist letter of February 25, 2008.

The Complainant requests a decision that the Domain Name be transferred to the Complainant.

B. Respondent

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

 

6. Discussion and Findings

6.1 Language

The Complaint was filed in the English language. As noted above in paragraph 3.3 the Respondent was invited to comment on this fact. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Center has been informed by the concerned registrar that the language of the registration agreement for the disputed Domain Name is Chinese. The default language of the proceeding is Chinese, being the language of the Domain Name Registration and Service Agreement, pursuant to the paragraph 11(a) of the Rules, and also in consideration of the fact that there is no express agreement to the contrary by the parties.

However, the Complaint was submitted to the Respondent in the English language but there was neither a response nor any objection made by the Respondent. Although the Chinese language is the language of the registration agreement for the Domain Name, the Complainant asserts that English should be the language of the proceeding.

According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration to inter alia, the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.

In the present case, the Respondent has not objected to English as the language of this proceeding. Although the inability of any Complainant to communicate efficiently in the Chinese language cannot be a proper legal basis for not adopting the chosen language of proceedings, the Panel views that it is very significant that there has not been an objection made by the Respondent at all on the issue of language. The Panel considered this issue carefully bearing in mind the discretion given to him by paragraph 11(a) of the Rules. Therefore, in consideration of all the above circumstances, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of proceeding.

The Panel finds that the proceedings have been conducted in accordance with the Rules and the Policy. Having gone through the series of communications as set out above under the section on procedural history, the Panel concludes that the Center has notified the Respondent of this proceeding and has discharged its responsibility under paragraph 2(a) of the Rules.

6.2 The Panel has reviewed the Complaint together with its annexes and, in the light of this material, the Panel finds as set out below.

6.3 This Panel does not find any exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.

6.4 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy (see, for example, PRL USA Holdings, Inc. v. Yan Shif, WIPO Case No. D2006-0700). Namely, the Complainant must prove that:

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

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

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

6.5 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”. Therefore, in a case where a respondent fails to put in a response, a panel may draw negative inferences from the respondent’s default (see paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions).

Where the Respondent chooses not to present any such evidence to dispute the claims of the Complainant, an inference may be made that such evidence would not have been favorable to the Respondent, or that he accepts the factual claims of the Complainant, or even that he does not wish to respond or defend his perceived interest in the disputed Domain Name. (See, Caterpillar Inc. v. Spiral Matrix/ Kentech, Inc.,/ Titan Net/ NOLDC, Inc, WIPO Case No. D2006-0808).

A. Identical or Confusingly Similar

6.6 Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.

6.7 In line with such provision, the Complainant must prove two limbs, i.e. it enjoys the trademark rights; and the disputed Domain Name is identical with or confusingly similar to its trademark or service mark. The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, usually considered in trademark infringement (see, for example, Ebay Inc. v. Wangming, WIPO Case No. D2006-1107).

6.8 The Complainant has appended to the Complaint a long list of trademarks that incorporate its DPWN trademark. It is quite clear that the Complainant is the owner of a large number of trademarks in various jurisdictions that are comprised of the word mark DPWN. A number of these have already been listed in this decision. Given this, the Panel has little difficulty in concluding that the Domain Name is confusing similar to trademark in which the Complainant has rights. The Panel agrees with the Complainant that the addition of the gTLD “.mobi” is not a distinguishing feature and does not have an impact on the likelihood of confusion. It is well established that the specific top level of a domain name such as “.com”, “.org”, “.net”, or “.mobi” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (See eBay Inc. v. Akram Mehmood, WIPO Case No. DAE2007-0001).

6.9 In the circumstances, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

6.10 At the heart of the Complaint is the Complainant’s contention that the Respondent has taken the mark of the Complainant with a view to attracting Internet users to its website. As described below, the Panel accepts that under the circumstances of this case, such activity does not provide the Respondent with a legitimate interest in the Domain Name.

6.11 According to paragraph 4(b) (ii) of the Policy, the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the contested Domain Name.

Paragraph 4(c) of the Policy requires the Complainant to prove that the Respondent has no right or legitimate interest in the disputed domain name. However, it is the prevailing consensus view among panelists that where a complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack a legitimate interest in the domain name.

6.12 As previously held by other UDRP Panels, “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant. ” (See eBay Inc. v. Akram Mehmood, WIPO Case No. DAE2007-0001 and F. Hoffmann-La Roche AG v. Gustavo Guardo, WIPO Case No. D2007-1550).

6.13 However, even if this assumption is correct, it does not assist the Respondent. As paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions makes clear, the question of whether a reseller (if indeed that is what the Respondent is, noting that the Respondent’s website contains marks apparently of a third party nature and seemingly unrelated to the Complaint’s mark or postal services in general) can have a right or legitimate interest in a disputed domain name that incorporates the name of the products he sells has been the subject of much debate.

6.14 Further, as another panel had held in the case of Owens Corning v. NA, WIPO Case No. D2007-1143, if a respondent wants to argue that it has a legitimate interest in a domain name on this basis, it is then for the respondent to positively advance that case and to bring forward evidence in support (see paragraph 6.21(ii) of that decision).

6.15 The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name. There is no evidence on the record of this proceeding to suggest that the Respondent has been commonly known by the disputed domain name, or that the Respondent has made non-commercial or fair use of the name. The Respondent has also not used the disputed domain name in connection with a bona fide offering of goods or services. The Panel thus finds that the Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name which is identical the Complainant’s mark., which the Respondent has not rebutted.

6.16 Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph 4(a)(ii) is also satisfied.

C. Registered and Used in Bad Faith

6.17 The Panel accepts the Complainant’s contention that the Respondent registered the Domain Name in the knowledge of the Complainant’s business and its use of the DPWN mark. This is inherently probable given the undisputed fame or usage of the DPWN and DEUTSCHE POST WORLD NET marks worldwide.

6.18 Paragraph 4(b) of the Policy provides a list of examples of evidence of bad faith registration and use. Paragraph 4(b)(iv) refers to use of a domain name to intentionally attempt to attract for commercial gain users to a website by creating a likelihood of confusion with a complainant’s mark as to the source of a website.

6.19 The Panel notes that the Complainant's DPWN mark appears to be in wide use, and the Complainant owns and operates websites at a number of domain names which incorporate that mark in its entirety. The disputed Domain Name was registered some years after the Complainant registered and began using its DPWN mark, and the Respondent has proffered no reason for it registration. The disputed Domain Name, although it contains some limited content including certain unexplained references to third party trade marks, it does not give the appearance of being in active use. Although there is no direct evidence as to whether the Respondent has generated income from this apparently rather limited use of the disputed Domain Name, the Panel does not exclude that possibility. Although in general a four letter domain name such as that at issue in the present dispute at least raises the possibility that it may have been registered for some purpose unrelated to the Complainant's mark, this appears unlikely in the present case in view of the widespread use of that mark, the global nature of the Complainant's business, and the Complaint's international registration of its trademarks in numerous countries including the Respondent apparent country of residence, China. In these circumstances, it would have behooved the Respondent to at the least provide an explanation for its registration of this particular disputed Domain Name. The Respondent has not done so. On balance, the Panel is satisfied that the Respondent knew or at least should have known of the Complainant's mark when it registered the disputed Domain Name, and there is simply no evidence before the Panel that the Respondent is using the disputed Domain Name in good faith.

6.20 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy. This is sufficient to dispose of this matter in favour of the Complainant. However, the Panel would also add one further point before drawing this decision to a close.

6.21 In coming to its decision the Panel has not given any weight to the Complainant’s contention that the failure on the part of the Respondent to respond to its “cease and desist letter” is also evidence of bad faith. The Panel accepts that the decision of the panel in America Online Inc. v. Viper, WIPO Case No. D2000-1198 suggests that this was one of a number of factors that was taken into account on the issue of bad faith registration and use in that case. Nevertheless, this is something that a panel should only do with great care. There may, indeed, be occasions where a failure to respond to a factual allegation in such a letter may tell against a respondent. However, that will depend upon the exact nature of the allegation and all the circumstances of the case. Also at all times it must be remembered that a respondent is under no obligation to respond to such a letter. It is always open to a respondent to sit back and make a complainant prove its case.

6.22 Further, if a complainant wants a panel to draw an adverse inference from a failure on the part of a respondent to respond to a “cease and desist letter” or any other “letter before action”, it is essential that the complainant puts that letter before the panel so that it can properly consider the same. The Complainant has failed to do this in this case. Nevertheless, the Panel has been able to conclude that the Respondent registered and used the Domain Name in bad faith without reliance on this material.

 

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, <dpwn.mobi> be transferred to the Complainant.

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Dr. Colin Yee Cheng Ong
Sole Panelist

Dated: May 4, 2008