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DHL Operations B.V. v. Ali Kazempour [2005] GENDND 154 (24 February 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

DHL Operations B.V. v. Ali Kazempour

Case No. D2004-1094

1. The Parties

The Complainant is DHL Operations B.V., Amsterdam, Netherlands, represented by Linklaters Oppenhoff & Rädler, Germany.

The Respondent is Ali Kazempour, Ahwaz, Khouzestan, Islamic Republic of Iran.

2. The Domain Name and Registrar

The disputed domain name <dhlmail.com> 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 December 23, 2004. On December 28, 2004, 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 at issue. On December 29, 2004, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification Response. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 10, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was January 30, 2005.

On January 26, 2005, the Respondent requested the Center grant an extension of time to file a Response in order to gather, translate and send the documents to the Center from Iran. The Center transferred the request to the Complainant by email asking it to forward its comments by January 27, 2005. The Complainant suggested the Center to refuse such extension arguing that Section 5 of the Rules does not allow an extension of deadline to file a Response. On January 28, 2005, the Center set February 6, 2005, as the date for the submission of a Response by Respondent. The Response was filed with the Center on February 2, 2005.

The Center appointed Nathalie Dreyfus as the sole panelist in this matter on February 10, 2005. 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 disputed domain name <dhlmail.com> was registered on November 21, 2003, with OnlineNic and is currently being held by the Respondent.

The Complainant is DHL Operation B.V., having its place of business in Amsterdam, Netherlands. The Complainant’s core business is international transportation of documents and goods. DHL is one of the major logistics brands worldwide as well as the world’s largest express provider and involves supply logistics, warehousing, distribution logistics, global airfreight and ocean freight forwarding and European overland transport service. It has business locations all over the world including in the Islamic Republic of Iran, country of the Respondent.

The Complainant is the holder of numerous trademarks worldwide which contain the designation DHL alone or contain this designation as a significant component. The Complainant has filed a representative selection of the details of these registrations from online database searches.

The Complainant and its major subsidiaries own numerous domain names including the trademark DHL such as inter alia <dhl.com>, <dhl.co.uk>, <dhl.de>.

5. Parties’ Contentions

A. Complainant

The Complainant has put forth the following legal and factual contentions.

Identical or confusing similarity:

The Complainant considers that the domain name <dhlmail.com> is confusingly similar to the trademark “DHL”, to its Company name “DHL” and to the domain names <dhl.com> and <dhl.co.uk>. The Complainant further argues that the suffix “.com” is a technical necessity which lacks any distinctiveness.

The addition of the term “mail” is not appropriate to debar the likelihood of confusion between the domain name in dispute and Complainant’s trademark as it is a descriptive term which designates exactly the scope of business of the Complainant.

In addition, on seeing the domain name <dhlmail.com> the public will automatically assume that it belongs to the Complainant. The conjunction of both signs “DHL” and “mail” will accentuate this phenomenon.

Rights and legitimate interests:

The Complainant contends that before the dispute, the Respondent had not been using the domain name in connection with a bona fide offering of goods and services in good faith.

The Respondent was not known under the name <dhlmail.com>.

Besides, the Respondent does not own rights in the name or mark DHL or DHLMAIL. No license has been granted to the Respondent by the Complainant.

Registration and use in bad faith:

At the time of the registration, the Respondent had no legitimate interest in registering the term and there was no business relation between the Complainant and the Respondent. The purpose of the website offering the disputed domain name for sale is clearly to gain a profit. The fact that the website’s content has been changed after the cease and desist letter sent by the Complainant asking the Respondent to stop trademark infringement is not relevant (as ascertained in Harvey Norman Retailing Pty V. gghome.com Pty Ltd., WIPO Case No. D2000-0945).

The only reason of the choice of the domain name <dhlmail.com> must have been to force the Complainant to send a purchase offer to Respondent.

The previous and current contents of the website connecting to the domain name have no relation to the meaning of the domain name or the Respondent’s name.

B. Respondent

The Respondent replied to the Complainant’s contentions by filing a Response on February 2, 2005.

Identical or confusingly similar:

The Respondent argues that the registration of the domain name <dhlmail.com> has been made in accordance with all legal regulations and is in compliance with all ICANN rules.

According to the Respondent, the letters DHL are the abbreviation for Dar Har Lazheh in Persian language. The Respondent intends to establish a non-commercial multilingual website with free service. The website is dedicated to educational issues and teaching letter writing. Thus, the Respondent contends that nobody can claim a right on such abbreviation.

The Respondent also contends that the disputed domain name has never been active for the goods or services designated by the Complainant.

Rights or legitimate interests:

<dhlmail.com> was selected according to Farsi words “Dar Har Lazheh Mail” and therefore declares the Domain Name’s non commercial identity and independence from the Complainant.

Registration and use in bad faith

The Respondent never tried to provide commercial services in hosting domain names. The content of the website that Complainant refers to was caused by a problem with its web-hosting provider.

6. Discussion and Findings

According to Paragraph 4(a) of the Policy, the Complainant must prove that:

(i) The domain name is identical or confusingly similar to a trade mark 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 used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that Complainant has demonstrated that it owns worldwide mark rights to DHL.

The first element that the Complainant must establish is that the domain name is identical or confusingly similar to Complainant’s trademark(s). The contested domain name fully incorporates the mark DHL with the addition of the descriptive term “mail”.

It is well established that when a domain name incorporates entirely a Complainant’s registered mark, with the addition of a descriptive term, this is sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).

The most distinctive feature of the Complainant's registered mark is the combination of the three letters `DHL', and this distinctive combination of letters is incorporated in its entirety in the disputed domain name.

There have been many UDRP decisions involving domain names where a suffix has been added to a mark, or a name closely resembling a trademark. These suffixes have included the name of a product associated with the trademark (for example, <guinessbeer.com>, Arthur Guinness Son & Co. (Dublin) Ltd v. Steel Vertigogo, WIPO Case No. D2001-0020 (March 22, 2001)), a service associated with the trademark (for example, <christiesauction.com>, Christie's Inc. v. Tiffany's Jewelry Auction Inc., WIPO Case No. D2001-0075 (March 6, 2001)), complementary qualities to those associated with the trademark (for example, <viagraconfidential.com>, Pfizer Inc v. The Magic Islands, WIPO Case No. D2003-0870 (December 31, 2003)), and many examples of descriptive terms of business organization or modes of distribution (for example, <harrodsdepartmentstores.com> and <harrodsstores.com>, Harrods Limited v. Peter Pierre, WIPO Case No. D2001-0456 (June 6, 2001); <armaniboutique.com>, GA Modefine S.A. v. Mark O'Flynn, WIPO Case No. D2000-1424 (February 27, 2001)).

The comparison between the disputed domain name and the Complainant's mark reveals the following:

- <dhlmail.com> is composed of the mark “dhl” combined with the generic term “mail”.

- The domain name includes the “.com” suffix.

Considering the first point, the Panel finds that the domain name clearly relates to the “DHL” mark, as in the disputed domain name the generic term “mail” is just an addition to the mark DHL.

Moreover, such a generic term is clearly related to the Complainant's activities. Thus, consumers and Internet users will be confused and misled into thinking that the domain name at issue belongs to the Complainant, due to the inclusion of a well-known mark combined with a generic term clearly linked with the Complainant's activities. The abovementioned approach has been taken in many UDRP decisions such as Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life, WIPO Case No. D2002-0363.

Furthermore, such test of confusion must be especially strict when Complainant is the owner of well-known marks. Said risk of confusion does increase in the present case as, according to what has been stated above, the “DHL” marks are notorious all over the world, also where the Respondent resides.

The second difference between the mark “DHL” and the domain name is the inclusion of the “.com” suffix. Such an inclusion is due to the current technical specificities of the domain name system. Therefore, this inclusion should not be taken into account in evaluating the identity or similarity between the disputed domain name and the Complainants' mark (New York Insurance Company v. Arunesh C. Puthiyoth, WIPO Case No. D2000-0812 or A & F Trademark, Inc., Abercrombie & Fitch Store, Inc., Abercrombie & Fitch Trading Co., Inc. v. Party Night, Inc. et al., WIPO Case No. D2003-0172).

As a consequence, the Panel considers that the domain name is confusingly similar to the mark “DHL” owned by the Complainant. Therefore, the Panel considers that the condition set out by Paragraph 4(a)(i) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out examples of what a respondent may demonstrate to show that it has rights or legitimate interests in respect of a domain name.

“Any of the following circumstances, in particular, but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Respondent has demonstrated to the satisfaction of the Panel that its initials are DHL and that he acquired the domain name for letter writing teaching.

Respondent claims to be using “dhlmail” as an acronym for “Dar Har Lahzez Mail”. However, when Complainant printed the content found at “www.dhlmail.com” on August 18 and December 14, 2004, no information related to letter writing as argued by the Respondent in its Response was shown. In its Response, the Respondent provided no evidence of its intention to use the domain name for a bona fide offering of goods and services.

Based on what was submitted by both parties, the Panel finds it improbable that Respondent is using the well-known mark DHL to make a bona fide offer for letter writing teaching services. Besides, it is unlikely that Internet users looking for such services would enter ‘dhlmail’ to find them. It is much more likely that DHL is a target mark for redirecting traffic to Respondent’s site.

The Respondent has not used the domain name in connection with a bona fide offering of goods or services or in a legitimate non commercial or fair use. Simply copying and pasting a page from another site is not enough to show a bona fide offering (Computer Doctor Franchise Systems v. The Computer Doctor, FA 95396 (NAF, September 8, 2000), finding that respondent’s website, which is blank but for links to other websites, was not a legitimate use of the domain name and Bank of America Corporation v. Northwest Free Community Access, FA 180704, NAF, September 30, 2003, stating “Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services”.

Furthermore, the fact that the Respondent is not currently making any legitimate non commercial or fair use of the domain name as there is no active website but only a page indicating that the web hosting provider encounters problems (Accor v. Accors), WIPO Case No. D2004-0998, leads the Panel to think that Respondent has no legitimate interest in the name. The Panel also notes that the domain name still directs to a webpage both in English and in Persian informing Internet users that Respondent is changing its web hosting provider. There is still no evidence that the Respondent intended to use the above mentioned domain name.

The Panel is of the opinion that there is no relationship between the Respondent and the Complainant and that the Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use Complainant’s mark under any circumstance.

The fact that the letters DHL constitute a letter-mark consisting of three letters does not mean that it should be considered as a generic word. It is in line with established international trademark practice to grant protection to trademarks consisting only of non-pronounceable letter combinations.

The acronym “dhl” has no particular connotation which would be generic or descriptive in relation to the business activities or goods and services applied to the above trademark registrations.

The existence of other trademarks consisting of three letter combinations (such as those cited by the Respondent: DHL Analytical and TNT) owned by parties unrelated to the Complainant has no relevance in this case since parallel marks can exist if they cover different goods and services without any risk of confusion, dilution or degeneration. This argument is all the more irrelevant as the domain names cited by the Respondent all correspond to a previous mark.

Consequently, these references do not constitute evidence of any rights or legitimate interests of the Respondent in respect of the domain name.

It is the Panel’s opinion that, as in the Société Française du Radiotéléphone-SFR v. Modern Limited - Cayman Web Development (sfr.org), WIPO Case No. D2004-0385, “it cannot be argued that the Policy states that “anyone is entitled to register a 3-letter combination” and that Respondent’s “legitimate interest” would be “established per se at the point of registration since no other party can claim exclusive rights to it”. Rather, the Panels should seek (as in these cases cited by the Respondent) whether the effective use of the disputed domain name is a bona fide use”.

Therefore, the Panel finds that the conditions set out by Paragraph 4(a)(ii) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:

(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.

It should be noted that the circumstances of bad faith are not limited to the above.

As previously stated by the Panel, the Respondent appears to have no legitimate interest in the domain name.

Besides, the Respondent is aware of the existence of the Complainant as shown by the content of its Response and the particular interest it seems to show in the Complainant’s activities and especially regarding the Complainant’s merger with Smart Mail & Services and Quik Pak.

Consequently, the Panel is of the opinion that the Respondent registered the domain name <dhlmail.com> with the intent for commercial gain, to divert Internet users and tarnish the mark and the Company’s reputation.

It is unlikely that the domain name has been chosen only by chance, without having in mind the well known mark and the trade name of the Company. Other panels have concluded that bad faith may be inferred if the Respondent had actual knowledge of the complainant’s mark TRW Inc. v. Autoscan, Inc., WIPO Case No. D2000-0156 (April 24, 2000). Here, it is clear that Respondent had knowledge of Complainant’s mark, if only regarding its activities.

Besides, it has been established in certain circumstances that when a domain name incorporates a famous mark comprised of a coined or fanciful term (which is the case for DHL), no other action, aside from registering the domain name, is required for demonstrating bad faith. This is based upon the premise that “it would be difficult, perhaps impossible, for Respondent to use the domain name as the name of any business, product or service for which it would be commercially useful without violating Complainant’s rights.” Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028 (March 10, 2000). The Panel finds an analogous situation in the circumstances of this case, considering that Complainant’s name is well known and that Respondent, at the time he registered Complainant’s name as a domain name, knew Complainant and was familiar with the commercial potential of Complainant’s personal name.

As stated in a previous UDRP cases, the insertion of a disclaimer on the Respondent’s website will not prevent it from considering that the disputed domain name is dedicated to attracting Internet users to online pharmacies in the belief that they have some connection with the Complainant’s trademark as to source, affiliation or endorsement Lilly ICOS LLC v. Anwarul Alam / “- -”, WIPO Case No. D2004-0793.

Therefore, the Panel finds that the conditions set out by Paragraph 4(a)(iii) of the Policy has been met by the Complainant.

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, <dhlmail.com>, be transferred to the Complainant.

Nathalie Dreyfus
Sole Panelist

Dated: February, 24, 2005