ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Associated Newspapers Limited v. Freddy Paul, Daily Mail News Case No. D2024-4137 1. The Parties Complainant is Associated Newspapers Limited, United Kingdom, represented by Adlex Solicitors, United Kingdom. Respondent is Freddy Paul, Daily Mail News, Australia. 2. The Domain Name and Registrar The disputed domain name (hereinafter “Disputed Domain Name”) is registered with Squarespace Domains II LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2024. On October 9, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 10, 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, Daily Mail News) and contact information in the Complaint. The Registrar also advised that the Disputed Domain Name was scheduled to expire September 27, 2024, unless renewed. The Center sent an email communication to Complainant on October 10, 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 October 10, 2024. On October 17, 2024, Complainant notified the Center that it had renewed the Disputed Domain Name pursuant to ICANN Expired Domain Deletion Policy paragraph 3.7.5.7. 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 October 15, 2024. In accordance with the Rules, paragraph 5, the due date for Response was November 4, 2024. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 5, 2024. The Center appointed Lawrence K. Nodine as the sole panelist in this matter on November 7, 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. Factual Background Incorporated in the United Kingdom in 1905, Complainant is the management company and publisher of a range of publications in the United Kingdom including two national newspapers: Daily Mail and Mail on Sunday. They are commonly referred to as “the Daily Mail” and “the Mail on Sunday”. The first edition of the Daily Mail was published in 1896. Complainant owns many registrations for the trademark DAILY MAIL (hereinafter sometimes the “Mark”), including United Kingdom trademark registration number UK00001207666 (registered November 22,1983) and European Union trademark registration number 000193433 (registered November 5, 1999). Complainant’s publications are well known. Audited third party resources reported, for example, that the average readership for the DAILY MAIL newspaper from July 2019 to June 2021 was over 2 million per issue. In September 2021 the average circulation of the DAILY MAIL newspaper in the United Kingdom was approximately 920,000 per issue. According to third party rankings, Complainant’s website at “www.dailymail.co.uk” was the most-read online UK newspaper brand in 2021, with 518 million page views and 4.1 average daily visitors in July 2021. Complainant’s print and online publications include extensive coverage of politics, including news about politics in the United Kingdom and Australia. The Disputed Domain Name was registered on September 28, 2023. The contact information given by the Registrar indicated that Respondent gave an address in Australia when he registered the Disputed Domain Name. No website has been associated with the Disputed Domain Name since it was registered. However, as of February 1, 2024, MX records had been set up for the Disputed Domain Name to enable email. 5. 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 respond to the Complaint.
page 3 6. 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. 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. The entirety of the mark is reproduced within the Disputed Domain Name. Accordingly, the Disputed Domain Name is confusingly similar to the Mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The additional terms “the” and “politics” do not prevent a finding of confusing similarity between the Disputed Domain Name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. 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 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 Respondent. As such, where a complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on Complainant). If Respondent fails to come forward with such relevant evidence, 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. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith 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. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. Panels have found that the non-use of a domain name (including, as here, a blank 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 finds that Complainant’s trademark is well known, and, consequently, that it is
page 4 most likely that Respondent was likely aware of and targeting Complainant when he registered the Disputed Domain Name. In addition, the inclusion of the additional terms “the” and “politics” further supports the finding that Respondent was targeting Complainant. The article “the” suggests a specific source and “politics” further narrows the target to a source, such as Complainant, that offers information about politics. The Panel also draws adverse inferences from Respondent’s failure to respond the allegations of an intent to impersonate Complainant. Although Complainant offers no evidence of active impersonation, Respondent offers no benign justification for the registration. Respondent’s acquiescence to the allegations weighs against Respondent. Accordingly, the Panel 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 finds that Complainant has established 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 be transferred to Complainant. /Lawrence K. Nodine/ Lawrence K. Nodine Sole Panelist Date: November 12, 2024.
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