The Complainant is Associated Newspapers Limited, United Kingdom, represented by Adlex Solicitors, United Kingdom.
The Respondent is WhoisGuard, Inc., Panama / Paul Baso, United States of America (“United States”). 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 3, 2020. On December 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 3, 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 December 4, 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 amended Complaint on December 7, 2020. 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 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 21, 2021. The Center appointed John Swinson as the sole panelist in this matter on February 3, 2021. 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 is Associated Newspapers Limited, a company incorporated in the United Kingdom in 1905. According to the Complaint, the Complainant manages and publishes a range of publications in the United Kingdom including two national newspapers, the Daily Mail and The Mail on Sunday. According to the Complainant, the first edition of the Daily Mail was published in 1896 and its average circulation in the United Kingdom in January 2017 was approximately 1.5 million per issue. The Complainant owns various trade marks for “DAILY MAIL”, including United Kingdom registered trade mark no. 1207666 which was registered on November 22, 1983 (the “Trade Mark”). The Complainant also owns the domain name The Respondent is Paul Baso, an individual of the United States. No Response was received from the Respondent and therefore little information is known about the Respondent. The Disputed Domain Name was registered on August 20, 2020. 5. Parties’ Contentions A. Complainant The Complainant makes the following contentions. Identical or Confusingly Similar The Complainant has developed substantial reputation and goodwill in the Trade Mark as a result of its extensive trading and marketing activities, including in respect to a major print and online newspaper in the United Kingdom. The Complainant’s rights in the Trade Mark have been accepted in various UDRP cases. Disregarding the generic Top-Level Domain (“gTLD”) extension, the Disputed Domain Name is identical to the Trade Mark. Rights or legitimate interests The Complainant has no association with the Respondent and has never authorised or licensed the Respondent to use the Trade Mark. As at September 9, 2020, there was a website available at the Disputed Domain Name which was an identical copy of the Complainant’s Website, except that the Complainant’s header was omitted and replaced with text referring to “MailOnline”. On or about October 5, 2020 the Registrar suspended the website at the Disputed Domain Name at the request of the Complainant. The Respondent has clearly used the Disputed Domain Name and the Trade Mark to impersonate the Complainant and/or to otherwise attract, confuse and profit from Internet users seeking the Complainant’s Website. Such usage is not bona fide and cannot generate rights or legitimate interests. There is no evidence that the Respondent has been commonly known by the Disputed Domain Name. The Respondent has not made a legitimate noncommercial or fair use of the Disputed Domain Name. The Respondent was motivated by commercial gain and its use of the Trade Mark was not fair. Registered and Used in Bad Faith The Respondent registered the Disputed Domain Name to unfairly disrupt the business of the Complainant and confuse, attract and profit from Internet users seeking the Complainant’s Website by impersonating the Complainant and diverting Internet users to the Respondent’s competing website. The Respondent was also clearly aware of the Complainant and its business at the time the Disputed Domain Name was registered. These contentions are evidenced by the fact that the Disputed Domain Name is identical to the Trade Mark and that the website which formerly appeared at the Disputed Domain Name was almost identical to the Complainant’s Website. The Respondent’s modus operandi is not entirely clear but it is difficult to conceive that the Respondent would engage in a scheme of impersonating the Complainant and the Complainant’s Website for a noncommercial purpose. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely: (i) the Disputed 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 Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. The Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org,WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s failure to file a Response. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights. The Disputed Domain Name incorporates the Trade Mark in its entirety with no additional terms. Where a domain name incorporates the entirety of a trade mark, it will normally be considered identical or confusingly similar to the mark (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The Panel considers the Disputed Domain Name to be identical to the Trade Mark. The Complainant is successful on the first element of the Policy. B. Rights or Legitimate Interests Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests. The Complainant has presented uncontested evidence that at one time the Disputed Domain Name was used to host a copycat version of the Complainant’s Website. The Disputed Domain Name is identical to the Trade Mark and the Complainant has stated that is has no association with the Respondent and has not authorised the Respondent’s use of its Trade Mark. In these circumstances, the Panel is satisfied that the Respondent has not used or made demonstrable preparations to use the Disputed Domain Name or a name corresponding with the Disputed Domain Name in connection with a bona fide offering of goods or services. The Panel is also satisfied that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or tarnish the Trade Mark. In addition, there is no evidence to demonstrate that the Respondent has been commonly known by the Disputed Domain Name. In light of the above, the Complainant is successful on the second element of the Policy. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith. Registration in bad faith The Complainant has used the Trade Mark in respect to a widely circulated print newspaper in the United Kingdom and the popular online version of this newspaper which is available at the Complainant’s Website. The Panel accepts that the Trade Mark is well known. Given that the Disputed Domain Name is identical to the Trade Mark and the Respondent subsequently used the Disputed Domain Name for a website which was almost identical to the Complainant’s Website, the Panel considers that the Respondent was aware of the Trade Mark at the time the Disputed Domain Name was registered and that the Disputed Domain Name was registered in order to target the Complainant and its Trade Mark. This constitutes registration in bad faith. Use in bad faith As outlined above, the Respondent previously used the website to host a copycat version of the Complainant’s Website before it was removed by the Registrar at the Complainant’s request. The Panel agrees with previous UDRP decisions that unauthorised registration of a domain name to display a copycat version of a complainant’s legitimate website is bad faith usage of that domain name (see, e.g., Ente per le Arti Applicate alla Moda ed al Costume v. WhoisGuard, Inc./ Josephine Gifford,WIPO Case No. DPW2019-0005; Curo Intermediate Holdings Corp. v. Dhruvin Shah,WIPO Case No. D2016-1282; Arkema France v. Aaron Blaine,WIPO Case No. D2015-0502). In light of the above, the Panel finds that the Complaint is successful on 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, John Swinson
Sole Panelist
Date: February 19, 2021
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