ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Dawsongroup, Plc. v. Alisa Mazurenko Case No. D2024-1432 1. The Parties Complainant is Dawsongroup, Plc., United Kingdom, represented by SafeNames Ltd., United Kingdom. Respondent is Alisa Mazurenko, Ukraine. 2. The Domain Name and Registrar The disputed domain name (hereinafter the “Disputed Domain Name”) is registered with Spaceship, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2024. On April 4, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 5, 2024, 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 (Redacted for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to Complainant on April 8, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 9, 2024. On April 9 and 11, 2024, Complainant sent communications requesting the suspension of the proceedings. On April 11, 2024, the Center notified the suspension of the proceedings. On May 9, 2024, Complainant requested the proceedings to be reinstituted. On May 10, 2024, the Center notified the reinstitution of the proceedings. 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”).
page 2 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 15, 2024. In accordance with the Rules, paragraph 5, the due date for Response was June 4, 2024. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 10, 2024. The Center appointed Lawrence K. Nodine as the sole panelist in this matter on June 25, 2024. 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. Further Procedural Considerations Under paragraph 10 of the Rules, the Panel is required to ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case, and also that the administrative proceeding takes place with due expedition. Since the Respondent’s mailing address is stated to be in Ukraine, which is subject to an international conflict at the date of this Decision that may impact case notification, it is appropriate for the Panel to consider, in accordance with its discretion under paragraph 10 of the Rules, whether the proceeding should continue. Having considered all the circumstances of the case, the Panel is of the view that it should. The Panel notes that the courier was not able to deliver the Written Notice to the Respondent’s address in Ukraine, and the Complaint was delivered to the Respondent’s email address provided by the Registrar. The Panel also takes note that Complainant has requested suspension of the proceeding, which suggests that Respondent has contacted Complainant for settlement discussion (even though such communication was not copied to the Center). The Panel also notes that the Complainant has specified in the Complaint that any challenge made by the Respondent to any decision to transfer or cancel the disputed domain name shall be referred to the jurisdiction of the Courts of the location of the principal office of the concerned registrar. In this case, the principal office of the Registrar, Spaceship, Inc., is in the United States of America. It is moreover noted that, for the reasons which are set out later in this Decision, the Panel has no doubt whatsoever that the Respondent registered and has used the disputed domain name in bad faith. The Panel concludes that the Parties have been given a fair opportunity to present their case, and so that the administrative proceeding takes place with due expedition the Panel will proceed to a Decision accordingly. 5. Factual Background Complainant is a British company founded in 1935 that operates in the field of business-to-business asset hire. Complainant’s business name “Dawsongroup” is derived from the surname of its founder, A.E.H Dawson. Complainant specializes in wheeled assets, automation, and the global supply of modular temperature control solutions. Complainant is a supplier of municipal, industrial, and specialist vehicles for contract hire in the United Kingdom. Complainant has over 1,000 employees and provides its services to customers in more than 10 countries including the United States of America, Italy, Germany, New Zealand and Netherlands (Kingdom of the). Complainant’s annual revenue was GBP 355 million in 2022.. Complainant uses the trademark DAWSONGROUP (herein after the “Mark”) to promote its business, and frequently, but not always, combining the MARK with a design element. Complainant owns United Kingdom Trademark Registration number UK00002550639 (registered on November 12, 2010) for the combination of the word Mark and the design:
page 3 Complainant often uses both the word Mark without the design portion of the registered trademark. Since 2015, Complainant has used domain name to promote its services, but it also owns several other domain names that include term “dawsongroup”. 1 On the website associated with domain name, Complainant uses both Mark alone and the registered trademark that includes the design element. Various publications including Route One Magazine, Tees Business, and the Business Examiner have published articles about Complainant. These publications frequently refer to Complainant as “dawsongroup” without including the design element included in the trademark registration. Complainant received the Commercial Motor Awards prize for “Rental, Leasing and Contract Hire Provider of the Year’” three times since 2019. The award trophy identifies Complainant as the winner without including the design element. Complainant uses the DAWSONGROUP trademark (both with and without any design) to promote its services on various social media platforms including X (f.k.a. Twitter) and Linkedin. The Disputed Domain Name was registered February 12, 2024. Complainant sent cease-and-desist notices to Respondent on February 16, and 23, 2024, but received no response. The Disputed Domain Name was not associated with an active website when Complainant filed the current UDRP complaint. However, on the day after it was registered, the Disputed Domain Name resolved to a website headed in Indonesian “Paito harian sidnay” with the caption [translated]: “Sidnay daily patio Sydney Daily Color Paito is today’s latest lottery release, live draw from Angkanet every day. Rajapaito…”. 6. Parties’ Contentions A. Complainant Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Disputed Domain Name. B. Respondent Respondent did not reply to Complainant’s contentions. 7. Discussion and Findings A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. 1; ; ; : ; ;; and dawsongroupsales.com>.
page 4 Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. Because the design here is incapable of representation in a domain name, it is appropriate to disregard it for purpose of assessing identity or confusing similarity under the first element. Accordingly, the United Kingdom trademark registration is sufficient to show “rights in a mark” for further assessment as to confusing similarity. WIPO Overview 3.0, section 1.10. In addition, Complainant offers sufficient evidence of common law rights in the word Mark alone based on evidence that for many years Complainant has used the word Mark without any design; that such use has been associated with substantial sales; and that third parties including industry publications have referred to Complainant using the word Mark without any design. This evidence is sufficient to show unregistered rights under the Policy. WIPO Overview 3.0 section 1.3 The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is identical to the Mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which Respondent may demonstrate rights or legitimate interests in a Disputed Domain Name. Although 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 difficult 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 facie case 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name. Respondent has not rebutted Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name such as those enumerated in the Policy or otherwise. Furthermore, the Panel considers that the composition of the Disputed Domain Name carries a high risk of implied affiliation with Complainant. WIPO Overview 3.0, section 2.5.1. The Panel finds the second element of the Policy has been established.] C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The Panel finds that Respondent registered the Disputed Domain Name in bad faith. Complainant has submitted evidence that it is well known. Furthermore, the inclusion of Complainant’s prior registered Mark in its entirety in the Disputed Domain Name, which is almost identical to Complainant’s domain name , supports a finding that Respondent targeted Complainant when it registered the Disputed Domain Name.
page 5 Panels 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. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the reputation of Complainant’s trademark, the composition of the Disputed Domain Name, including the inclusion of Complainant’s Mark in its entirety in the Disputed Domain Name, the absence of any plausible good faith use of the Disputed Domain Name, and Respondent’s failure to respond to Complainant’s cease-and-desist messages and the Complaint, and finds that, in the circumstances of this case, the passive holding of the Disputed Domain Name does not prevent a finding of bad faith under the Policy. The Panel also finds bad faith use based on evidence that on the day after the Disputed Domain Name was registered, it was associated with a website that purported to report lottery results. This supports a finding that Respondent used the Disputed Domain Name to cause confusion for commercial gain. Policy paragraph 4(b)(iv). The Panel finds that Complainant has established the third element of the Policy.] 8. 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 be transferred to Complainant. /Lawrence K. Nodine/ Lawrence K. Nodine Sole Panelist Date: July 9, 2024
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