The Complainant is Associated Newspapers Limited, United Kingdom, represented by Adlex Solicitors, United Kingdom.
The Respondent is WhoisGuard, Inc, Panama / Arvind Walar, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2019. On December 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 11, 2019, 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 December 12, 2019, 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 amended Complaint on December 12, 2019. The Center verified that the Complaint, together with the amended 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, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 2, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2020. The Center appointed Antony Gold as the sole panelist in this matter on January 13, 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 incorporated in the United Kingdom in 1905. It publishes a range of publications in the United Kingdom, including the “Daily Mail” and “The Mail on Sunday”. The “Daily Mail’s” average newspaper readership between October 2015 and September 2016 was approximately 3.4 million per issue. The Complainant’s website at “www.dailymail.co.uk”, often referred to as “MailOnline” or “Daily Mail Online”, is a very popular English language news website, reaching over 45 million viewers in December 2011. The Complainant owns various trade marks for DAILY MAIL, including the following; - United Kingdom Trade Mark for DAILY MAIL, registration number UK1207666, registered on November 22, 1983, in class 16; - European Union Trade Mark for DAILY MAIL, registration number EU193433, registered on November 5, 1999, in classes 9, 16, 35, 38, 41, and 42. The disputed domain name was registered on September 28, 2019. As at October 31, 2019, it resolved to a website, presented under a “dailymailweb” banner in all capital letters, which contained news images and content copied from the Complainant’s website. On or about November 20, 2019, following a complaint by the Complainant, the Respondent’s website was taken down by the Registrar. 5. Parties’ Contentions A. Complainant The Complainant refers to its registered trade marks for DAILY MAIL and says, in addition, that it has unregistered trade mark rights which protect the same trading style. The disputed domain name is confusingly similar to its trade marks and differs only by the addition of the generic word “web”. However, the Complainant’s trade mark remains a dominant feature of the disputed domain name and the addition of other terms does not prevent a finding of confusing similarity under the first element. The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Paragraph 4(c) of the Policy sets out circumstances, without limitation, whereby a respondent might be able to demonstrate that it has rights or legitimate interests with respect to a domain name. Dealing with each of these in turn; - the Respondent has not been using the disputed domain name in connection with a bona fide offering of goods and services. The Complainant has no association with the Respondent and has never authorised or licensed it to use its trade marks. The Respondent has clearly used the disputed domain name and the Complainant’s trade marks in order to attract, confuse, and profit from Internet users seeking the Complainant. Such interest is not bona fide; see Emmanuel Vincent Seal trading as Complete Sports Betting v. Ron Basset,WIPO Case No. D2002-1058; - the Respondent has not been commonly known by the disputed domain name; - it is likely that the Respondent’s motive has been commercial gain and its use of the disputed domain name has been neither legitimate nor fair. As explained at section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where a complainant makes out a prima facie case that a respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with evidence showing that it has rights or legitimate interests in a domain name. If not, the complainant is deemed to have satisfied the second element. Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy provides, without limitation, four circumstances which, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The Respondent’s conduct falls within the circumstanced described at paragraph 4(b)(iii) of the Policy in that it has registered the disputed domain name for the purpose of disrupting the business of the Complainant. It was evidently aware of the Complainant’s business as at the date of registration of the disputed domain name. It has clearly set out to impersonate the Complainant in that, not only does the disputed domain name include the Complainant’s famous trade mark but its website contains news content blatantly copied from the Complainant’s website. The Respondent’s conduct also falls within paragraph 4(b)(iv) of the Policy in that the Respondent’s website essentially comprises a scheme to confuse, attract, and profit from Internet users who are searching for the Complainant’s website on the Internet. The fact that the Respondent’s website has copied the Complainant’s content shows that it had the Complainant and its business in mind when registering and using the disputed domain name. Such use is intended by the Respondent to create a likelihood of confusion in the minds of the public as to an association between the Respondent and the Complainant. Moreover, whilst the Respondent’s precise method of operation is not entirely clear, it is difficult to conceive that it would engage in a scheme such as this for a noncommercial purpose. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Supplemental Filing On January 15, 2020, the Complainant submitted a Supplemental Filing to the Center. The filing explains that, as a consequence of the Complainant bringing a subsequent complaint under the Policy in respect of the domain name The supporting documents provided by the Complainant relate to different reports from the Complainant’s and the Respondent’s websites and do not show that content has been copied. However, they do show that the website at “www.livedailymail.com” is using both the Complainant’s DAILY MAIL trade mark and also its distinctive DAILY MAIL masthead, used in its print edition, which is also registered as a trade mark in the United Kingdom. Neither the Rules nor the Supplemental Rules make provision for supplemental filings, except at the request of the panel (see paragraphs 10 and 12 of the Rules). Section 4.6 of the WIPO Overview 3.0 explains that: “[u]nsolicited supplemental filings are generally discouraged, unless specifically requested by the panel […] panels have repeatedly affirmed that the party submitting or requesting to submit an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response (e.g., owing to some “exceptional” circumstance)”. The Complainant has explained both the relevance of the additional filing and why it was unable to provide the information at an earlier stage. Accordingly, to the extent that it is necessary to do so, the Supplemental Filing will be given consideration by the Panel. B. Identical or Confusingly Similar For the purpose of determining whether the disputed domain name is identical or confusingly similar to the Complainant’s DAILY MAIL trade mark, the generic Top-Level Domain (“gTLD”) “.com” is disregarded, as this is a technical requirement of registration. The disputed domain name comprises the Complainant’s DAILY MAIL trade mark in full and adds to it the word “web”. The Complainant’s mark is the dominant component of the disputed domain name and the additional wording does not impact on an assessment of whether the disputed domain name is confusingly similar to the mark. As explained at section 1.7 of the WIPO Overview 3.0; “[w]hile each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. The Panel accordingly finds that the disputed domain name is confusingly similar to the Complainant’s DAILY MAIL trade mark. C. Rights or Legitimate Interests Before considering the second and third elements of the Policy, it is material to note that the website established by the Respondent, to which the Complainant has referred in its Complaint, has been taken down by the Registrar at the instigation of the Complainant and the disputed domain name is presently inactive. Given the nature of the disputed domain name and the website to which it has previously resolved, the Panel’s analysis proceeds primarily on the assumption that, if the Respondent was once again able to use the disputed domain name in connection with an active website, it is likely to have essentially the same characteristics as the website to which it previously resolved. However, the Panel also deals briefly with the position, having regard to the current inactive status of the disputed domain name. Paragraph 4(c) of the Policy provides, without limitation examples of circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name, or if a respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue. Turning to the first of these circumstances, the disputed domain name has been used to resolve to a website which copies content from the Complainant’s website and is evidently intended to deceive Internet users into thinking that it is operated by the Complainant or with its approval. This does not comprise a good faith use of the disputed domain name. The second of the circumstances set out at paragraph 4(c) is inapplicable; there is no evidence to indicate that the Respondent has been commonly known by the disputed domain name. So far as the third circumstance is concerned, the Respondent’s precise motivation for establishing its website is, as the Complainant has said, unclear. However, the establishment of a website which incorporates content from the Complainant plainly is intended to produce some commercial benefit for the Respondent and the use made by it comprises neither a legitimate noncommercial nor a fair use of the disputed domain name. Moreover, as explained at section 2.5.1 of the WIPO Overview 3.0; “[e]ven where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner”. Once a complainant has made out a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to show that it does have such rights or legitimate interests. In the absence of any response from the Respondent to the Complaint, it has failed to satisfy that burden. If the Complaint is considered on the basis of the disputed domain name’s presently inactive status, the finding under the second element is the same; the holding of the disputed domain name comprises neither a bona fide offering or goods and services nor a legitimate noncommercial nor a fair use of the disputed domain name. The Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name. D. Registered and Used in Bad Faith Dealing, first, with bad faith registration, the fact that the only known use of the disputed domain name has been to resolve to a website which displayed content taken from the Complainant’s website points to clear knowledge by the Respondent of the Complainant’s publication as at the date of registration. As explained at section 3.1.4 of the WIPO Overview 3.0, “[p]anels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith”. See also Valentino S.p.A. v. Qiu Yufeng, Li Lianye,WIPO Case No. D2016-1747; “[b]y virtue of its extensive use and advertising since the 1960s, the Complainant and its trade mark VALENTINO enjoy a significant reputation worldwide and a strong online presence. There is no doubt that that the Respondents were aware of the Complainant and its trade mark when they registered the disputed domain names, given that they have reproduced the Complainant’s trade marks and have listed VALENTINO products for sale on their websites. Registration of a domain name that incorporates a complainant’s well-known trade mark suggests opportunistic bad faith”. The Respondent’s use of the disputed domain name falls within the circumstance of bad faith outlined at paragraph 4(b)(iv) of the Policy in that, by its use, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. The belief of Internet users that the Respondent’s website is operated by, or on behalf of, the Complainant will be reinforced because of the confusing similarity between the disputed domain name and the Complainant’s DAILY MAIL trade mark. See, in similar circumstances, the decision of the panel in Swarovski Aktiengesellschaft v. WhoisGuard Protected / Peter D. Person,WIPO Case No. D2014-1447. Accordingly, it is unnecessary to consider the Complainant’s submissions in relation to paragraph 4(b)(iii) of the Policy. The current passive holding by the Respondent of the disputed domain name is to be considered in the context of section 3.3 of the WIPO Overview 3.0, which explains that; “[f]rom the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding”. The repute of the Complainant’s mark, the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and the implausibility of any good faith use to which the disputed domain name could be put collectively support a finding of bad faith registration and use on this basis. The content of the additional website at “www.livedailymail.com”, to which in the Complainant has drawn attention in its Supplemental Filing, provides further reinforcement of the Complainant’s submissions. The Panel accordingly finds that the disputed domain name was registered and used in bad faith. 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 Antony Gold
Sole Panelist
Date: January 27, 2020
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