DPDgroup International Services GmbH & Co v Palos Mikanos
WIPO Case No. D2024-4948
•23-01-2025
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
DPDgroup International Services GmbH & Co v. Palos Mikanos
Case No. D2024-4948
1. The Parties
The Complainant is DPDgroup International Services GmbH & Co, Germany, represented by Fidal, France.
The Respondent is Palos Mikanos, Greece.
2. The Domain Name and Registrar
The disputed domain name <dpd-speditions.com> is registered with PDR Ltd. d/b/a
PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2024. On December 2, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 3, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Public Domain Registry) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 5, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 5, 2024.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 13, 2024. In accordance with the Rules, paragraph 5, the due date for Response was January 2, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 6, 2025.
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The Center appointed Mireille Buydens as the sole panelist in this matter on January 10, 2025. 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 Complainant, operating since 1977, is a leading domestic parcel delivery network in Europe, with a turnover of EUR 15.7 billion in 2023. It delivers 5.3 million parcels each day and has more than 108,000 pickup points in a large number of countries.
The Complainant owns various registrations for or containing the acronym “DPD” (“the DPD Trademark”), including the following:
| - | International trademark Registration No. 761146 for the figurative mark | registered on May |
26, 2001;
- European Union trademark Registration No. 006159487 for the word mark DPD DYNAMIC PARCEL DISTRIBUTION registered on August 19, 2009;
| - | International trademark Registration No. 1217471 for the figurative mark | registered on |
March 28, 2014; and
| - | International trademark Registration No. 1271522 for the figurative mark |
registered on August 25, 2015.
The Complainant is the owner of numerous domain names containing the acronym “DPD”, including
<dpd.com> reserved on March 20, 1991 and <dpd.gr> reserved on June 29, 2004.
The disputed domain name was registered on May 31, 2024.
According to the Complaint, the disputed domain name resolves to a website impersonating the
Complainant, using the DPD Trademark and offering identical or at least very similar services without the
Complainant’s authorization.
At the time of this decision, the disputed domain name resolves to a blank page mentioning “This account has been suspended – contact your hosting provider for more information”.
5. Parties’ Contentions
A. Complainant
The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.
Notably, the Complainant contends that the disputed domain name is confusingly similar to the DPD The second element of the disputed domain name (the German word “speditions”, which means “freight forwarding”) is merely descriptive of the Complainant’s activities. The Complainant further argues that the DPD Trademark is well known and that Internet users are highly likely to be confused as to whether the disputed domain name is linked to the Complainant. The “.com” Top-Level Domain extension may be ignored as it is a commonplace technical element.
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The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not sponsored by or affiliated with the Complainant in any way. Nor has the Complainant given the Respondent permission to use the Complainant’s Trademark in any
manner, including in the disputed domain name. The Respondent is not commonly known by the disputed domain name. The disputed domain name is used to redirect Internet users to a website impersonating the Complainant and offering the same services (delivery/freight forwarding services), which does not constitute a bona fide offering of goods or services.
Third, the Complainant asserts that the disputed domain name was registered and is being used in bad faith. The Complainant submits that the Complainant and its Trademark are well known, so that it is inconceivable that the Respondent ignored the Complainant and its earlier rights. In light of the reputation of the
Complainant and the scope of its operations, it is obvious that the Respondent had knowledge of both the Complainant asserts that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a confusion with the Complainant’s Trademark, company name and domain names.
Complainant and its Trademark at the time the disputed domain name was registered. Considering the
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Dealing with the Respondent’s failure to file a Response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission, as it considers appropriate.
Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
| (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison | It is well accepted that the first element functions primarily as a standing requirement. The standing section 1.7. |
| Based on the available records, the Panels finds that the Complainant has shown rights in respect of a trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. | |
| The Panel finds the entirety of the DPD Trademark is reproduced within the disputed domain name. The only difference between the DPD Trademark and the disputed domain name is the addition of a hyphen followed by the term “speditions” (which is a German word referring to “delivery/freight forwarding”). Although the addition of this term may bear on assessment of the second and third elements, the Panel finds |
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the addition of such term does not prevent a finding of confusing similarity between the disputed domain
name and the Trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.
Further, the generic Top-Level Domain (“gTLD”) “.com” is a standard registration requirement and does not prevent the disputed domain name from being confusingly similar to the DPD Trademark.
Accordingly, the disputed domain name is confusingly similar to the DPD Trademark for the purposes of the
Policy.
The Panel finds the first element of the Policy has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.
Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized
that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task
of “proving a negative”, requiring information that is often primarily within the knowledge or control of the
respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or
legitimate interests, the burden of production on this element shifts to the respondent to come forward with
relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of
proof always remains on the complainant). If the respondent fails to come forward with such relevant
evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0,
section 2.1.
Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.
The Respondent is not licensed by nor affiliated with the Complainant in any way. There is no evidence that the Respondent would be commonly known under the disputed domain name, nor is there any evidence of use or demonstrable plans to use the disputed domain name for a bona fide offering of goods or services. There is no evidence of legitimate noncommercial or fair use of the disputed domain name, either.
The Panel notes that the composition of the disputed domain name carries a risk of implied affiliation with the adding a hyphen followed by the descriptive (German) term “speditions” to the Complainant’s Trademark along with the gTLD “.com”, coupled with the use of the disputed domain name to resolve to a website that impersonates the Complainant (use of the Complainant’s Trademark for identical or at least very similar services, use of the same colors as the Complainant, use of the same type of pictures depicting white trucks), affirms the Respondent’s intention of taking unfair advantage of the likelihood of confusion between the disputed domain name and the Complainant’s Trademark. This confirms that there is no use, nor preparations to use, of the disputed domain name in connection with a bona fide offering of goods or services.
Besides, as mentioned above, the disputed domain name resolves to a website impersonating the Complainant. Panels have held that the use of a domain name for illegitimate activity, here impersonation/passing off, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.
The Panel finds the second element of the Policy has been established.
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C. Registered and Used in Bad Faith
The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy. The Panel notes that the Respondent has composed the disputed domain name by combining the Complainant’s DPD Trademark with the German term “speditions” descriptive of the Complainant’s services in Germany (Germany being the country of origin of the Complainant) for resolving to a website which proposes identical or at least very similar delivery/freight forwarding services and where the Respondent passes itself off as the Complainant. A quick search for the term “dpd” online would have revealed to the Respondent the existence of the Complainant and its Trademark. In this regard, it should be noted that the Complainant’s Trademarks also cover Greece and it owns a domain name <dpd.gr> (where the Respondent is located). Besides, the Panel notes that the Respondent has also copied the figurative mark and logo of the Complainant. As a result, the Panel finds that the Respondent was more likely than not aware of the Complainant’s Trademark at the time of the registration of the disputed domain name. WIPO Overview 3.0 section 3.2.2.
Moreover, panels have held that the use of a domain name for illegitimate activity, here impersonating or passing off, constitutes bad faith. In the present case, as pointed out above, the disputed domain name resolves to a website offering delivery services which are identical or at least very similar to the services offered by the Complainant. The Respondent passes itself off as the Complainant: the website to which the
disputed domain name resolves displays the Complainant’s DPD well-known Trademark, including the
figurative mark and logo, offers identical or very similar services, and offers potential customers to send a
request for quote. In light of this and taking into consideration the well-known character of the Complainant’s
Trademark, it seems inconceivable that the Respondent would have registered and used the disputed
domain name for a reason other than seeking to unduly benefit from the Complainant, its well-known DPD
Trademark, and associated goodwill.
Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.
The Panel finds that the Complainant has established the third element of the Policy.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <dpd-speditions.com> be transferred to the Complainant.
/Mireille Buydens/
Mireille Buydens
Sole Panelist
Date: January 23, 2025
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