WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Associated Newspapers Limited v. Makhdoom Babar, Mail Group
Case No. D2019-0049
1. The Parties
Complainant is Associated Newspapers Limited of London, United Kingdom (“U.K.”), represented by Adlex Solicitors, United Kingdom.
Respondent is Makhdoom Babar, Mail Group of Islamabad, Pakistan, self-represented.
2. The Domain Name and Registrar
The disputed domain name <dailymailnews.com> (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2019. On January 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 10, 2019, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on January 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 3, 2019. The Response was filed with the Center on February 2, 2019.
The Center appointed Robert A. Badgley as the sole panelist in this matter on February 11, 2019. 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.
On February 12, 2019, Complainant submitted an unsolicited supplemental filing with two additional annexed exhibits. On February 15, 2019, Respondent sent the Center an email objecting to Complainant’s supplemental filing on the basis that it was not permitted by the Rules – but not including any substantive arguments. Under the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6, unsolicited supplemental filings are generally discouraged, but may be allowed where the panel finds that the information contained therein is pertinent to the dispute and could not have been reasonably anticipated in the party’s initial filing. In its discretion, the Panel considered Complainant’s additional submission here. This is because it was narrowly targeted at a few discrete points made by Respondent that Complainant could not reasonably have foreseen, and it was helpful to the Panel’s assessment of the Parties’ credibility, a key issue in this case. It was not a mere rehash of arguments that were already made or which could have been made.
4. Factual Background
Complainant owns and operates The Daily Mail, a newspaper based in the United Kingdom. The first edition of The Daily Mail was in 1896. As of October 2016, The Daily Mail had a readership of 3.4 million per issue. Complainant operates a website at the domain name <dailymail.co.uk>. According to Complainant, that website is “the most popular English language news website in the world, and one of the most-visited websites in the world.” Complainant’s website receives 500,000 visitors per month from Pakistan (Respondent’s country).
Complainant holds numerous registrations of the trademark DAILY MAIL, including U.K. registration number 1207666 dated November 22, 1983. Complainant’s newspaper, both the paper version and the online version, has for decades featured a masthead including an unusual font with a coat of arms placed between the words “Daily” and “Mail.”
The Domain Name was registered on May 22, 2002. As of November 15, 2018, the Domain Name resolved to a website offering news content. The website at that time featured a masthead bearing certain similarities to Complainant’s newspaper masthead. The words “Daily” and “Mail” were presented in a font virtually or actually identical to Complainant’s font, and those words were separated by a coat of arms somewhat similar to Complainant’s coat of arms. The smaller-font words “The” and “International” appeared above the words “Daily” and “Mail,” respectively, on Respondent’s website as of that date.
At the “Contact Us” link on Respondent’s website, Respondent is described as an “active journalist since 1988” who was “attached with different national and international media organizations across the world.”
Complainant discovered in October 2018 that the Domain Name had been registered and was being used for a website purveying news.
On November 1, 2018, Complainant’s solicitors sent Respondent a cease-and-desist letter, to which no response was received. Complainant’s solicitors attempted to telephone Respondent (using the phone number indicated on Respondent’s website) on November 14, 2018, but the person answering the phone was unable to confirm that the phone number was Respondent’s and was unable to reach Respondent at the time. On November 15, 2018, Complainant’s solicitors sent Respondent a second cease-and-desist letter by international delivery and email. No response to this second letter was received.
At some point after November 15, 2018, Respondent’s website was altered such as the masthead featured the words “The Daily Mail International” with equal font sizes. The distinctive font used on Complainant’s (and, theretofore, Respondent’s) site was removed, and the coat of arms also disappeared.
As of January 3, 2019, Respondent’s website disappeared altogether. As of January 9, 2019, Respondent’s website was reinstated.
5. Parties’ Contentions
Complainant asserts that it has established the three elements required under the Policy for a transfer of the Domain Name.
Respondent asserts that it has a legitimate interest in the Domain Name and has not acted in bad faith. Among other things, Respondent contends that the term “daily mail” is generic and hence open to use by parties other than Complainant. Respondent also asserts that in 2002 it chose not to register <thedailymail.com>, which was available, but instead chose the Domain Name.
According to Respondent, “at many global media events, The Daily Mail International is invited as a Pakistani media organization while at the same events, Daily Mail of UK, the complainant is invited as a British media organization, without any confusion, duplication, misinformation, misunderstanding or misidentification.”
Respondent also argues that the Domain Name uses the generic Top-Level Domain (“gTLD”) “.com”, whereas Complainant’s website uses the country-code Top-Level Domain (“ccTLD”) “.co.uk”. The latter TLD, Respondent contends, is meant for United Kingdom people and businesses. Respondent also points to differences in the Parties’ respective coats of arms and similar items.
According to Respondent, it operates as a Pakistani-focused news outlet, and has never held itself out as being related to Complainant. Finally, Respondent notes that it has owned and used the Domain Name for 17 years without any protest from Complainant.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the mark DAILY MAIL through registration and use. The Panel also finds the Domain Name to be confusingly similar to the mark. Complainant is a news organization, and hence the addition of the word “news” to the DAILY MAIL mark does nothing to negate the confusing similarity between the mark and the Domain Name.
Complainant has established Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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 Panel concludes that Respondent has no rights or legitimate interests in respect of the Domain Name. This is due in part to Respondent’s impaired credibility. Respondent claims that in 2002 it chose not to register <thedailymail.com>, which was available, but instead chose the Domain Name as if to show non-infringing intent. However, Respondent asserts that the domain name <thedailymail.com> was available for registration when it registered the Domain Name in May 2002, whereas in fact <thedailymail.com> had been registered three months earlier, in February 2002 (which is demonstrated by an annex to Complainant’s supplemental filing). In any event, regardless of whether Respondent chose to pass on that domain name or register the Domain Name because the other domain name was not available, Respondent’s use of a similar masthead undermines Respondent’s case. Moreover, Respondent’s claim that its newspaper has been invited to “many global media events” is totally unsupported by any corroborating evidence. This claim, if true, should have been very easy to prove.
In proceedings under the Policy, where there is no formal discovery or disclosure process, no opportunity to cross-examine witnesses under oath, and so forth, determinations of a party’s credibility are not always easy, and a panelist is often left with nothing more than the allegations by the parties, the documentary evidence placed into the record, points of common knowledge, and the application of logic, experience, and common sense. In this context, a party who makes an untrue statement, or offers an internally inconsistent set of allegations, or fails to corroborate with documentary evidence an assertion that can be easily corroborated if true, that party runs the risk of impairing its credibility in general.
As such, Respondent’s perceived lack of credibility here is fatal to its claim that it has a legitimate interest in the Domain Name. The Panel also observes in this connection that Respondent describes itself as a longstanding international media figure (which renders it very likely that it was aware of Complainant and its DAILY MAIL mark). Most tellingly, Respondent’s masthead resembles Complainant’s masthead too closely to be attributed to mere coincidence.
The Panel also notes that Respondent failed to respond to the two cease-and-desist letters sent by Complainant’s solicitors. In the Panel’s experience, someone using a domain name in a non-infringing manner and in furtherance of a legitimate enterprise would have responded to a cease-and-desist letter by asserting its bona fides. Respondent’s failure to do so here undermines its claim of legitimacy.
In sum, it appears, from the materials in the record and the parties’ assertions, that Respondent more likely than not was aware of Complainant’s famous DAILY MAIL trademark and chose to operate a media website bearing some graphic similarities to Complainant’s well-known website. Although Respondent’s website does not expressly state that it is affiliated with or sponsored by Complainant, there are too many similarities between Complainant’s mark and the Domain Name, too many similarities between the mastheads, and too much overlap between the offerings at the two sites (news) to chalk it up to happenstance.
Complainant has established Policy, paragraph 4(a)(ii).
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 the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the 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 its documented out of pocket costs directly related to the Domain Name; or
(ii) that 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the 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.
For essentially the same reasons as are set forth above in the “rights or legitimate interests” discussion, the Panel concludes that Respondent has registered and is using the Domain Name in bad faith, within the meaning of the above-quoted Policy, paragraph 4(b)(iv).
Complainant has established Policy, paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <dailymailnews.com> be transferred to Complainant.
Robert A. Badgley
Date: February 25, 2019