WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Daily Mail and General Trust Plc v. Sun Stefen
Case No. D2018-0818
1. The Parties
The Complainant is Daily Mail and General Trust Plc of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Adlex Solicitors, United Kingdom.
The Respondent is Sun Stefen of London, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <dmgtplc.com> is registered with 1&1 Internet AG (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 12, 2018. On April 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 13, 2018, 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 April 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 6, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 7, 2018.
The Center appointed Clive N.A. Trotman as the sole panelist in this matter on May 25, 2018. 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 factual background is taken from the Complaint.
The Complainant, dating back to 1922, is the owner of the British newspaper the Daily Mail and other publications. The Complainant manages a number of other companies in the provision of news and information with an annual turnover of around GBP 2 billion and operates in about 40 countries.
The Complainant is the owner of the following trademark:
DMGT, United Kingdom Intellectual Property Office ("UKIPO"), registered on August 15, 2014, with registration number 3022039, in classes 9, 16, 35, 36, 38 and 41.
The Complainant also owns the domain name <dmgt.com> and has operated its main website at "www.dmgt.com" since at least as early as 2012.
Background information about the Respondent is not available except for the contact details provided to the Registrar for the purpose of registration of the disputed domain name, which was registered on January 13, 2018. The disputed domain name has been redirected to the Complainant's website "www.dmgt.com".
5. Parties' Contentions
The Complainant's contentions include:
In addition to registered trademark rights, the Complainant has common law rights in the trademark DMGT through its extensive trading and marketing activities, substantial reputation and goodwill in the name "DMGT", which is recognised as distinctive by the public.
The disputed domain name is identical or confusingly similar to the Complainant's trademark, with the addition of the generic term "plc", which does not diminish but reinforces the confusion because the Complainant is a public limited company ("plc").
The Respondent does not have rights or legitimate interests in the disputed domain name. The Complainant has no association with the Respondent and has never authorised or licensed the Respondent to use its trademark.
In the terms of paragraph 4(c) of the Policy, the Respondent has used the disputed domain name to impersonate the Complainant and therefore the Respondent's use of the disputed domain name cannot be bona fide. The Respondent is not commonly known by the disputed domain name. The Respondent's intended use of the disputed domain name is alleged by the Complainant to be fraudulent for commercial gain and to be not fair or noncommercial.
The Complainant says the disputed domain name has been registered and used in bad faith. The Respondent must have had the Complainant's trademark in mind when registering and using the disputed domain name as its use has been to impersonate the Complainant. The redirection of the disputed domain name to the Complainant's own website must be to give the impression to the recipient of an email from the Respondent that it came from the Complainant.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:
"(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith".
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The Panel accepts the uncontested evidence in the form of a copy of the UKIPO registration document that the Complainant has rights as required under the Policy in the trademark DMGT.
The disputed domain name is <dmgtplc.com>, of which the generic Top-Level Domain ("gTLD"), in this instance ".com", may generally be disregarded in the determination of confusing similarity. The remainder, "dmgtplc", comprises the Complainant's trademark DMGT with the suffix "plc", the latter being the designation for a public limited company. The Panel does not find, on balance, that the suffix "plc" is distinguishing, and finds that it merely alludes to the public limited company status of the Complainant. The Panel finds for the Complainant under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has asserted a prima facie case to the effect that the Respondent is not associated with the Complainant, has never been authorised to use the Complainant's trademark, and does not have rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant's prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
"(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 has not responded and has not asserted rights or legitimate interests in the disputed domain name with reference to paragraphs 4(c)(i), (ii) or (iii) of the Policy or otherwise. On the evidence, the Panel cannot foresee any likelihood that the Respondent would be able to satisfy any of those requirements. The Panel finds for the Complainant under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith by a respondent:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location".
The disputed domain name does not resolve directly to a website of its own but redirects visitors to the Complainant's website "www.dmgt.com". The wording of paragraph 4(b)(iv) of the Policy refers to the practice of attempting to attract Internet users to a respondent's website "or other online location", in this case, on the evidence, an email address.
The Complainant has produced in evidence a copy of a personally addressed email message that it says was dated March 16, 2018 (the "Respondent's email"), which was forwarded to the Complainant by a recipient as being suspicious. The Respondent's email had the sender's address "purchasing@ (the disputed domain name)", and the subject header was "RE: Business relationship request". The body of the message, above the salutation and again at the end of the message, displayed a large representation of the Complainant's trademark, being the letters DMGT against a square background of grey colour reminiscent of the colour of background blocks displayed on the Complainant's own website at "www.dmgt.com" as captured on April 30, 2012. The thrust of the Respondent's email was to state briefly that "DMGT PLC" was a company with revenues of around GBP 1.5 billion and to "enclose" (presumably by attachment) "our Financial report 2017". The Respondent's email was presented over the name of the "Business Development Director" (by implication, of the Complainant) followed by the Complainant's correct telephone and fax numbers, correct street address, value added tax (VAT) number, company registration number and date of foundation as September 27, 1922.
Because the Respondent's email produced in evidence makes several correct references to the Complainant's company status as a plc, its trademark, location, contact details and business details, and the disputed domain name is redirected to the Complainant's website, it is not reasonably plausible that the Respondent was unaware of the Complainant and its trademark at the time of registration of the disputed domain name.
Whatever the Respondent's email may have been intended to achieve ultimately, it is unmistakeably in the genre of an apparently cold approach to an individually selected target recipient founded on a carefully crafted impersonation of the Complainant, notably with references to money and business. Significantly the purported sender was "purchasing@ (the disputed domain name)", and the subject heading was "Business relationship request", which together are suggestive of a request for contact and that financial matters would be broached later by the Respondent, in impersonation of the Complainant. On the evidence and on the balance of probabilities, in the terms of paragraph 4(b)(iv) of the Policy, the Panel finds it more probable than not that the Respondent's use of the disputed domain name as a website and as an email address was with intent to target specifically the Complainant and with intent eventually to benefit commercially through confusion with the Complainant's trademark.
The Panel finds the disputed domain name to have been both registered and used in bad faith in the terms of paragraph 4(a)(iii) of the Policy.
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 <dmgtplc.com> be transferred to the Complainant.
Clive N.A. Trotman
Date: June 4, 2018