WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION DHL Operations B.V. and DHL International GmbH v. Eric White Case No. D2010-0016

1.

The Parties The Complainants are affiliated companies: DHL Operations B.V. of Amsterdam, the Netherlands (Complainant 1) and DHL International GmbH of Bonn, Germany (Complainant 2) (hereafter the Complainants), represented by Jonas Rechtsanwaltsgesellschaft mbH, Germany. The Respondent is Eric White of Pennsylvania, United States of America, represented by Randazza Legal Group, United States of America.

2.

The Domain Name and Registrar The disputed domain name <mydhl.com> is registered with GoDaddy.com, Inc.

3.

Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 6, 2010 with Annexes 1 -13. On January 6, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On January 6, 2010, GoDaddy.com, Inc. 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 January 12, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 1, 2010. The Response was filed with the Center on January 22, 2010.
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The Center appointed Cherise M. Valles as the sole panelist in this matter on February 3, 2010. 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 January 26, 2010, the Complainants filed its first supplemental filing, together with Annexes 14 -18. On January 27, 2010, the Respondent filed its objection to the Complainants’ first supplemental filing as well as a motion to leave to file a sur-reply and the proposed sur-reply, together with Annexes G–U. On January 28, 2010, the Complainants’ filed a “Clarification” as a Motion to file the Complainants’ first supplemental filing dated January 26, 2010 (two days after the first supplemental filing was actually filed). This clarification was treated by the Center and the Respondent as the Complainants’ second supplemental filing. On February 3, 2010, the Respondent filed its reply to the Complainants’ second supplemental filing, together with Annex V. On February 17, 2010, the Panel advised the parties that it would exercise its discretion under Rules, paragraphs 10 and 12 and take into consideration both sets of supplemental filings of the Complainant and the Respondent, when rendering its decision, and that the issuance of the Decision would be delayed. 4. Factual Background The Complainants are well-known internationally as an express provider involving supply logistics, warehousing, distribution logistics, global airfreight and ocean freight, project freight forwarding and European overland transport services. The Respondent is the registered owner of <mydhl.com>. 5. Parties’ Contentions A. Complainants

The Complainants asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, in its original Complaint dated January 5, 2010, the Complainants assert that: The disputed domain name is confusingly similar to a trademark or service mark in which the Complainants have rights. The Complainants are the legal holders of numerous trademarks that consist of the designation DHL or contain this designation as a significant component. The Complainants have trademark registrations in various countries, including Germany the United States, Canada, Australia and the United Kingdom as well as the European Community. A complete list of the Complainants’ German, European Community and International Registrations was provided in Annex 5b. The Complainants’ group of companies owns various domain names that include the mark DHL, including <dhl.de>, <dhl.co.uk>, and <dhl.com>. As of 2008, the domain
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name <dhl.com> attracts at least 6.8 million visitors annually. The Complainants’ parent company, Deutsche Post AG, is the owner of various domain names such as <mydhl.net>, <mydhl.biz>, <mydhl.org>, <mydhl.info>, and <mydhl.de>. The Complainants assert that the disputed domain name, <mydhl.com> is confusingly similar to the Complainants’ trademarks in the light of the fact that it is a “mere combination” of the possessive pronoun “my” and the Complainants’ trademark DHL. As the domain name <mydhl.com> includes the Complainants’ trademark DHL in its entirety, Internet users are likely to be confused into thinking that the disputed domain name is associated with the Complainants and their businesses. This confusion is likely to be exacerbated by the fact that the Complainants also have trademarks that incorporate the DHL mark with other terms related to their activities such as DHL EXPRESS, DHL GLOBAL SOLUTIONS, DHL MIDDAY EXPRESS and WORLDWIDE EXPRESS. In the light of the Complainants’ legitimate combined trademarks, consumers may “inevitably believe” that the designation “mydhl” is a continuation of this series. Moreover, Complainants assert that the generic top level domains “do not produce any distinctiveness since the public will recognize these parts as a mere description of the generic type of the domain name” and that, therefore, “such inclusion must not be taken into account in assessing the identity or similarity between the disputed domain name and the Complainants’ marks”. The Respondent has no rights or legitimate interests with respect to the disputed domain name. The Complainants state the Respondent has not been using the disputed domain name in connection with a bona fide offering of goods or services. The Complainants have not licensed or otherwise permitted the Respondent to apply for or use the disputed domain name. Therefore, the Respondent should not be considered as having any legitimate interest in the trademark DHL. The domain name was registered and is being used in bad faith. The Complainant asserts that the disputed domain name was registered and is being used in bad faith. At the time of the registration of the disputed domain name on October 7, 2002, neither the Respondent nor any other person not connected with the Complainants had a legitimate interest in registering the Complainants’ trademark DHL as a domain name. The Complainants refer to various WIPO UDRP cases in which bad faith was inferred from the registration of a well-known trade mark. The Complainants assert that the Respondent is, therefore, using the Complainants’ mark in bad faith. In its First Supplemental Filing dated January 26, 2010, the Complainants alleged that the “Respondent changed the content of the webpage” after receiving the Complainants’ cease and desist letter and the Complaint and that the contents and dates of the Respondent’s Annexes A, D and F demonstrate that the Respondent changed the content of its website after January 6, 2010. The Complainants also submitted Internet print-outs from the website connected with the disputed domain name showing parked pages that provided several sponsored links to commercial websites mainly of competitors of the Complainants in the field of transport and shipping services such as “speedpack.edu”, “ecoparcle.eu”, and “smartpost.eu”. (Annex 14, showing printouts dated November 25, 2009 and
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December 10, 2009). The Complainants allege that this makes it clear that the Respondent is aware of the Complainants’ trademarks and activities and is maintaining the domain name to divert Internet users to websites of companies that compete with the Complainants. Such use must be considered as use in bad faith. Moreover, the Complainants contend that the website connected to the disputed domain name was not used as a political protest site in 2008 and 2009 or immediately prior to the receipt of the Complaint, but was rather parked for the past three years to DHL-related listings. The Complainants further assert that the Respondent’s failure to respond to the Complainants’ letter dated December 23, 2009 is evidence of bad faith. The Complainants assert that the Respondent received the Complainants’ December 23, 2009 letter by e-mail and by facsimile transmission but that the Respondent failed to respond to these communications until January 6, 2010. According to the Complainants, the Respondent’s failure to respond to the Complainants’ letter until January 6, 2010 is evidence of bad faith. In its Second Supplemental Filing dated January 28, 2010 and entitled Motion for leave to file the Complainants’ Supplemental Filing dated January 26, 2010, the Complainants submitted that the Complainants’ supplemental filing was proper as “there are exceptional circumstances so that the Panel cannot decide this case based on the record submitted on January 6, 2010.” The Complainants state that “when the complaint was submitted on January 5, there was no reason … to attach the printouts und [sic] screenshots from the website connected to the disputed domain name showing ‘DHL’ as there was …no reason to believe the printouts and screenshots would be of relevance in these proceeding. There was no sign whatsoever that the Respondent would deliberately change the content of its website...” Furthermore, the Complainants submit that as DHL trademarks are notorious all over the world and as the domain name <mydhl.com> incorporates a famous mark, the assumption of bad faith does not depend on the webpage’s content. The Complainants requests the Panel to issue a decision finding that the disputed domain name be transferred to Complainant 2, in accordance with paragraph 4 i of the Policy. B. Respondent

On January 12, 2010, the Respondent received a Notification of Complaint and Commencement of Administrative Proceedings from the Center. In its Response, the Respondent submitted that the Complaint must fail because (i) the Respondent has legitimate rights to the disputed domain name and (ii) the Complainant has failed to establish bad faith registration or bad faith use, and both are required under the UDRP. First, the Respondent argues that although there may be similarity between the disputed domain name and the Complainants’ mark DHL, that similarity does not amount to the level of “confusing similarity”. In the Respondent’s view, the test should be whether “any sensible member of the public” would be confused, not whether the “only confusion would be to a very small, unobservant selection of society.” In its Response, the Respondent submitted that the website connected with the disputed domain name does not have any connection to shipping services. Second, the Respondent notes that the burden of proof is on the Complainants to prove each of the grounds specified in paragraph 4(a) of the Policy and submits that the
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Complainants have not submitted sufficient evidence to establish a prima facie case and shift the burden of proof to the Respondent to prove its legitimate rights and interests. Nevertheless, the Respondent provides arguments to demonstrate that the disputed domain name <mydhl.com> was to refer to “My Democracy Has Losers” and has been used in that political context since 2005. Third, the Respondent submits that the disputed domain name was neither registered nor used in bad faith. The original disputed domain name was registered in 1999 and expired on May 28, 2001. It lay fallow until September 23, 2001, when it was registered by the Respondent, Mr. White, for the purpose of expressing political commentary. The Respondent submits that the website associated with the disputed domain name has always been used for the purposes of expressing political commentary, with the exception of short isolated periods. The Respondent submits that it has always used the disputed domain name in good faith. It further notes that the fact that the Respondent did not respond immediately to the Complainants’ letter dated December 23, 2009 was not due to bad faith but due to the intervening Christmas holiday period. According to the Respondent, it is patently unreasonable to expect a considered legal response within those two weeks in particular. As noted by the Respondent, for “a complainant to attempt to call this ‘evidence’ of bad faith reeks of desperation and betrays its positions’ substantive weaknesses.” The Respondent further notes that it has never been a respondent in such proceedings before and that it has not exhibited any of the behaviour of a cyber squatter. In its Proposed Sur-reply to the Complainants’ first supplemental filing, the Respondent submitted that the Complainants’ claim that the content of website associated with the disputed domain name has changed has no factual support. However, the Respondent acknowledged that GoDaddy is “known to create parked pages on its customer’s domains” and that “any parking pages that may have appeared at mydhl.com were not consistent with the Respondent’s wishes.” The Respondent further disputes that it could have changed the content of its website after receiving the Complainants’ December 23, 2009 in time for it to have been changed on the website prior to the filing of its Response. In its Second Supplemental Filing dated February 3, 2010, the Respondent submits that the Complainants’ explanation of its failure to attach a screen shot of the website associated with the disputed domain name is not credible and that the website was not changed after notice of the dispute. Furthermore, the Respondent submits that the Respondent’s use of the website is consistent with his right to freedom of political speech. The Respondent submits that the Complaint must fail. 6. Discussion and Findings The Policy, the Rules and the Supplemental Rules provide specific remedies to trademark owners against registrants of domain names where the owner of the mark (the Complainants) establish each of the following elements: (a) (b) the disputed domain name is identical or confusingly similar to a trademark in which the Complainants have rights; the Respondent has no rights or legitimate interests in respect of the domain name; and,
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(c)

the domain name was registered and is being used in bad faith.

The Complainants have the burden of proof in establishing each of these elements. The elements to be proven are, therefore, cumulative. A. Identical or confusingly similar

To prove this element, the Complainants must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainants’ trademark. The Complainants have submitted evidence demonstrating that they are the owners of numerous trademarks worldwide of the designation DHL or trademarks that contain this designation as a principal component. The Complainants have submitted evidence of the complete list of their German, European Community and international registrations in Annex 5b of the Complaint. The disputed domain name differs from the Complainants’ trademark with the addition of the word “my” before “dhl”. Thus, the disputed domain name incorporates the Complainants’ mark in its entirety. It has been held in many prior panel decisions that when a domain name incorporates a registered mark in its entirety, it is confusingly similar to that registered trademark. See, Heidelberger Druckmaschinen AG v. Wayne Graham (Trading) Limited, WIPO Case No. D2006-1131. The addition of the prefix “my” does not detract from the fact that the dominant feature of the disputed domain name is “dhl” that entirely incorporates the Complainants’ trademark. In Ferrero S.p.A. v. Mr. Jean-François Legendre, WIPO Case No. D2000-1534, the panel found that: The combination of an existing name (i.e. a trademark) with a possessive pronoun (such as “my” or “your”) does not basically change the significance of the existing name as such in the combined expression. The added prefix “my” has, both grammatically and phonetically, an inferior distinctive importance compared to the principal component of the word, the term “myNutella” is clearly dominated by its principal component “Nutella.” Moreover, as the Complainants themselves use legitimate combined trademarks such as DHL MIDDAY EXPRESS, the disputed domain name is confusingly similar to this series of legitimate combined trademarks. The Respondent has submitted that the applicable test should be whether a “sensible member of the public” and not a “very small, unobservant section of society” would be confused. Even employing the Respondent’s test, the Panel is of the view that a sensible and reasonable person would indeed be confused by similarities between the disputed domain name <mydhl.com> and the Complainants’ trademarks. In the light of the foregoing, the Panel finds that the disputed domain name is confusingly similar to the Complainants’ registered mark and that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests

The burden of proof is on the Complainants to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. If a prima facie case is established, then the burden shifts to the Respondent to demonstrating that it has rights or legitimate interests in the disputed domain name.

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Paragraph 4(c) of the Policy enumerates three, non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in the disputed 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 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

(ii)

(iii) you are making legitimate noncommercial 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 Complainants have registered the trademark DHL and have not licensed, permitted or otherwise consented to, expressly or impliedly, the Respondent’s use of that trademark. The Panel finds on the record that the Complainants have made a prima facie case that the Respondent lacks rights or legitimate interests, and accordingly the burden shifts to the Respondent to demonstrate such rights or legitimate interests. The Respondent claims that the use of the disputed domain name is for legitimate reasons, namely as a “political protest site against what I feel is the ruination of American politics” (Annex 18) and was used as such prior to “any notice [to the Respondent] of the dispute” (Response, p. 6). However, the Complainants submitted evidence demonstrating that the website associated with the disputed domain name was “parked” by the host “GoDaddy” and provided several sponsored links to commercial websites of competitors of the Complainants in the field of transport and shipping services (Annexes 14 and 15). The Respondent has objected to the late submission of these Annexes and claims that such evidence should have been submitted with the original Complaint rather than in supplemental filing (Respondent’s Second Supplemental Filing). The Panel agrees. The evidence submitted in Annexes 14 and 15 are germane to the matter before the Panel. The Complainants should have submitted this evidence with the original Complaint especially in the light of the fact that the Annexes were dated November 25, 2009 and December 10, 2009, prior to the filing of the Complaint dated January 5, 2010. Even if the Complainants did not believe that it was possible that “the Respondent would change the content of its website”, it would have still been advisable for them to submit the evidence contained in Annexes 14 and 15 at the time of filing the Complaint, rather than relying on general statements on inappropriate usage of the disputed domain name. In its Supplemental Declaration dated January 26, 2010, the Respondent declares that “The June 8, 2008 ‘parked page’ found at Annex M must have been generated by GoDaddy when I had a technical glitch. It is conceivable that I have had a few times when the settings on the domain were not precisely right, and GoDaddy would, consistent with their policies, then seemingly direct the domain to display links to other
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websites – links that they selected, that they benefitted from, and links that I did not want on my domain.” Thus, it appears to this Panel that the Respondent acknowledges that, at certain times, the disputed domain name was not used as a political protest site but rather as a conduit to other websites that were competitors of DHL in the field of transport and shipping. It is acknowledged that benefit flowed from the inclusion of such links. Whether or not the beneficiary was the Respondent directly or a third party does not obviate the fact that there was commercial use, or the Respondent bears the ultimate responsibility for the content or material appearing on its website. See Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448. Of course the Respondent has a right to express himself politically; however such a right does not extend to doing so under a domain name which both fully incorporates the Complainants’ well-known mark, and from which commercial revenue has been derived. To come within the free speech safe harbour under the Policy, it is well-settled that any use must be genuinely non-commercial. The website associated with the disputed domain name now comprises the simple inclusion of a heading “My Democracy has Losers”, and a handful of photos of politicians. Whether or not such use is a genuinely intended expression of free speech, or in fact mere pretext (as panels in cases such as National Hockey League v. Daniel Krusz, WIPO Case No. D2001-0234 have discussed) is the crux of the issue before the Panel. The Panel finds that the fact that the Respondent apparently allowed the domain name to be used for commercial links takes the domain name out of the category of genuine noncommercial fair use under the Policy. As noted the Panel has exercised its discretion and has taken into account the Supplemental Filings of both parties together with the relevant Annexes. In the light of the information contained in the Complainants’ Supplemental Filings and Annexes, in particular Annexes 14 and 15 as well as the Respondent’s Supplemental Declaration, the Panel finds that the Respondent is not making “legitimate noncommercial or fair use of the domain name”. Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; the respondent 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 respondent has engaged in a pattern of such conduct;

(ii)

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by
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creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s web site or location or of a product or service on its website or location. The Complainants submit that the fact that the Respondent failed to respond to the Complainants’ letter dated December 23, 2009 is evidence that the disputed domain name “was not only registered but is also used in bad faith”. (Complaint, page 14). The Complainants cite to NFL Properties, Inc v. BBC Ab, WIPO Case No. D2000-0147 in support. However, in that case, the Respondent never responded at all to the Complainants various attempts to serve him, which the panel interpreted as supporting the interference that the registration and use of the domain name had been in bad faith. In this case, the Complainants allege bad faith on the part of the Respondent because he did not reply immediately to its letter dated December 23, 2009. In its Supplemental Filing, the Complainants state that “...until January 6, 2010 (Annex 13), the day of the transmission of the Complaint to the Centre, the Respondent failed to show any reaction to the Complainants’ letter.... Thus, the Respondent has 2 weeks to respond to the Complainants’ letter of December 23, 2009, which is more than enough time under the circumstances....” The Respondent submits that the “demand was sent on December 23, 2009 – a date when most of Western civilization is not paying great attention to its fax machines. In fact, the Panel should take notice of the fact that very little work gets done between December 24 and January 1 anywhere in the Western world.” The Panel agrees with the Respondent. The Panel notes that the Respondent responded immediately to the Complainants’ email dated January 6, 2010 and that the Respondent has been diligent in providing its filings and supplemental filings. On this particular point, therefore, the Panel does not ascribe any bad faith to the Respondent’s failure to respond immediately to the Complainants’ letter dated December 23, 2009. However, the Complainants further submit that the bad faith of the Respondent may be inferred from the registration of a well-known mark. In DHL Operations B.V. v. Ali Kazempou, WIPO Case No. D2004-1094, the panel held that: It has been established in certain circumstances that when a domain name incorporates a famous mark comprised of a coined or fanciful term, no other action, aside from registering the domain name, is required for demonstrating bad faith. DHL is a coined term, and the Panel accepts that it is well-known. The Panel is also mindful that the Respondent has not succeeded to this Panel’s satisfaction in demonstrating a right or legitimate interest in the disputed domain name on the grounds of genuine non-commercial fair use, or indeed any other ground. The Panel has noted the Respondent’s sworn declarations, but on balance is not persuaded that these suffice to outweigh the inferences which flow from the fame of the Complainants’ mark combined with the evidence of links to commercial competitors. Therefore, in the circumstances of this case, and in accordance with precedent established in UDRP decisions, the Panel finds that the domain name was on balance registered in bad faith. Moreover, as noted above, the Complainants submitted evidence demonstrating that the website associated with the disputed domain name was “parked” by the host “GoDaddy” and provided several sponsored links to commercial websites of competitors of the Complainants in the field of transport and shipping services (Annexes 14 and 15). This, combined with the distinctiveness and fame of the DHL trademark, supports the argument that the use of the domain name was in bad faith. Accordingly, the Panel concludes that the Complainants have satisfied the burden of showing bad faith registration and use of the disputed domain name under
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paragraph 4(a)(iii) of the Policy.

7.

Decision For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <mydhl.com> be transferred to Complainant 2.

Cherise M. Valles Sole Panelist Dated: March 4, 2010

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