Yesterday we wrote about the domain name BIHR.com being hit with a WIPO case after 19 years, the domain name is owned by Dong Jin Kim and as we were reviewing more WIPO cases, we came across BPost.com and it looks like Dong Jin Kim is having to battle and fight this generic domain name too, this time from BPost NV
We can see that BPost N.V. won there first ever WIPO case earlier this year with the domain name BPosteu.com being transferred to them after the respondent choose not to answer the WIPO proceedings which they may have decided it wasn’t worth the battle to keep ownership of BPostEu.com, however I do feel that BPost N.V. will attempt to use this WIPO case to try and convince the panel that they should have the Bpost.com domain name transferred to them also.
I would strongly advise Dong Jin Kim, to reply like he has done in other cases that we spoke about where he was awarded RDNH win for the domain name MIAX.com and again fight for the domain name BPost.com to kept under his ownership, while also pushing for a finding of RDNH (Reverse Domain Name Hijacking) to Brough against BPost N.V.
Bpost NV uses the domain name BPost.be they are, also known as the Belgian Post Group and the company is responsible for the delivery of national and international mail. The Belgian Post Group is one of the largest civilian employers in Belgium, After being in existence since the 1830’s and operating on BPost.be for many years, why do they now need the urge to own BPost.com? Surely they can afford to acquire the domain name lawfully from Dong Jin Kim for what I would see a high five figure or low six figure value?
What do you think? Is Dong Jin Kim unlucky having to WIPO that he is fighting on generic dot com domains at the same time both registered since 2001…
ADMINISTRATIVE PANEL DECISION
bpost NV v. WhoisGuard Protected, WhoisGuard, Inc. / Lean Thomas, Rente Client
Case No. D2020-0132
1. The Parties
The Complainant is bpost NV, Belgium, represented by Hans Dhondt & Johannes Cassiman, Belgium.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Lean Thomas, Rente Client, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <bposteu.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2020. On January 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 20, 2020, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on January 29, 2020, 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 January 31, 2020.
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 February 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 27, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 4, 2020.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on March 16, 2020. 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 was founded in 1830 and has used the names De Post (in Dutch) and La Poste (in French) and internationally The Belgian Post or Belgian Post International. After the Complainant became a public limited company it used the name “Bpost”. The Bpost business is an international mail and parcel service, and e-commerce logistics services provider. It has locations throughout the world, for example, London, Brussels, Germany, Spain, Poland, China, Singapore, Australia and New Zealand. The Bpost business delivers 7.7 million letters and 235,000 parcels every day and generated revenue of EUR 3,850.2 million in 2018. The Complainant employs over 25,000 individuals and has customers in over 200 countries.
The Complainant has several trademark registrations for the BPOST trademark, including the following:
Benelux Trademark Registration No. 0886987 for registered on November 10, 2010;
International Trademark Registration No. 1064911 for BPOST registered on August 16, 2010;
European Trademark Registration No. 009730409 for registered on July 11, 2019;
Benelux Trademark Registration No. 0921644 for BPOST registered on September 10, 2012;
Benelux Trademark Registration No. 0927051 for BPOST registered on January 10, 2013;
European Trademark Registration No. 008897811 for BPOST registered on August 12, 2019;
The Complainant owns the domain name <bpost.be> which was registered on February 4, 2010, and resolves to the Complainant’s primary website.
The disputed domain name <bposteu.com> was registered on April 30, 2019, and reverts to a website which appears to offer identical services to that of the Complainant.
5. Parties’ Contentions
The Complainant asserts that the disputed domain name <bposteu.com> is confusingly similar to the Complainant’s BPOST registered trademark. The disputed domain name contains as its first element the Complainant’s registered trademark in its entirety. The addition of the geographical designation “eu”, which commonly refers to the European Union, does not distinguish the disputed domain name in any manner.
The Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant contends that the Respondent is not using the <bposteu.com> domain name in association with a bona fide offering of goods and/or services. The disputed domain name is confusingly similar to the Complainant’s registered trademark and reverts to a website which prominently uses the word mark BPOST and the Complainant’s distinctive design trademark. The Respondent’s website purports to offer services which are identical to the Complainant’s core business services and provides contact information which appear to be false or inactive.
The Complainant further submits that the Respondent has registered and is using the disputed domain name in bad faith. The Respondent has registered a confusingly similar domain name to the Complainant’s registered trademark and has used that domain name in association with a website which copies the look and feel of the Complainant’s website. The Respondent’s website prominently displays the Complainant’s registered trademarks including its design mark, and purports to provide identical services to the Complainant. The Respondent provides contact information on its website which does not appear to be active and/or correct.
The Respondent’s conduct in using the Complainant’s trademark and copying the look and feel of the Complainant’s website is evidence of prior knowledge and bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(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
The Panel finds that the Complainant does have registered trademark rights in the trademark BPOST by virtue of its trademark registrations listed in section 4 of this Decision.
The Panel finds that the disputed domain name <bposteu.com> is confusingly similar to the Complainant’s registered trademark as the disputed domain name replicates all significant elements of the mark in question. The addition of the geographical designation “eu” does not affect the confusing similarity in any way.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Useful commentary relating to the burden of proof for rights or legitimate interests can be found at the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1:
“While 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 often impossible 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 faciecase 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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.
Based on the evidence filed in this proceeding, the Panel finds that the Complainant has made out a prima facie case with respect to the Respondent’s lack of rights and legitimate interests. The Complainant clearly owns substantive rights in the registered mark BPOST as noted in section 4 of this Decision. The Complainant has used its trademark BPOST since at least as early as 2010 and has an established reputation in mail, parcel and e-commerce services in Belgium and internationally. The evidence filed in this proceeding, which was not contested by the Respondent, supports the fact that the Respondent was aware of the Complainant’s trademark, particularly because the Respondent chose to use the Complainant’s trademarks and copied the look and feel of the Complainant’s website on its website at the disputed domain name <bposteu.com>.
In this situation, the burden shifts to the Respondent to bring forward evidence of rights or legitimate interests. The Respondent did not respond to the Complaint.
Accordingly, the Panel finds that the Complainant is deemed to have satisfied the requirements under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
As set out above, the Panel is prepared to find that the Respondent was clearly aware of the Complainant’s trademark rights in the BPOST mark when it registered the disputed domain name <bposteu.com>. This conclusion is supported by the fact that the Respondent registered the disputed domain name that was comprised of the Complainant’s distinctive trademark in its entirety, coupled with the geographical designation “eu”. The Complainant operates its core services throughout the European Union, and as such the Respondent’s use of this designation was clearly designed to increase the risk of confusion. The Respondent’s website prominently displays the Complainant’s trademarks and copies the look and feel of the Complainant’s website, including the prominent use of Complainant’s principal design mark. The Respondent’s copycat site purports to offer identical services of the Complainant, with contact information that appears to be false or at the very least inactive. This conduct and indeed all of these facts support a finding of registration and use in bad faith.
The Complainant has therefore satisfied the requirements under paragraph 4(a)(iii) of the Policy.
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 <bposteu.com> be transferred to the Complainant.
Christopher J. Pibus
Date: March 30, 2020