The Complainant is Daily Mail and General Trust Plc., United Kingdom, represented by Adlex Solicitors, United Kingdom.
The Respondents are Domain Admin, Whois Privacy Corp., Bahamas; Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States of America (“United States”) / Simmon Mac, United States; and Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Taylor Matins, United Kingdom.
2. The Domain Names and RegistrarsThe disputed domain name
The disputed domain name
The disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2021. On September 16, 2021, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On September 16 and September 17, 2021, the Registrars transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 28, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint or to file a separate complaint for each disputed domain name. The Complainant filed an amended Complaint on September 29, 2021.
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 Respondents of the Complaint, and the proceedings commenced on October 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 28, 2021. The Respondents did not submit any response. Accordingly, the Center notified the Respondent’s default on October 29, 2021.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on November 15, 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 BackgroundThe Complainant offers global asset management, capital markets, and commodities sectors. The Complainant manages a multinational portfolio of companies, with total revenues of almost GBP 2 billion. The Complainant’s group trades in over 40 countries worldwide.
The Complainant owns United Kingdom trademark number no. 3022039 DMGT dated September 13, 2013. The Complainant has traded under the name DMGT since approximately 1922. The Complainant has operated its main website at “www.dmgt.com” since at least 2012.
The disputed domain name
The disputed domain name
At the time of drafting the Decision, the disputed domain names resolved to respectively, an inactive page, a web page with commercial links to similar services, and a web page purporting to offer global assess management services.
5. Parties’ Contentions A. ComplainantThe Complainant asserts that the disputed domain names are registered to the same person or under the common control by connected parties, and thus that consolidation would be fair and equitable. The content and layout of the websites that the disputed domain names have resolved to are identical to each other (and to previous similar domain names found to have been registered and used in bad faith). The disputed domain names consist of similar misspellings, are nearly identical to each other, and target the same business sector. The disputed domain names were registered within 6 months of each other and one of them was registered within few days of registrar suspension of a similar domain name not part of this case. The disputed domain names target the Complainant’s trademark and is part of a pattern of registration of similar domain names.
The Complainant provides evidence of trademark registration, and argues it has common law rights in DMGT. The disputed domain names incorporate the Complainant’s trademark in its entirety. The addition of various pluralized (some grammatically incorrect) versions of the terms “global”, “asset” and “management” fails to dispel the connection between the disputed domain names and the Complainant’s trademark.
The Complainant asserts that it has no association with the Respondents and has never authorized or licensed the Respondents to use its trademark. The Respondents cannot establish rights in the disputed domain names, as they have not made any use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services. On the contrary, the Complainant submits that the Respondents’ only use of the names is part of a scheme to impersonate the Complainant with a view to defrauding the Complainant or its customers.
The Complainant argues that the Respondents have intentionally attempted to attract Internet users, for commercial gain, by creating confusion with the Complainant’s trademark, evident from the use of the disputed domain names. The Complainant further argues that the Respondents had the Complainant’s trademark in mind when registering and using the disputed domain names. The disputed domain names are almost identical to the Complainant’s distinctive trademark DMGT, the Respondents have purported to use the disputed domain names for similar services to those supplied by the Complainant, and the Respondents have used a similar logo to that of the Complainant. Moreover, the disputed domain names were each registered two days after the suspension of previous near identical domain names, which resolved to identical websites, and in respect of which at least two of the previous domain names had been used for an attempted fraud on a third party.
B. RespondentThe Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Procedural mattersThe Complainant argues that the disputed domain names are under the common control. The Panel has carefully examined the evidence in the case file and notes that the Respondents have not – despite given the opportunity – argued or filed any evidence to rebut. The Panel notes the nature of the trademark and the disputed domain names, and that the disputed domain names have resolved to nearly identical webpages. The Panel further notes that these webpages are similar to webpages to which domain names that have been ordered transferred to the Complainant in earlier UDRP decisions have resolved. Based on the evidence, and a consideration of procedural efficiency, the Panel orders consolidation of the disputed domain names as the consolidation would be fair and equitable to the Parties. See WIPO Overview 3.0, section 4.11.2.
B. Identical or Confusingly SimilarThe Complainant has established that it has rights in the trademark DMGT. The test for confusing similarity involves a comparison between the trademark and the disputed domain names. The disputed domain names incorporate the Complainant’s trademark in its entirety with the addition of various dictionary terms such as “global/s”, “assets”, “management/s”. These additions do not prevent a finding of confusing similarity between the disputed domain names and the trademark.
For the purpose of assessing under paragraph 4(a)(i) of the Policy, the Panel may ignore the generic Top-Level Domains, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.
The Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate InterestsThe Complainant has made unrebutted assertions that it has not granted any authorization to the Respondents to register the disputed domain names containing the Complainant’s trademark or otherwise make use of the Complainant’s mark. There is no evidence that the Respondents have registered the disputed domain names as a trademark or acquired unregistered trademark rights. The Respondents cannot establish rights in the disputed domain names, particularly as they have not made use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering. The Respondents’ use of the disputed domain names is clearly not bona fide.
Accordingly, the Panel finds that the Respondents have no rights or legitimate interests in respect of the disputed domain names in accordance with paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad FaithThe Panel agrees with the Complainant that it is likely that the Respondents were aware of the Complainant when the Respondents registered the disputed domain names. It is probable that the Respondents have registered the disputed domain names to use them in a fraudulent scheme, to attract Internet users for commercial gain by creating confusion with the Complainant’s trademark. The Respondents have purported to use the disputed domain names for similar services to those supplied by the Complainant, and the Respondents have used a similar logo to that of the Complainant. The Respondents’ use of a privacy protection service to conceal their identity, further points to bad faith in the context of the case.
For the reasons set out above, the Panel concludes that the disputed domain names were registered and are being used in bad faith, within the meaning of paragraph 4(a)(iii) of the Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names
Mathias Lilleengen
Sole Panelist
Date: November 19, 2021