The Complainant is Associated Newspapers Limited, United Kingdom, represented by Adlex Solicitors, United Kingdom.
The Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland / Abdur Raheem, Pakistan.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2021. On November 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 4, 2021, 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 November 5, 2021, 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 November 9, 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 Respondent of the Complaint, and the proceedings commenced on November 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 6, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 9, 2021.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on December 14, 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 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 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 193433, registered on November 5, 1999, in classes 9, 16, 35, 38, 41, and 42.
The disputed domain name was registered on January 9, 2021.
As at December 25, 2021, the disputed domain name resolved to a website, presented under a “daily mail update” banner in all capital letters. A significant amount of the content of the website at the disputed domain name, including text and photographs, is identical to the content that appears on the Complainant’s website.
5. Parties’ Contentions A. ComplainantThe Complainant makes the following contentions.
Identical or Confusingly Similar
The Complainant has developed substantial reputation and goodwill in the trade marks 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 and the generic term “update”, the disputed domain name is identical to the Complainant’s trade mark.
Rights or legitimate interests
The Complainant has no association with the Respondent and has never authorized or licensed the Respondent to use the trade mark.
The disputed domain name resolves to a website, presented under a “daily mail update” banner in all capital letters. A significant amount of the content of the disputed domain name, including text and photographs, is identical to the content that appears on the Complainant website.
The Respondent has clearly used the disputed domain name and the Complainant’s 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.
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 content of the disputed domain name is identical to the content of the Complainant.
The Complainant requests the transfer of the disputed domain name.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsTo 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 dame 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 Complainant has rights over the trade mark DAILY MAIL as demonstrated by the evidence included in Annex 4 of the Complaint.
The disputed domain name is confusingly similar to the trade mark DAILY MAIL. The only difference between the disputed domain name and the trade mark is the addition of the term “update”, which in this case is related to the Complainant business. See section 1.8 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Complainant is successful on the first element of the Policy.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant has not authorized, licensed, or permitted the Respondent to register or use the disputed domain name or to use its trade mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name resolves to a website, presented under a “daily mail update” banner in all capital letters and significant amount of the content of the website at disputed domain name, including text and photographs, is identical to the content that appears on the Complainant’s website.
In all the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad FaithThe Panel has verified that the disputed domain name resolved to an active website, presented under a “daily mail update” banner in all capital letters. A significant amount of the content of the website at disputed domain name, including text and photographs, is a verbatim copy to the content that appears on the Complainant’s website.
Noting the composition of the disputed domain name and in light of the manner of the use of the website at disputed domain name highlighted in Section B above, the Panel finds that the requisite element of bad faith has been established.
The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith.
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 name
Pablo A. Palazzi
Sole Panelist
Date: December 28, 2021