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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DHL Operations B.V., DHL International GmbH v. Ebrahim Pour Samandi
Case No. D2009-0579
1. The Parties
The Complainants are DHL Operations B.V. Amsterdam, Netherlands, and DHL International GmbH, Bonn, Germany. Both are represented by Jonas Rechtsanwaltsgesellschaft mbH, Germany.
The Respondent is Ebrahim Pour Samandi of Ahvaz, Khuzestan, Islamic Republic of Iran.
2. The Domain Name and Registrar
The disputed domain name <dhlpost.com> (the "Domain Name") is registered with OnlineNic, Inc. d/b/a China-Channel.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 5, 2009. On May 5, 2009, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the Domain Name. On May 6, 2009, OnlineNic, Inc. d/b/a China-Channel.com 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 Domain Name. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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 May 15, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 4, 2009. The Response was filed with the Center on June 4, 2009.
The Center appointed Warwick Smith as the sole panelist in this matter on June 16, 2009. 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 June 26, 2009, the Panel requested a further statement from the Respondent answering certain questions put by the Panel relating to archived records of web pages at the Domain Name which the Panel had noted on the Wayback Machine at "www.archive.org". In particular, the Panel sought an explanation for the use of the robots.txt software to block access to web pages from 2003 and 2004, and certain explanations relating to a webpage from February 2005 which was accessible on the Wayback Machine. The Panel also requested that the Respondent provide an English translation of certain Persian language text on the February 2005 web page.
The Respondent was requested to provide his Response by July 2, 2009, and time was allowed after that date for the Complainants to challenge the Respondent`s Persian-English translation if they so wished. The time for the Panel to give its decision in the case was extended to July 17, 2009.
The Respondent duly submitted a supplementary statement ("the Respondent`s Supplementary Statement") and translation in response to the Panel`s request, within the time allowed by the Panel. The Complainants did not challenge the Persian-English translation which the Respondent provided.
4. Factual Background
The Complainant companies are members of the DHL group, a world leader in the international express and logistics industry. The group`s activities include the worldwide supply of global air freight and ocean freight services, project freight forwarding, warehousing, distribution logistics, and a European overland transport service.
The Complainants` Trademarks
The Complainants are, between them, the proprietors of numerous registered trademarks around the world which consist of or include the expression "dhl". It is not necessary to refer to them all. It is enough for present purposes to note that the second-named Complainant is the registered proprietor of a stylized "DHL" mark, registered in the Islamic Republic of Iran on October 23, 1993. The first-named Complainant is the registered proprietor of "DHL" marks in numerous jurisdictions, including Germany, Australia, and the European Union.
The Complainant asserted, and the Respondent did not deny, that the trademarks cover a large range of goods and services, including transportation of documents, goods and parcels by land, sea and air, express courier services, packaging and storage of goods, and similar services.
The Complainants` Domain Names
The Complainants own numerous domain names which include the expression "dhl". The principal website is at "www.dhl.com", and websites for specific countries all over the world are accessible from that main website. In Iran, the Complainant group operates a website at "www.dhl.co.ir". That website is operated by an affiliate company, DHL Express.
A member of the Complainant group is also the owner of the domain name <dhlpost.de>. The registration particulars provided by the Complainants for this domain name are in the German language, and it is not clear to the Panel when this domain name was registered.
Complainants` Activities in Iran
According to the Complaint, the Complainants operate from various business locations in the Islamic Republic of Iran. The Complainants` business activities in that country were first established under the designation DHL in 1975, and Iran was the site of the Complainants` first Middle East office.
The Domain Name
The Domain Name was registered on November 20, 2003. According to the Complaint, the Respondent does not own any rights in the name or mark DHL, and the Complainants have not licensed or authorized the Respondent to use the DHL trademark in a domain name.
The Respondent stated that he registered the Domain Name in the ".com" space, because it is the most common top-level domain for websites, email, and networking.
In his Response, the Respondent stated that the Domain Name is made up of the first letters of the words comprising the expressions "Digital Hybrid Language Processing" and "Open Space Technology" ("DHLP" and "OST"). The Respondent explained that his "programming and developing group" started the "DHLP OST" project about 7 years ago (elsewhere in the Response the project was said to have been started in 2003), and that it was originally called "Digital Hybrid Language Processing that is based on Open Space Technology". The project was generally described in the Response as a "computer programming" project, and the Respondent stated that it was started for "free educational purposes and open source developing". The Respondent said that the project name was devised without any thought of the Complainant group at all.
The Respondent alleged in his Response that the Complainant group only began registering numerous "dhlpost" domain names in late 2008 and early 2009.
The Respondent`s Website
The Respondent produced copies of a website at the Domain Name ("the Respondent`s website"), printed on June 2, 2009. The pages from the Respondent`s website simply consisted of a heading "Welcome to dhlpost.com", followed by the words:
"Your account has been created.
You can access your Web site right away using it. Over the next few days, DNS servers all across the Internet will update themselves with your new site name. Once that happens, you will be able to access your site at its permanent address, dhlpost.com."
Immediately below that wording, there appeared a Login section, with space for the site user to key in a password.
Both above and below the text from the Respondent`s website, there appeared disclaimers stating that the website was not affiliated in any way with DHL or DHL Worldwide Express. The disclaimer at the top of the Respondent`s website went on to note:
"DHL is a trademark of DHL Operations BV Amsterdam, NL. This website is for non-commercial use and is a personal and non-profit website."
The wording of the disclaimer which appeared immediately below the Login section was generally to the same effect, but after "DHL Worldwide Express", there appeared the words:
"or any other same names, trademarks.
This website is for non-commercial use and is in no way affiliated with other same names, companies, trademarks etc.
THIS IS A PERSONAL WEBSITE, NOT COMMERCIAL."
In addition to the disclaimers, the Respondent said that the colors and fonts used on the Respondent`s website differ from those used by the Complainants on their various websites.
Annex 41 to the Response consisted of a single page bearing the words (in large font and in different colors) "DHLP" and "OST". Immediately below those words, in smaller font, were the words:
"Digital Hybrid Language Processing Open Space Technology".
The Respondent did not provide any examples of work carried out under the project described in the Response. The stance taken was that the work was not ready for release, and the Respondent did not wish to reveal it until it was ready. As for the meanings of the expressions "Digital Hybrid Language Processing", and "Open Space Technology", the Respondent produced a number of documents to support his position. First, the Respondent produced Yahoo and Google searches on the expression "Hybrid Language Processing". These searches provided links to various third party websites, none of which appears to reproduce precisely the expression "Digital Hybrid Language Processing" (for example, none of the links appeared to use the word "digital", and a number appeared to have the word "natural" added before the words "language processing"). Generally, "Hybrid Language Processing" appears to be an expression used in computer language processing - e.g., "APROL", a "hybrid" combining the features of an array processing language and "lisp dialect".
The expression "Open Space Technology" refers to a particular method of organizing meetings, which appears to be characterized mainly by the absence of any agenda, and by a particularly light-handed form of leadership, or chairmanship. On the face of it, Open Space Technology has nothing to do with computer programming or computer language processing. (the relevant Wikipedia entry states in respect of Open Space Technology: "Technology` in this case means tool вАУ a process; a method. вА¶ OST represents a self-organizing process; participants construct the agenda and schedule during the meeting itself. вА¶")
The Respondent produced a page from a website at "www.2.computer.org" which included a reference to "Hybrid Language Processing in the Spoken Language Translator". This page was headed "Digital Library", and it appears that the webpage was no more than a page downloaded from that section of the website. That was the only document the Panel noted where the word "digital" appeared in reasonably close proximity to the expression "Hybrid Language Processing".
The Respondent did not explain how the concept of "Hybrid Language Processing" ("digital" or otherwise) might be linked to Open Space Technology. One concept appears to be concerned with computer language processing, while the other has to do with organizing meetings of people in the real world (with no apparent connection to computer languages). Apart from the Respondent`s advice that his project was originally named "Digital Hybrid Language Processing that is based on "Open Space Technology", the Respondent did not explain how his project is said to link the two concepts.
Complainants` Cease and Desist Letter
The Complainants` representative sent a cease and desist letter by post and by email to the then-registrant of the Domain Name, Mr. D. Abri, on March 30, 2009. In the letter, the Complainants` representative referred to the Complainants` various DHL trademarks, and called upon Mr. Abri to transfer the Domain Name to the first-named Complainant. The email transmission failed.
The Complainants say that, shortly after the cease and desist letter was sent, the registration details for the Domain Name changed and the Respondent became the registered proprietor of the Domain Name. (The Complainants produced a WhoIs database extract dated April 14, 2009, showing that the Domain Name had by then been transferred to the Respondent.)
On April 14, 2009, the Complainants` representative sent a cease and desist letter to the Respondent, in substantially similar terms to the letter which had been sent to Mr. D. Abri on March 30. The Complainants` representative did not receive any reply from the Respondent.
The Respondent did not deny that he received the cease and desist letter dated April 14, 2009. His explanation for not responding to it was that he preferred to "solve this issue on WIPO Court and response to WIPO".
The Respondent produced a copy of a letter which the Complainants` representative sent by email to the Registrar, on April 8, 2009. The letter referred to the Complainants` claimed rights in the expression "dhl", and to the fact that the Complainants had recently noted the registration of the Domain Name. The letter to the Registrar stated:
"The domain [i.e., the Domain Name] provides several sponsored links to commercial websites of third companies, including competitors of our clients."
No evidence of any such links was provided in the Complaint.
The letter went on to advise that the Complainants` representative had tried to contact Mr. D. Abri at the mail and postal address records provided in the WhoIs particulars for the Domain Name, but that the contact details had failed. The telephone number appearing in the WhoIs particulars for the Domain Name was also stated to be invalid. The Complainants` representative asked the Registrar to provide him with the necessary information as to the true identity and the correct contact details of the registrant of the Domain Name. The Complainants` representative also asked that, if possible, the registration of the Domain Name should be cancelled.
The Respondent stated in his Response that he received a copy of this email from the Registrar on April 9, 2009. He arranged for the registration details for the Domain Name to be updated the following day.
The Respondent also stated in the Response that he and his group had never provided sponsored links to commercial websites of third parties (whether or not competitors of the Complainants).
The Respondent stated that Mr. D. Abri is a former employee of the Respondent, who was fired on December 25, 2008 and who has not since had any responsibility within the Respondent`s group. The Respondent explained that there had also been a move of premises (to Ahvaz City), and that with Mr. Abri`s departure and the change of premises, the Respondent forgot to update the contact details for the Domain Name on the WhoIs database. The Respondent said that the Complainants` representatives` email to Mr. D. Abri had failed because there had been no Login to the relevant email account for a period of four months, and that the absence of any activity on the account had resulted in the automatic suspension of the email account.
The Pages from the Respondent`s Website on the Wayback Machine
The Wayback Machine listed an entry for the Respondent`s website on December 25, 2003, six entries in 2004, and one entry dated February 6, 2005. The only one of these web pages which the Panel could access was the web page from February 2005. Access to the others had been blocked by the use of the robots.txt software.
The February 2005 web page showed that the Domain Name was then pointed to a website at "www.dhlnameh.com". It was partly in English, and partly in Persian, and it was prominently headed:
DAR HAR LAHZEH NAMEH."
Immediately below the welcome, there was a heading "Website News", and a note to site visitors advising that the site operator was then changing its web hosting provider
"because our old free webhosting provider вАШLiveGate.net` has been shut down indefinitely which will result in temporary data loss and shut down our web contents on their free website.
At this time we are using a reliable web hosting company (but not free web hosting) and transferring all lost data to this new provider. вА¶"
There followed some Persian language text, followed by a bold statement "ENTER TO ENGLISH WEBSITE вАШEnglish version coming soon`."
At the top of the first page of the website there was a disclaimer in the following terms:
"Disclaimer: www.dhlpost.com & www.dhlnameh.com are not affiliated in any way with DHL or DHL WORLDWIDE EXPRESS or DHL OPERATIONS BV AMSTERDAM, NL. This website is for non-commercial use and is a personal and non-profit website."
Beneath the Persian language text, there was another disclaimer reading:
"dhlpost.com and dhlnameh.com are in no way affiliated with DHL or DHL WORLDWIDE EXPRESS or other same names, trademarks, etc. This website is for non-commercial use and is in no way affiliated with other same names, companies, trademarks, etc.
THIS IS A PERSONAL WEBSITE, NOT COMMERCIAL."
There followed the words "Our mission is simple: to encourage people to use internet".
The statement "Founded on 31-aug-2004" appeared at the foot of the web page, immediately above the words "DAR HAR LAHZEH NAMEH NON-PROFIT INTERNET GROUP".
The Panel notes that pages dated September 3 and 29, 2004, from the website at "www.dhlnameh.com", which are archived and available on the Wayback machine, contained disclaimers in almost identical terms. For example, the form of disclaimer at the foot of the website, although not containing a reference to the Respondent`s website, was otherwise in precisely the same form as it appeared on the February 2005 web page to which the Domain Name then resolved.
In the Panel`s Procedural Request dated June 26, 2009, the Panel asked the Respondent what "Dar Har Lahzeh Nameh" means in English, and why, in February 2005, the Domain Name was apparently pointed to a website at a domain name consisting of that expression. The Panel also asked how the website at "www.dhlnameh.com" was used to promote or otherwise deal with "Digital Hybrid Language Processing" and/or "Open Space Technology". The Panel asked the Respondent to provide an English translation of the Persian language text on the February 2005 web pages from the www.dhlnameh.com website, and also for an explanation why the robots .txt software was apparently used to block access to the 2003 and 2004 web pages from the Respondent`s website.
The Respondent`s Supplementary Statement
The Respondent`s Supplementary Statement consisted of 3¬љ (three and a half) closely typed pages, with no fewer than 18 annexures.
The Respondent stated that, in English, "Dar Har Lahzeh Nameh" means "letter in every moment". The translation of the Persian text on the February 2005 web page included: "Write letter in LETTER IN EVERY MOMENT. Training the principal of letter writing and writing methods with the samples of different types of contract, forms and written letters."
According to the translation, the website offered the user different types of letters such as administrative, legal, amorous, and family, indeed all types of letters which the site visitor might need. The translation indicated that the operator of the website was developing the data and resources of the website on a regular basis, with a view to expanding the facility for users around the world.
The translation of the Persian language text contained numerous and repetitive statements to the effect that the operator`s group was non-commercial and "cultural", and that it had no competitive purpose and carried on no commercial activities "with other companies with the same names".
The Respondent`s explanation for the absence from the "www.dhlnameh.com" website of any reference to "Digital Hybrid Language Processing" or "Open Space Technology", was simple. The Respondent stated that in February 2005 the Domain Name was not under his control, because accounting and banking payment problems with the Respondent`s local registrar had resulted in a failure to renew the registration of the Domain Name when it expired in November 2004, and by February 2005 it had been transferred to another party. It was that other party who was responsible for pointing the Domain Name to the website at "www.dhlnameh.com".
The Respondent denied any affiliation with, or knowledge of, the operators of the website at "www.dhl.nameh.com".
The Respondent described the relevant sequence of events as follows. On November 11, 2004, he paid funds for the renewal of the Domain Name registration and for the web hosting facility, to the bank account of his local registrar. Because the Domain Name was then in park mode, and he did not log in to the Respondent`s website continually, he did not notice that the registrar had not accepted the request to renew the registration, and had refused payment because of a problem within the registrar`s banking or accounting systems. On February 12, 2005, he received an email from one of his partners, telling him that the Domain Name had been redirected to the website at "www.dhlnameh.com. The Respondent then called the registrar, and was told that payment to renew the Domain Name had not been received, and that the Domain Name had been transferred to another client immediately on the expiry of the "grace" period of 75 days after the November 20, 2004 renewal date. (The Respondent pointed out that the page on the Wayback Machine was dated February 6, 2005, being some 78 days after the expiration date.) The Respondent said that he then contacted that other party, and was told that the other party had bought the Domain Name for USD 1,200 from the local Iranian registrar.
The Respondent said that he then initiated a claim, and after some three weeks of communications between himself and the local registrar, succeeded in having the Domain Name restored to his ownership.
The Respondent said that he did not regain control of the Domain Name until March 2, 2005.
The Respondent confirmed in the Respondent`s Supplementary Statement that he does not post material relating to his DHL POST project online for all users, because it is still in a development state. In an explanation which the Panel found somewhat difficult to follow, the Respondent said:
Finally, the Respondent claimed that he had used the robots.txt software because on one occasion the Respondent`s website had been hacked, and the Respondent was not interested in search engines crawling the secure area of the Respondent`s website until his project was finished completely and ready for public access.
5. Parties` Contentions
The Complainants contended:
1. The Domain Name is identical or confusingly similar to the Complainants` trademarks, trading names, and domain names. The suffix ".com is not to be taken into account in the comparison, and the Domain Name is a mere combination of the Complainants` famous mark DHL and the generic term "post", which is descriptive of the Complainants` services. The Complainants` DHL mark has been incorporated in the Domain Name in its entirety, and the addition of a word which is generally descriptive of the Complainants` services is not sufficient to avoid confusing similarity with the DHL mark. (The Complainants referred to DHL Operations BV v. Ali Kazempour,
WIPO Case No. D2004-1094 (relating to the Domain Name <dhlmail.com>), DHL Operations BV v. Karel Salovsky,
WIPO Case No. D2006-0520 (relating to several domain names, one of which was <dhlecourier.com>), and DHL Operations BV v. DHL Packers,
WIPO Case No. D2008-1694.)
2. The Respondent has no rights or legitimate interests in respect of the Domain Name, having regard to the following factors:
(i) Before the Respondent became aware of the present dispute, the Respondent had not been using either the Domain Name or a name corresponding to the Domain Name in connection with any bona fide offering of goods or services.
(ii) The Complainants` brand name DHL is famous all over the world.
(iii) The Respondent himself does not own any rights in the name or mark DHL. The Complainants have not licensed or otherwise permitted the Respondent to use their well-known and distinctive DHL mark, or to apply for the registration of the Domain Name.
(iv) The Respondent is using DHL as the significant part of the Domain Name and is thereby causing a risk that Internet users will wrongly assume that the Complainants are the owners of the Domain Name (or at least that the Domain Name is economically connected or affiliated with the Complainants).
(v) The Respondent is not generally known by the Domain Name.
(vi) The Respondent has not used the Domain Name for any legitimate, non-commercial or fair purpose.
(vii) The Respondent`s aim in using the Domain Name has been to misleadingly divert consumers, and so abuse the distinctiveness and reputation of the Complainants` famous DHL mark.
3. The Domain Name was registered and is being used in bad faith, having regard to the following factors:
(i) The fact that the Domain Name is presently not used for a clear commercial purpose does not affect the finding of bad faith. In fact, the Respondent is continuing to act in bad faith.
(ii) Because of the international fame of the Complainants` mark, it is inconceivable that the Domain Name was registered without full knowledge of the existence of the Complainants and their marks. Bad faith may be inferred from the registration of a well-known mark (referring to the Caravan Club v. Mrgsale, NAF Decision No. 095314, Axel Springer AG v. Autobild.com,
WIPO Case No. D2005-0554, and DHL Operations PV v. Ali Kazempaur,
WIPO Case No. D2004-1094).
(iii) The Respondent`s bad faith is also shown by the fact that the Domain Name was transferred, and all information as to registrant and contact details were suddenly changed, just after the Complainants had sent a cease and desist letter to the former registrant. The transfer was obviously made in order to impede and obstruct the Complainants` efforts to proceed against a party who was infringing their trademark rights.
(iv) The Panel should not allow what would appear to be an attempt to manipulate the Policy, to circumvent the trademark rights of the Complainants (citing Compucredit Corporation v. Domain Capital,
WIPO Case No. D2007-0407).
(v) The former registrant of the Domain Name provided wrong contact information for the WhoIs database. The provision of false contact information by a respondent when registering a disputed domain name is an indication of bad faith.
(vi) The Respondent`s failure to respond to the cease and desist letter sent to him, is a further indication of the Respondent`s bad faith.
(vii) There is no plausible actual or contemplated use which the Respondent might make of the Domain Name that would not be illegitimate.
The Respondent contended:
1. The Domain Name is not identical or confusingly similar to a trademark or service mark in which the Complainants have rights.
2. The Domain Name reflects the first letters of the words which form the name of the Respondent`s project known as "Digital Hybrid Language Processing [that is based on] Open Space Technology". The initial letters of the words forming the project`s title were used because the Domain Name would otherwise, at 50 characters, have been too long.
3. When registering the Domain Name, the Respondent never thought about the DHL company or "post". His project had nothing to do with cargo or transportation services: the project related to free educational and open source developing, without any commercial purpose.
4. The Respondent has not abused the Complainants` trademarks. Internet users are not likely to associate the trademark holder (the Complainants) with a domain name consisting of the trademark and a negative term [the Response did not explain how the word "post" could be regarded as a negative term].
5. The Respondent operates a registered company Pars in Novin Jooya Co Limited. This company carries out computer programming and software development activities, and those activities are nothing like the Complainants` activities carried out under their DHL mark. The names and logos of DHL and DHL EXPRESS are not similar to the Respondent`s logo and name. The Respondent`s logo colors are blue and black, while the Complainants` logo colors are yellow and red. Also, the Complainants` websites are all in yellow color, while the Respondent`s website is white and blue.
6. The Complainants cannot rely on the registration of the domain name <dhlpost.de>. The Complainants only started to register domain names (in several tlds) in the format "dhlpost. вА¶" long after the Respondent had registered the Domain Name (most of these "dhlpost" domain names were registered by the Complainants at the end of 2008 and in the first month of 2009).
7. The Complainants` DHL name is not a unique name like "Sony", or "Nokia"; it is simply an arbitrarily chosen name formed by combining the first letters from the last names of the group`s original founders. The Respondent has done nothing different in adopting the first letters of the words "Digital Hybrid Language Processing" and "Open Space Technology" for the Domain Name.
8. The Complainants cannot ban the use of the characters "dhl" all over the world just because they have a trademark.
9. The Respondent registered the Domain Name in the ".com" domain name space, because it is the most common top-level domain for websites, email, and networking. Many non-commercial sites use ".com" Internet addresses: they prefer the recognizability of a ".com" domain to a less familiar one.
10. The Respondent has inserted clear disclaimers, in large fonts, in the header and footer of the Respondent`s website.
11. Internet users have never confused the Domain Name with the Complainants` websites or domain names, because the colors and the fonts and content of the Respondent`s website are in no way similar to those employed in the Complainants` business.
12. Specifically with respect to Paragraph 4(a)(ii) of the Policy, the Respondent has a right or legitimate interest in respect of the Domain Name, because of the following:
(i) The Domain Name was registered for use in the Respondent`s DHLP OST project, which was started in 2003. The Domain Name was registered for a non-commercial use, namely the creation of a non-profit website. The Respondent always respects the rights of trademark owners, and he has no interest in the Complainants` business.
(ii) There is nothing to prevent someone registering an abbreviation as a domain name, and that is so notwithstanding that the letters comprising the abbreviation might also be used in a complainant`s trademark or service mark.
13. Specifically with respect to Paragraph 4(a)(iii) of the Policy, the Domain Name was not registered, and is not being used, in bad faith because:
(i) The Domain Name was not registered or acquired primarily for the purpose of selling or renting: it was registered for the Respondent`s non-commercial and educational purpose of his programming and open source project.
(ii) This case is not similar to the cases cited by the Complainants in their Complaint, because in all of those cases the complainants had unique names, and not acronyms. The Respondent cannot be penalized for using an acronym as the Domain Name.
(iii) The Respondent has done nothing wrong, and has not broken any ICANN rules. In summary, the Domain Name is the Respondent`s legitimate acronym for its project name, and he registered the Domain Name for that project. His project is not like any of the goods or services for which the Complainants have registered trademarks or service marks.
(iv) There is no merit in the Complainants` claims based on alleged false contact details in the WhoIs particulars for the Domain Name. The Domain Name was until December 25, 2008 the responsibility of a former employee, Mr. D. Abri. Following the termination of Mr. Abri`s services, and the Respondent`s move of premises to Ahvaz City, the updating of the WhoIs particulars was delayed, and the email from the Complainants` representative was rejected because the free Yahoo email had been terminated automatically after four months` non-use. In fact, the Respondent never received the email directed to Mr. D. Abri because its WhoIs information had not been updated, and the relevant email address was not operative. On receipt of a letter from the Complainants` representative asking that the Registrar provide the Complainants` representatives with the necessary information as to the true identity and correct details of the registrant of the Domain Name, the Registrar forwarded the letter from the Complainants` representatives to the Respondent, asking the Respondent to update the WhoIs particulars. The Respondent promptly did so, and there is no sinister inference to be drawn from the claimed "sudden" change in the WhoIs particulars.
(v) The Respondent`s failure to reply to the Complainants` representatives` cease and desist letter is not indicative of bad faith. The Respondent simply preferred to solve the issue through proceedings under the Policy.
(vi) There has never been any substantive change in the ownership of the Domain Name вАУ in reality, the owner of the Domain Name is the Respondent`s programming DHLP - OST team.
14. The Complainants have acted in bad faith in relation to the Domain Name. They are seeking to register about 70 "dhlpost" domain names in several TLD`s, and their intention is to seize the Domain Name for their collection. That is evidenced by the false allegation they made (in their letter to the registrar) that the Respondent`s website has contained sponsored links to the websites of third parties, including those of some of the Complainants` competitors. No such links have ever existed.
The Respondent completed the Response with a plea to the Panel to judge the case fairly.
6. Discussion and Findings
A. What the Complainant must prove under the Policy - General
Under Paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
"вА¶ 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".
B. Identical or Confusingly Similar
The Complainants have proved this part of their Complaint. Between them, the Complainants are the proprietors of numerous trademarks or service marks comprising or including the expression "dhl", and that mark is included in its entirety in the Domain Name. Numerous UDRP panels deciding cases under the Policy have held that the incorporation of a complainant`s well-known mark in full in a disputed domain name is a compelling factor in favor of a finding of confusing similarity вАУ the case DHL Operations BV v. Ali Kazempour (supra) cited by the Complainants is just one example of the application of that rule of thumb. To similar effect, see Nokia Group v. Mr. Giannattasio Mario,
WIPO Case No. D2002-0782 and The Ritz Hotel v. Damir Kruzicevic,
WIPO Case No. D2005-1137.
In this case, the addition of the word "post" in the Domain Name serves only to exacerbate the likely confusion caused by the incorporation of the Complainants` DHL mark in the Domain Name. "Post" is either an exact descriptor or a very close descriptor of one of the main services provided by the Complainants under their mark.
Under this part of the Policy, the Panel is only concerned with the resemblance between the Domain Name and the marks on which the Complainants rely. The task is limited to comparing the mark and the Domain Name visually and phonetically, and then comparing the respective "ideas", or impressions, which each conveys. In this case, "dhl" is clearly the dominant and distinctive part of the Domain Name, and it is of course identical to the Complainants` mark. The Domain Name conveys almost exactly the same impression as the Complainants` mark, particularly when the mark is used in respect of the Complainants` courier services.
Applying that approach, the Domain Name is obviously confusingly similar to the Complainants` mark. Matters such as the disclaimers posted on the Respondent`s website, and the different natures of the parties` activities, might be relevant under paragraphs 4(a)(ii) and/or 4(a)(iii) of the Policy, but they are not relevant to the inquiry under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of Paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The consensus view of WIPO panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized at paragraph 2.1 of the Center`s online document "WIPO Overview of WIPO Panel Views on Selected UDRP Questions", as follows:
"A Complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4 (a)(ii) of the UDRP".
In this case, the Complainants have not authorized the Respondent to use their DHL mark, whether in a domain name or otherwise. The Respondent is not commonly known by the Domain Name, and he does not claim any trademark or other rights in the expression "dhlpost". The Respondent expressly disavowed any commercial intentions for the Respondent`s website, and on his own evidence he has not used the Domain Name in connection with any offering of goods or services (or made any demonstrated preparations to do so) in the past.
That combination of circumstances sufficiently establishes a prima facie case that the Respondent has no right or legitimate interest in respect of the Domain Name. The evidentiary onus therefore shifts to the Respondent to prove, by plausible evidence, that he does have such a right or interests.
The Respondent has failed to discharge that evidentiary onus. The Panel has reached that view for the following reasons:
1. The DHL mark is well-known around the world, including in Iran, and the Respondent was well aware of it when he registered the Domain Name. (The Respondent has not suggested otherwise, and the disclaimers posted on the Respondent`s website effectively confirm his knowledge of the Complainant group.)
2. It could not possibly have escaped the Respondent`s notice that the last four letters in the Domain Name spell the English word "post", which is a fairly apt descriptor of one of the Complainants` principal services carried out under their DHL mark.
3. The Respondent must have appreciated that it could be seen as a rather remarkable coincidence for someone working on a project having nothing to do with the Complainants or their services to come up with an acronym for his project which spells out, precisely, the expression "DHL" followed by an almost exact descriptor of one of the DHL group`s main services. He must have realized that the Panel`s initial reaction might be one of skepticism, and that he would be well-advised to support his claim by producing contemporaneous documents and/or evidence from independent third parties, demonstrating the veracity of his claims. The Respondent did not do that. There was no contemporaneous document going back to the 2003 registration date, no letter, memorandum or invoice from a third party relating to the claimed project, and no sworn testimony from any independent third party verifying the Respondent`s position.
4. One coincidence might be sufficiently explained by an innocent, bona fide, registrant of a disputed domain name. But two coincidences in the same case is likely to be too much for most panels to swallow. When the Panel looked at the Wayback machine in this case, he found that in February of 2005 the Domain Name resolved to a website at "www.dhlnameh.com", which prominently displayed the words "Dar Har Lahzeh Nameh". That expression apparently means "letter in every moment" in the Persian language, and the website clearly had no connection with "Digital Hybrid Language Processing", or "Open Space Technology".
5. The Respondent claimed that he has had no connection with the operators of the website at "www.dhlnameh.com", and that the Domain Name only resolved to that website because its operators wrongfully secured control of the Domain Name for a short period between November 20, 2004 and March 2, 2005. But the Respondent`s website, as it currently appears, contains disclaimers expressed in words which are almost identical to the words used in the disclaimers which appeared on the website at "www.dhlnameh.com" in early February 2005 (and, as the Wayback machine shows, in September of 2004).
That may be another coincidence, or there may be some explanation for it. But if there is an innocent explanation, it could have and should have been provided by the Respondent. It was not, and as the evidence stands the identity (or near identity) of the disclaimer language used in the "www.dhlnameh.com" website of February 2005 and in the Respondent`s website, stands only as another unexplained coincidence. (The Panel notes in that regard that the Respondent`s claims relating to the events which he said occurred between November 2004 and March 2005 were not corroborated by the production of copies of relevant correspondence, or other contemporaneous documents.) Overall, there were too many inadequately explained coincidences in the Respondent`s case for it to be credible.
6. The Respondent`s explanation for his choice of the project name "Digital Hybrid Language Processing that is based on Open Space Technology", was vague and difficult to follow. There was no explanation for the inclusion of the opening word "Digital", nor any explanation as to how the concept of Open Space Technology is said to be linked to the subject of computer language processing. Nor was there any evidence of work done by the Respondent in pursuance of his alleged project.
7. The Respondent`s failure to respond to the Complainants` cease and desist letter, which he acknowledges having received, did not add to the credibility of his case. People who receive unjustified demands to hand over things that they own do not normally just ignore those demands.
8. The Respondent registered the Domain Name as long ago as November 20, 2003. That is not far short of six years ago, and if the Respondent genuinely intended to set up an active website dealing with "Digital Hybrid Language Processing based on Open Space Technology" (whatever that might mean), one would have expected the Respondent to have done so by now. The Respondent provided no explanation for the delay, nor any documents proving that any work has been done at all.
The Complainants succeed on this part of the Complaint.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent`s] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant`s trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent`s] website or other on-line location, by creating a likelihood of confusion with the complainant`s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent`s] website or location or of a product or service on [the respondent`s] website or location.
The Complainants also succeed on this part of their Complaint, substantially for the reasons set out in section 6C of this decision.
The Complainants` DHL mark is well-known around the world, and "post" is a fairly apt descriptor of one of the Complainants` best known services provided under that mark. The Respondent was aware of the Complainants when he registered the Domain Name, and the Respondent`s reasons for his registration and apparent non-use of the Domain Name, unsupported as they are by corroborating evidence, are not plausible.
On the evidence, the Respondent appears not to have used the Domain Name for any purpose other than to point it to a website (the Respondent`s website) which displays nothing of substance except disclaimers of any connection between the site and the Complainant group. However, passive holding of a disputed domain name can in appropriate circumstances constitute bad faith registration and use вАУ see in that regard, Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003, and the numerous panel decisions which have applied that case. The critical question to be asked in such cases is usually: "can the panel conceive of any circumstances in which the disputed domain name could be used which would not result in a breach of the complainant`s rights?" In the circumstances of this case, the Panel accepts the Complainants` submission that it is difficult to conceive of any use of the Domain Name which would not result in confusion or deception. The very substantial number of Internet users who are familiar with the Complainant group and its services, including many such people in Iran, would immediately recognize the "DHL" part of the Domain Name, and mistakenly associate the Domain Name with the Complainants. That mistaken association would undoubtedly be reinforced by the use of the word "post" in the Domain Name. (The Panel rejects the Respondent`s claim that no confusion has resulted in fact. None may have been notified to the Respondent, but the Respondent appears to have made little or no use of the Domain Name, so that would hardly be surprising. And the Domain Name is just too similar to the Complainants` DHL mark (especially when used in respect of its courier services) for the "no confusion in fact" assertion to be believable.)
In the absence of any better explanation, the Panel concludes that the Respondent probably registered the Domain Name for the purpose of selling it to the Complainants at a profit. Pointing the Domain Name to an otherwise inactive website containing "non-commercial" and "non-profit" statements, has the appearance of an attempt to lay the groundwork for a defense under paragraph 4(c)(iii) of the Policy while the Respondent sat back and waited for an approach from the Complainants to acquire the Domain Name. The only purpose the Respondent might have had for doing that, would have been the bad faith purpose which is described at paragraph 4(b)(i) of the Policy. In the absence of any plausible response, the Panel is driven to the conclusion that that was indeed the Respondent`s purpose in registering the Domain Name.
E. Respondent`s Allegation of Bad Faith on the Part of the Complainants
The Complaint has been successful, so the Respondent`s allegation that it was brought in bad faith must be dismissed. The Complainants` motive for bringing the proceeding, and their failure to pursue in their Complaint an allegation made in their letter to the Registrar sent before the commencement of the proceeding (suggesting that sponsored links to third party websites have appeared on the Respondent`s website), are not, having regard to the outcome of the Complaint, relevant. Either the Complainants had a valid Complaint under the Policy or they did not, and the Panel has found that they did.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders (in accordance with the Complainants` wish expressed in the Complaint) that the domain name <dhlpost.com> be transferred to the first-named Complainant, DHL Operations BV.
Dated: July 17, 2009