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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DHL Operations B.V, Deutsche Post AG v. DHL Staff
Case No. D2009-0618
1. The Parties
The Complainants are DHL Operations B.V. of Amsterdam, the Netherlands, and Deutsche Post AG of Bonn, Germany, represented by Jonas Rechtsanwaltsgesellschaft mbH, Germany.
The Respondent is DHL Staff of Naples, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <dhl-post.com> is registered with Melbourne IT Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 8, 2009. On May 8, 2009, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the disputed domain name. On May 11, 2009, Melbourne IT Ltd 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" 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 Respondent did not submit any response. Accordingly, the Center notified the Respondent`s default on June 8, 2009.
The Center appointed Simon Minahan as the sole panelist in this matter on June 14, 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.
4. Factual Background
The Complainants are affiliated companies the first being a subsidiary of the second and being based in Amsterdam, the Netherlands and Bonn, Germany respectively. They are the principal entities of a world wide group of companies conducting an international and intra-national communication, transport, logistics and postal services business in more than 220 countries and territories by reference to the trade mark DHL, which business was commenced in the United States ("USA") 40 years ago.
The Complainants hold some 34 trade mark registrations including international registrations and registrations in various jurisdictions including Germany, the European Community, the USA, Canada, Japan and the United Kingdom of Great Britain and Northern Islands and operate websites under various domain names including, in particular <dhl.com> and <dhl-usa.com>.
In addition the DHL group operates thousands of trucks and aeroplanes throughout the world branded with DHL livery and maintain numerous offices bearing DHL signage in cities all over the world.
DHL when used in association with postal, delivery, logistics, communication and travel services is a well-known trade mark.
The Respondent did not respond to the Complaint. It has no affiliation or commercial relationship with the Complainants or their group. The record contains copies of correspondence with the Complainant which demonstrate that the registration of the <dhl-post.com> domain name the subject of this complaint includes a false contact address in Naples, Florida USA.
5. Parties` Contentions
1. The domain name <dhl-post.com> is confusingly similar to the Complainants` DHL trade mark and its various registrations. In support of this they contend the addition of the generic top level domain suffix ".com" is to be disregarded citing among other UDRP decisions Pomellato S.p.A v. Richard Tonetti,
WIPO Case No. D2000-0493 and DHL Operations B.V v. zhangyl,
WIPO Case No. D2007-1863.
Further, introduction of the generic descriptive word or suffix "-post" in the domain name does not function to distinguish it from the Complainants` DHL mark nor preclude confusing similarity but rather reinforces it, given the association with the Complainants undertaking and the Complainants` own marks incorporating DHL. The Complainants refer to numerous UDRP arbitration decisions confirming this contention including, notably, decisions involving the DHL brand: DHL Operations B.V v. Ali Kazempour,
WIPO Case No. D2004-1094; DHL Operations B.V v. Karel Salovsky,
WIPO Case No. D2006-0520 and DHL Operations B.V v. DHL Packers,
WIPO Case No. D2008-1694.
2. The Respondent has no rights or legitimate interests in the domain name. The Complainants state that they have no affiliation or connection with the Respondent or any party generally known by the domain name <dhl-post.com> nor have they licensed the Respondent to use the DHL mark. They further state that the Respondent prior to the Complaint was not making use of the domain name in connection with any bona fide offering of goods and services. Finally they contend that the coverage fame of their DHL mark means the Respondent could not have any right or legitimate interest in the DHL mark which constitutes a significant component of the domain name.
3. The Respondent has registered and used the domain name in bad faith because:
- At the time of registration of the domain name, the Respondent could have had no legitimate interest in the domain name, incorporating as it does the Complainant`s famous DHL mark, in which no one but the Complainants could have an interest.
- DHL being a famous mark, the Respondent must have registered the domain name knowing of the Complainants` interest and its own lack of interest (e.g. DHL Operations B.V v. Ali Kazempour,
WIPO Case No. D2004-1094, among numerous other citations).
- The Respondent supplied false address details in the registration.
- The Respondent used a deceptive alias "DHL Staff" in conjunction with the false address in registration to conceal his, her or its identity.
The Respondent did not reply to the Complainants` contentions.
6. Discussion and Findings
The Panel finds all the matter set forth in the section on Factual Background to be established.
A. Identical or Confusingly Similar
The Panel finds that the domain name is confusingly similar to the Complainants` DHL trade mark and various registered trade marks incorporating the "dhl" element as the domain name fully incorporates the trademark, and adds only the descriptive word "post" which itself is related to the trademark and does not dispel a finding of confusing similarity.
B. Rights or Legitimate Interests
The Panel accepts the Complainant`s prima facie case that the Respondent lacks rights or legitimate interests in the domain name as set out above.
The Panel further notes that at the time of the writing of the decision, no use was being made of the domain name, a search of which revealed it was linked with a webpage with a reference to "dhl-post", and offered no content concerning any business or other undertaking.
As such, the Panel finds for the Complainant under this element as the Respondent has not successfully rebutted the Complainant`s prima facie showing of the Respondent`s lack of rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
In the circumstances, the Panel accepts the domain name was registered and is being used in bad faith taking into account the domain name`s incorporation of the Complainant`s trademark, the Panel`s finding of the lack of the Respondent`s rights or legitimate interests therein, and the likelihood that the Respondent registered and used the domain name with the Complainant`s trademark in mind.
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-post.com> be transferred to the Complainant
Dated: July 2, 2009