WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Associated Newspapers Limited v. Ajetomobi Oluseun
Case No. D2017-1173
1. The Parties
The Complainant is Associated Newspapers Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Adlex Solicitors, United Kingdom.
The Respondent is Ajetomobi Oluseun of Lagos, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <dailymailceleb.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2017. On June 15, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 15, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 June 26, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 16, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 18, 2017.
The Center appointed Cherise Valles as the sole panelist in this matter on July 20, 2017. 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 was incorporated in the United Kingdom on April 1, 1905. It is the management company and publisher for a range of publications in the United Kingdom, including two national newspapers: the Daily Mail and The Mail on Sunday. The Complainant owns a range of registered trademarks for Daily Mail including the following:
- United Kingdom trademark 1207666, registered on November 22, 1983, for DAILY MAIL;
- European Union trade mark 193433, registered on November 5, 1999, for DAILY MAIL; and
- United Kingdom trademark 2505348A, registered on January 28, 2011, for MAIL.
The website for the Daily Mail, and The Mail on Sunday, “www.dailymail.co.uk” (also known as “MailOnline” and “Daily Mail Online”) is one of the most popular English language news websites in the world.
According to the National Readership Survey, The Daily Mail’s average newspaper readership in the United Kingdom from October 2015 to September 2016 was over 3.4 million per issue. According to the Audited Bureau of Circulations, The Daily Mail’s average newspaper circulation in the United Kingdom in January 2017 was approximately 1.5 million per issue.
The Complainant’s website, “www.dailymail.co.uk”, is also widely known internationally. In 2012, The Guardian stated that the Complainant’s website was the leading online newspaper in the world, reaching some 45.3 million people in December 2011. In particular, a Google Nigeria search showed that the Complainant’s website was in first place when searching “Daily Mail”, with the title: “Home | Daily Mail Online”. There were approximately 12 million unique visitors and over 98 million page views from Nigeria of the Complainant’s website during the period May 2016 to April 2017. From April 2014 to March 2015, there were over 5.7 million unique visitors and 60 million page views from Nigeria.
The disputed domain name <dailymailceleb.com> was registered on November 30, 2016. As of May 11, 2017, there was a website available at the disputed domain name providing news and entertainment content similar to that found on the Complainant’s own website. The home page of the website was prominently branded “Daily Mail” and the header had an exact copy of the Complainant’s distinctive MAIL logo / trademark. The logo appears with a blue background, similar to the color scheme used on the Complainant’s own website. The website includes third party advertisements, including for “CWCVS Managed Hosting”.
On May 18, 2017, the Complainant filed a complaint against the Respondent with the Nigeria Internet Registration Association (NIRA), pursuant to the NIRA Dispute Resolution Policy, in respect of another domain name, <dailymail.com.ng>, owned by the Respondent. The Respondent replied in an email dated May 24, 2017 confirming receipt of that complaint and stating that he had removed “infringing” content and added a disclaimer to the website at “www.dailymail.com.ng”.
As of June 1, 2017, the header of the website at the disputed domain name had been changed. The Complainant’s “Mail” logo was removed and replaced with a stylized version of the words “Daily Mail Celeb”. In addition, a disclaimer was added to the bottom of every page of the website at the disputed domain name stating that the website was not associated with MailOnline or UK DailyMail.
5. Parties’ Contentions
The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:
The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
- The disputed domain name is confusingly similar or identical to the Complainant’s registered trademark, Daily Mail, in light of the fact that it wholly incorporates the Complainant’s mark.
The Respondent lacks rights or legitimate interests in the disputed domain name.
- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that includes its trademarks.
The disputed domain name has been registered and is being used in bad faith.
- The Complainant asserts that the disputed domain name was registered and is used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use.
The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (i.e., a complainant) establishes each of the following elements:
(i) the domain name is identical or confusingly similar to a trademark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name was registered and is being used in bad faith.
The Complainant has the burden of proof in establishing each of these elements.
The Respondent has failed to file a response in this proceeding and is therefore in default and the Panel may draw appropriate inferences from the available evidence submitted by the Complainant in accordance with the Rules, paragraph 14(b).
A. Identical or Confusingly Similar
To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.
The Complainant is the sole and exclusive owner of the DAILY MAIL trademark, and has registered several trademarks in the United Kingdom and the European Union as indicated in Section 4 above. The Complainant also relies on its common law rights. By virtue of its extensive trading and marketing activities and its status as a major United Kingdom newspaper, the Complainant has developed substantial goodwill in the name “Daily Mail”. Through its widespread use, the trademark is recognized by the public as distinctive of the Complainant’s newspaper business.
The disputed domain name is confusingly similar to the Complainant’s trademark, Daily Mail. The disputed domain name wholly incorporates the term “Daily Mail”, which was registered by the Complainant in the United Kingdom and the European Union. Numerous earlier UDRP decisions have held that when a domain name wholly incorporates a complainant’s registered trademark, it is sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Philip Morris USA Inc. (PM USA) v. Temp Organization / Mehmet Ali Ciger, WIPO Case No. D2011-1675.
The disputed domain name differs from the Complainant’s trademark only through the addition of the word “celeb”, which is a commonly used shortened version of the word “celebrity”. The addition of “celeb” fails to break the connection between the disputed domain name and the Complainant’s trademark; rather, it may serve to reinforce the link as the Complainant’s website and newspapers are well known for reporting on celebrity news stories.
In the light of the foregoing, the Panel finds that the disputed domain name <dailymailceleb.com> is confusingly similar to the Complainant’s registered mark and that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
The burden of proof is on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. Under the UDRP, if a prima facie case is established by the Complainant, then the burden of production of evidence shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name (with “you” referring to the respondent):
“[a]ny of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent did not submit a response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).
Previous UDRP panels have established that in order to shift the burden of production to the respondent, it is sufficient for the complainant to make a prima facie showing that the respondent has no right or legitimate interest in the disputed domain name. See, for example, Champion Innovations, Ltd. V. Udo Dussling (45FHH), WIPO Case No. D2005-1094. The Complainant’s DAILY MAIL trademark is well known worldwide. In contrast, the Respondent is not commonly known by the disputed domain name and has no registered trademarks or trade names corresponding to the disputed domain name, which evinces a lack of rights or legitimate interests in the disputed domain name. See also Technosytems Consolidated Corporation, Invention Submission Corporation t/a Invent Help v. Hugh Godman, Royal ComputerProprietary Ltd, WIPO Case No. D2007-0001. The Complainant has no association with the Respondent and has never authorized or licensed the Respondent to use its trade marks. The Respondent has clearly used the disputed domain name with the Complainant’s trademark to 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. See Neteller plc v. Prostoprom, WIPO Case No. D2007-1713.
Previous UDRP panels have found that in the absence of any license or permission from the complainant to use such widely-known trademark, no actual or contemplated bona fide or legitimate use of the domain name can reasonably be claimed. See, e.g., LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138.
In the light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case and concludes that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
As indicated in Section 4 above, the Complainant’s DAILY MAIL trademarks were registered long before the disputed domain name. The Respondent must have been aware of the existence of the Complainant’s rights in the trademarks when registering the disputed domain name. The Complainant operated a well-known website with a high profile in Nigeria, including in 2016 when the disputed domain name was registered. The Respondent appears to have registered the disputed domain name for the purpose of disrupting the business of the Complainant by copying elements of the Complainant’s website and diverting Internet users searching for the Complainant. Indeed, the Respondent has practically impersonated the Complainant: the disputed domain name itself consists of the Complainant’s distinctive trademark, the Respondent’s website closely copies the style of the Complainant’s site and, prior to June 1, 2017, it included the Complainant’s well-known logo.
The disputed domain name website now features a disclaimer which states that the Respondent is not associated with the Complainant. However, the consensus view of previous UDRP panels is that “where the overall circumstances of a case point to the respondent’s bad faith, the mere existence of a disclaimer cannot cure such bad faith”. Section 3.7, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Under the circumstances in this case, the disclaimer on the website linked to the disputed domain name does not protect the Respondent.
By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Respondent was interested in commercial gain as its website includes third party advertising. Indeed it is difficult to accept that the Respondent would launch this website for a noncommercial purpose. The website at the disputed domain name, prior to June 1, 2017, prominently displayed the Complainant’s distinctive logo, and attracted Internet users seeking the Complainant’s website by creating a likelihood of confusion with the Complainant. The likelihood of confusion is not diminished by the possibility that Internet users might eventually realize that the website at the disputed domain name is not connected with the Complainant either because of the disclaimer (which is any case only a belated addition, and could be removed at an time) or for other reasons. Previous UDRP panels have held that the registration of a domain name obviously connected with well-known trademarks by someone without any connection to these trademarks suggests opportunistic bad faith. See, among others, LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494.
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 <dailymailceleb.com> be transferred to the Complainant.
Date: August 1, 2017