WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Daily Mail and General Trust Plc v. Domain Admin, Whois Privacy Corp
Case No. D2020-2532
1. The Parties
The Complainant is Daily Mail and General Trust Plc, United Kingdom (“U.K.”), represented by Adlex Solicitors, U.K.
The Respondent is Domain Admin, Whois Privacy Corp, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <dmgtglobalassetmanagement.com> (“Disputed Domain Name”) is registered with Internet Domain Service BS Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2020. On September 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 1, 2020, 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 October 5, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 25, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 26, 2020.
The Center appointed Martin Schwimmer as the sole panelist in this matter on November 5, 2020. 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, a multi-national information and communications provider, has used the DMGT Trademark since 1922. The Complainant and its subsidiaries provide news and information in over 40 countries, with an annual turnover of around GBP 2 billion and operates in about 40 countries.
The Complainant is the owner of U.K. trademark registration no. 3022039, for the mark DMGT, registered on August 15, 2014, in classes 9, 16, 35, 36, 38, and 41.
The Disputed Domain Name was registered April 10, 2020. It was used to host a website purportedly that of a Qatar-based asset management company, which website offered various financial services under the name “DMGT Global Asset Management”.
5. Parties’ Contentions
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 recognized 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 terms "global asset management," which does not diminish but reinforces the confusion with the Complainant’s trademark because the Complainant has been described as providing services in the global asset management sector.
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 authorized 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 host a Website (the “Website”) and configure an email address using the Disputed Domain Name, to impersonate the Complainant. 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.
Every page of the Website displayed a reproduction of the Complainant’s DMGT logo, using the same distinctive font as that used by the Complainant.
In July 2020, the Complainant was contacted by a company based in India that had become concerned about the authenticity of a transaction it had entered into with “DMGT Global Asset Management” which was requiring the transfer of large sums of money and requesting copies of sensitive documentation, such as passports of the company’s officers. The Indian company had believed it was dealing with the Complainant but became suspicious, and contacted the Complainant to verify the transaction. The Complainant was able to advise the Indian company that contrary to the impression given by the Website at the Disputed Domain Name, it was not involved in the transaction which was fraudulent.
The Complainant asserts that 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
A. Identical or Confusingly Similar
The Complainant has established that it owns registrations covering the DMGT trademark.
The Complainant has rights as required under the Policy in the trademark DMGT.
The Disputed Domain Name is <dmgtglobalassetmanagement.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 comprises the Complainant”s trademark DMGT with the term “global asset management” which does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s trademark. The Panel notes that the term “global asset management” has been used to describe the Complainant’s services.
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 authorized 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.
As discussed below in Section C, the Complainant has alleged that the Respondent was using the Dispute Domain Name as part of some sort of scheme to defraud companies by taking advantage of the Complainant’s goodwill in its DMGT trademark.
The Panel has reviewed screenshots of the Website previously hosted at the Disputed Domain Name, prior to the Registrar suspending the Disputed Domain Name upon request by the Complainant.
In the course of reviewing the Complaint, the Panel became aware of what appears to be an identical active version of the Website, hosted at a domain name not involved in this dispute, namely, “www.dmgtglobalassetsmanagement.com” (identical to the Disputed Domain Name except for an addition of “s” to “asset”). This second website, identical in nearly every respect to the Website, also purports to be that of DMGT Global Asset Management, a “Qatar-based Capital Raising Consultancy.”
Reviewing both the screenshots of the Website and the active replica version, the Panel notes various irregularities including typos, grammatical errors, and links to nonexistent pages. There are other oddities, such as the identification of a well-known female tennis player), as the source of a customer testimonial. These irregularities, in their totality, suggest that the Website is not that of an active bona fide business.
It is further alleged that the Respondent used the Disputed Domain Name as an email address in furtherance of a scheme to defraud Internet users. As discussed below, the Complainant produced evidence that an Indian company received a business solicitation in an email using the Disputed Domain Name. It began negotiating a transaction, believing it was dealing with the Complainant. The Indian company’s suspicions were raised, and it contacted the Complainant in order to verify the identity of the sender of the solicitation. This incident may well be evidence of actual confusion.
If it is the case that the Respondent used the Disputed Domain Name as an email address, then such use would constitute a bad faith exploitation of the Complainant’s reputation in its mark.
The Respondent has not rebutted these allegations, nor has it 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. In this instance, given that its Website was suspended after the Complainant alerted the registrar to the email incident, the Respondent’s failure to respond to this Complaint after its seeming “flagship” website had been suspended, will be considered to be additional evidence of the absence of the Respondent’s good faith.
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 Panel takes notice of the fact that the Complainant is the only entity to own a registration for the trademark DMGT in the United States of America, registration no. 4953372. It is also the only entity to own a U.K. registration for the mark. The Panel has reviewed various other online trademark resources such as the database maintained by European Union Intellectual Property Office at “www.tmdn.org” and notes the absence of third-party ownership of the DMGT trademark. Considering this exclusive ownership, as well as the Complainant’s nearly 100 years of use, the Panel finds that the Complainant’s DMGT trademark is strong and distinctive, if not well-known.
The Complainant has produced evidence of a Website purporting to be that a global asset management firm. As stated above, the Panel does not believe that the Website reflects a bona-fide business. Furthermore, the Website reproduces the Complainant’s logo. Finally, the recipient of an email reflecting the Disputed Domain Name, contacted the Complainant to verify the authenticity of the email. The Panel finds this to be plausible evidence of actual confusion.
In view of the Complainant’s distinctive and strong mark, the reproduction of the logo, and the evidence of actual confusion, the Panel concludes that the Respondent was aware of the Complainant and its reputation in its DMGT trademark, prior to the Respondent’s registration and use of the Disputed Domain Name.
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 <dmgtglobalassetmanagement.com> be transferred to the Complainant.
Date: November 20, 2020