WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Daily Mail and General Trust Plc v. Domain Admin, Whoisprotection.cc / Nathan Ngawai Makerita

Case No. D2021-0028

1. The Parties

Complainant is Daily Mail and General Trust Plc, United Kingdom, represented by Adlex Solicitors, United Kingdom.

Respondent is Domain Admin, Whoisprotection.cc, Malaysia / Nathan Ngawai Makerita, New Zealand.

2. The Domain Name and Registrar

The disputed domain name <dmgtglobalassetsmanagement.com> is registered with Web Commerce Communications Limited dba WebNic.cc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 6, 2021. On January 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 7, 2021, 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 and contact information in the Complaint. The Center sent an email communication to Complainant on January 8, 2021 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 January 11, 2021.

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”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 9, 2021. Respondent did not submit any response. Accordingly, the Center notified the Parties of Respondent’s default on February 11, 2021.

The Center appointed Ingrida Kariņa-Bērziņa as the sole panelist in this matter on February 18, 2021. 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

Complainant is a multinational business operating in the global asset management, capital markets, and commodities sectors. It is the proprietor of United Kingdom trademark no. 3022039 for DMTG (word mark), registered on August 15, 2014 for goods and services in classes 9, 16, 35, 36, 38 and 41.

Complainant has operated its primary business website at “www.dmtg.com” since at least 2012.

The disputed domain name was registered on September 22, 2020. Currently, the disputed domain name does not resolve to an active website. The disputed domain name previously resolved to a website that purported to offer financial services by a Qatar-based entity identifying itself as “DMGT Global Asset Management.”

5. Parties’ Contentions

A. Complainant

Complainant’s contentions may be summarized as follows:

Under the first element, Complainant states that its rights in the DMGT mark are established by registration and by common law use. Complainant has traded under the name DMGT since approximately 1922. Complainant’s group trades in 40 counties worldwide that has total revenues of almost 2 billion GBP. By virtue of its extensive sales and marketing activities, Complainant has acquired substantial reputation and goodwill in the name DMGT such the disputed domain name wholly incorporates its trademark and differs only by addition of the generic term “global assets management.” Complainant’s trademark remains the dominant element of the disputed domain name. Two days prior to registering the disputed domain name, Respondent had registered an almost identical domain name (<dmgtglobalassetmanagement.com>), which had resolved to a website identical as that to which the disputed domain name resolves. This website displays a copy of Complainant’s DMGT logo, uses the same distinctive font as that used by Complainant. The earlier website was ordered transferred to Complainant following a WIPO UDRP decision.

Under the second element, Complainant states that it has no association with Respondent and has never authorized or licensed Respondent to use its trademarks. Respondent’s only use of the name comprised in the disputed domain has been part of a scheme to impersonate Complainant for commercial gain.

Under the third element, Complainant states that the disputed domain name is part of a scheme by Respondent to impersonate Complainant and/or its customers. It is clear that Respondent had Complainant’s trademark in mind when registering and using the disputed domain, since it is identical to Complainant’s distinctive trademark with the addition of the generic term “global assets management,” which is nearly identical to the term used by The Wall Street Journal to describe Complainant’s business. Further, the disputed domain name was registered two days after the suspension of the domain name <dmgtglobalassetmanagement.com>, which had resolved to an identical website and which had been used for an attempted fraud on a third party.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Given the facts in the case file and Respondent’s failure to file a Response, the Panel accepts as true the contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) Respondent has registered and is using the disputed domain name in bad faith.

A. Identical or Confusingly Similar

Complainant has provided evidence establishing that it has trademark rights in the DMTG mark through registration in the United Kingdom. Complainant thereby satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1.

In comparing Complainant’s DMTG mark with the disputed domain name, the Panel finds that the disputed domain name is confusingly similar with Complainant’s mark. The disputed domain name contains Complainant’s DMTG mark in its entirety. Complainant’s trademark is recognizable within the disputed domain name. The addition of the term “global assets management” does not prevent a finding of confusing similarity, since the mark DMTG is clearly visible within the disputed domain name. See WIPO Overview 3.0, section 1.8.

Section 1.7 of WIPO Overview 3.0 provides: “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 the complainant’s trademark and the disputed domain name.”

It is the well-established view of UDRP panels that the generic Top-Level Domain (“gTLD”) “.com” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).

Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, Respondent’s 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) Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) Respondent is 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 circumstances stated in the Complaint, the Amended Complaint and evidence in support set forth in the annexes thereto indicate that, at the time that Respondent registered the disputed domain name, Respondent had no rights or legitimate interests in the disputed domain name. The nature of the disputed domain name, which comprises Complainant’s well-established DMGT mark with a non-distinctive element that is descriptive of the services offered by Complainant, cannot constitute fair use because Respondent thereby effectively impersonates or suggests sponsorship or endorsement by Complainant, the trademark owner. See WIPO Overview 3.0, section 2.5.2.

The Panel finds that there is no evidence that Respondent is commonly known by the disputed domain names or is using the DMGT mark with the permission of Complainant.

The Panel therefore finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.

Pursuant to WIPO Overview 3.0., section 2.1, and cases thereunder, where 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 disputed domain name. Respondent has not filed any Response. The circumstances of the case, in particular, the use of the disputed domain name to resolve to a website offering services similar to Complainant’s and incorporating Complainant’s DMTG mark, do not indicate that any rights or legitimate interests are plausible. Moreover, currently the disputed domain name does not resolve to an active website. Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of a disputed domain name in bad faith:

(i) circumstances indicating that Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or

(ii) Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel finds bad faith registration and use under the Policy. The Panel agrees with a previous panel that the DMGT mark may be considered distinctive and strong, since the mark has been in long use by Complainant. Daily Mail and General Trust Plc v. Domain Admin, Whois Privacy Corp, WIPO Case No. D2020-2532. The Panel has reviewed the TMView database and Complainant is the only holder of trademarks comprising the sign DMGT. Complainant holds an International trademark registration for DMGT along with the above-mentioned registration in the United Kingdom. It is not credible that Respondent, which had created a website featuring Complainant’s DMGT mark and offering financial services, was unaware of Complainant’s mark when it registered the disputed domain name. Complainant’s mark has been used for such services for nearly a century.

Considering these circumstances, the Panel finds that such a registration creates a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4, describing the types of evidence that may support a finding of bad faith.

The Panel finds that Respondent has demonstrated bad faith by using the disputed domain name for a website offering financial services, thereby deliberately relying upon a perceived association with Complainant’s DMGT mark to attract Internet users. Respondent has concealed its true identity by using a privacy service, and there is no plausible actual or contemplated use of the disputed domain name that would not be illegitimate. The record contains no evidence, other than Complainant’s assertion, that Respondent has engaged in a pattern of conduct and is the same respondent as that in Daily Mail and General Trust Plc v. Domain Admin, Whois Privacy Corp, WIPO Case No. D2020-2532, as respondent in that case is not identified by name. Nevertheless, on balance or probabilities, the evidence presented supports a finding of bad faith in registration and use of the disputed domain name. The fact that the disputed domain name currently does not resolve to an active website does not prevent a finding of bad faith.

The Panel finds therefore that Complainant has established the third element under paragraph 4(a) 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 <dmgtglobalassetsmanagement.com> be transferred to Complainant.

Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: March 4, 2021