Daily Mail and General Trust Plc v Tems Lin

WIPO Case No. D2023-1357

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Daily Mail and General Trust Plc v. Tems Lin

Case No. D2023-1357

1. The Parties

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

United Kingdom.

The Respondent is Tems Lin, Hong Kong, China.

2. The Domain Name and Registrar

The disputed domain name <dmgtsglobalassetsmanagement.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 March 29, 2023. On March 29, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 30, 2023, 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 (Domain Admin, Whoisprotection.cc) and contact information in the Complaint. The Center sent an email communication to the Complainant on March 30, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 3, 2023.

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 the Respondent of the Complaint, and the proceedings commenced on April 5, 2023. In accordance with the Rules, paragraph 5, the due date for Response was April 25, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 26, 2023.

The Center appointed Anne-Virginie La Spada as the sole panelist in this matter on May 3, 2023. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

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Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

The Complainant is a media company based in the United Kingdom, managing a multinational portfolio of companies. Its segment Euromoney Institutional Investor operates in the global asset management, capital markets, and commodities sectors.

The Complainant is the owner of the United Kingdom Registration No. 3022039 for the mark DMGT, registered on August 15, 2014 in classes 9, 16, 35, 36, 38 and 41.

The Complainant is also the owner of the domain name <dmgt.com> since 2012.

The disputed domain name was registered on August 4, 2022.

The disputed domain name previously resolved to a website branded “DMGT Global Asset Management” purportedly offering financial services. At the time of the Decision, the disputed domain name did not resolve to an active webpage.

The Respondent appears to have been involved in four other UDRP proceedings initiated by the

Complainant for the same or similar facts.

5. Parties’ Contentions

A. Complainant

According to the Complainant, the disputed domain name is confusingly similar to its DMGT registered trademark as it captures the entirety of its trademark with the mere adjunction of the letter “s” and the generic terms “global assets management”.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name for the following reasons: (i) the Complainant has no association with the Respondent and has never authorized or licensed the Respondent to use its trademark; (ii) the Respondent has clearly used the

disputed domain name to impersonate the Complainant; (iii) the Respondent is not commonly known by the
disputed domain name; (iv) the Respondent is not making a legitimate noncommercial or fair use of the
disputed domain name.

Finally, the Complainant contends that the Respondent has used and registered the disputed domain name in bad faith. Considering the fact that the disputed domain name used to resolve to a website displaying a logo similar to that of the Complainant, the Respondent was aware of the existence of the Complainant and of its trademark when it registered the disputed domain name. According to the Complainant, the Respondent used the disputed domain name with the intention of impersonating the Complainant with a view to defrauding the Complainant and/or its customers. The Respondent has therefore intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark, a behavior amounting to registration and use in bad faith. Finally, the Complainant contends that the Respondent’s involvement in a number of UDRP cases shows that the Respondent is engaged in a pattern of bad-faith conduct.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

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6. Discussion and Findings

According to paragraph 4(a) of the Policy, a complainant must assert and prove each of the following:

(i)        the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

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

(iii)      the domain name registered by the respondent has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name reproduces the Complainant’s trademark DMGT in its entirety with no alteration, and combines this trademark with the letter “s” and the terms “global assets management”.

UDRP panels consider that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element of paragraph 4(a) of the Policy (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

In the present case, the trademark DMGT is clearly recognizable in the disputed domain name. The mere addition of the terms “global assets management” and the letter “s” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark.

UDRP panels accept that a generic Top-Level Domain (“gTLD”), such as “.com”, may be disregarded when assessing whether a domain name is identical or confusing similar to a trademark (see WIPO Overview 3.0, section 1.11).

The Complainant has satisfied the condition set forth in paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Respondent has failed to file a response.

Based on the information submitted by the Complainant, the Respondent does not appear to have rights or
legitimate interests in respect of the disputed domain name, nor has the Complainant granted to the
Respondent any authorization to use its trademark in the disputed domain name.

Based on the evidence provided by the Complainant, it appears that the Respondent used the disputed domain name to redirect Internet users to a wesite displaying the Complainant’s DMGT trademark in a logo form similar to that of the Complainant and allegedly offering asset management related services. Such use further supports the apparent lack of rights or legitimate interests of the Respondent in the disputed domain name. Indeed, impersonating the Complainant or suggesting the existence of a link with it, where none exists, can hardly be a legitimate or fair use.

Furthermore, the composition of the disputed domain name carries a risk of implied affiliation (see WIPO Overview 3.0, section 2.5.1), as the Complainant operates through its Euromoney segment in the global asset management, capital markets, and commodities sectors.

Accordingly, the Respondent’s use of the disputed domain name does not constitute bona fide offering of goods and services.

Finally, the Panel may draw from the lack of a Response the inferences that it considers appropriate,

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according to the Rules, paragraph 14(b). The Panel finds that the Complainant has established a prima
facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel
finds that the Respondent’s silence corroborates the Complainant’s prima facie case.

Accordingly, the Panel rules that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Complainant has satisfied the condition set out in paragraph 4(a)(ii) of the Policy

C. Registered and Used in Bad Faith

Given that the trademark DMGT of the Complainant is distinctive and that the Respondent used a logo similar to that of the Complainant on his website, the Panel accepts that the Respondent was aware of the existence of the Complainant and of its DMGT trademark at the time of the registration of the disputed domain name. Accordingly, the Panel finds that the disputed domain name was registered in bad faith.

Under paragraph 4(b)(iv) of the Policy, the use of a disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to a 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 a website or

location or of a product or service on the website or location, amounts to evidence of registration and use in
bad faith.

The Panel finds that the Respondent has demonstrated bad faith by using the disputed domain name for a website displaying a logo similar to that of the Complainant and purportedly offering financial services (i.e. services similar to those offered by the Complainant’s group), thereby deliberately relying upon a perceived

association with the Complainant to attract Internet users. Consequently, by using the disputed domain name in such manner, the Respondent intentionally attempted to attract, for the purposes of commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the
source and affiliation of its website. Such behavior constitutes use in bad faith under paragraph 4(b)(iv) of
the Policy.

WIPO Overview 3.0: a pattern of bad faith conduct may include a scenario where a respondent, on separate occasions, has registered trademark-abusive domain names, even where directed at the same brand owner).

Finally, the Complainant has prevailed in previous UDRP proceedings which appear to have involved the named respondents are different from the named Respondent in the present case, the domain names at issue in these prior cases resolved to websites with either the same appearance as the Respondent’s website or to a website with a different design but very similar content. These circumstances make it appear likely that the same person is behind each of those domain names and the disputed domain names. The fact that the Respondent has been involved in several previous cases under the UDRP against the Complainant shows a pattern of bad faith conduct within the meaning of paragraph 4(b)(ii) of the Policy (see section 3.1.2 of the
Respondent (see Daily Mail and General Trust Plc v. Domain Admin, Whois Privacy Corp., WIPO Case No.
D2020-2532; Daily Mail and General Trust Plc v. Nathan Ngawai Makerita, WIPO Case No. D2021-0028;
and Daily Mail and General Trust Plc. v. Domain Admin, Whois Privacy Corp., Domain Admin, Privacy

Protect, LLC (PrivacyProtect.org) / Simmon Mac, Withheld for Privacy Purposes, Privacy service provided by

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 <dmgtsglobalassetsmanagement.com> be transferred to the

Complainant.

/Anne-Virginie La Spada/
Anne-Virginie La Spada
Sole Panelist
Date: May 17, 2023