WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Associated Newspapers Limited v. Makhdoom Babar
Case No. D2020-0282
1. The Parties
The Complainant is Associated Newspapers Limited, United Kingdom (or “UK), represented by Adlex Solicitors, United Kingdom.
The Respondent, according to the Complaint, is Makhdoom Babar, Pakistan. Shaheed Mazhar Ali Mubarak Law Associates, Pakistan, has appeared on behalf of the Respondent, which it has identified as The Daily Mail International.
2. The Domain Name and Registrar
The disputed domain name <dailymailpk.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2020. On February 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 7, 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 February 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 15, 2020.
By letter dated March 13, 2020, the Respondent requested a one-month extension of the deadline to respond to the Complaint. The Complainant objected to the requested extension on March 19, 2020. In light of the Complainant’s objection, the Center granted Respondent an extension of time until March 25, 2020, to respond to the Complaint. On March 24, 2020, the Respondent renewed its request for an additional extension of time, citing the COVID-19 pandemic as the basis for the requested extension. On March 25, 2020, the Center granted the Respondent an extension of time until April 24, 2020, to respond to the Complaint in light of the exceptional circumstances.
On April 14, 2020, the Respondent requested an additional extension of time, of unspecified duration, to respond to the Complaint. On April 20, 2020, the Center indicated that it lacked a basis to grant the Respondent’s request but that its request would be considered by the Panel. On April 22, 2020, the Respondent reiterated its request for an extension of time to respond to the Complaint, citing the COVID-19 pandemic as the basis for the requested extension. On April 23, 2020, the Center again indicated that it lacked a basis to grant a further extension, and advised that the Center would appoint a Panel after April 24, 2020, and would forward all communications to the Panel.
On April 24, 2020, the Respondent advised the Center that it had filed suit seeking an order to bar this proceeding (the “Lawsuit”). The Respondent did not identify the court in which it filed suit (other than saying it was “the Court of Law”), did not provide the caption or case number for the case, did not provide copies of any filings from the Lawsuit, and did not file a Response.
The Center appointed David H. Bernstein as the sole panelist in this matter on April 29, 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.
On May 4, 2020, the Panel issued a Procedural Order requesting that the Respondent provide, by May 8, 2020, a detailed explanation as to why it required an additional extension of time to respond to the Complaint and a specific proposal for the extension that it sought (or, if the extension request was withdrawn in light of the Lawsuit, to so inform the Panel). The Panel also requested that the Respondent provide, by May 8, 2020, details of the Lawsuit, including but not limited to copies of all filings made with the court, any rulings issued by the court, and the expected schedule for all future proceedings in the court related to the Lawsuit. The Procedural Order permitted the Complainant to file a response to the Respondent’s submission by May 13, 2020.
On May 8, 2020, the Respondent submitted to the Center papers that, it indicated, it filed in the Lawsuit. Those papers indicate that the Lawsuit was filed in the “Court of Senior Civil Judge Islamabad.” The Lawsuit is captioned The Daily Mail International v. Pakistan Telecommunication Authority, Associated Newspapers Limited, AdlexSolicitors, WIPO Centre, and ICANN. According to the Respondent, the Lawsuit seeks “a decree for declaration to the effect that the plaintiff’s domain name www.dailymailnews.com and www.dailymailpk.com and decree for permanent injunction restraining the defendants from blocking the domain name of the plaintiff in any manner whatsoever, be passed in favour of the plaintiff as against the defendants with costs.” The Respondent advised that the next hearing date in the Lawsuit was fixed for May 22, 2020. The Respondent did not renew its request for an extension of time and did not file a Response.
The Complainant submitted no response to the Respondent’s May 8, 2020, submission.
4. Factual Background
The Complainant is the management company and publisher of a range of publications in the United Kingdom including two national newspapers: Daily Mail and The Mail on Sunday. The first edition of the Daily Mail was published in 1896. According to the Complainant, the Daily Mail’s average United Kingdom newspaper circulation in November 2019 was approximately 1.1 million per issue. According to the Complainant, its website at the domain name <dailymail.co.uk> is currently the most popular English language news website in the world, and one of the most visited websites in the world.
The Complainant owns a range of registered trademarks for DAILY MAIL including UK trademark 1,207,666 for DAILY MAIL, registered on November 22, 1983; European Union trademark (“EUTM”) 193,433 for DAILY MAIL, registered on November 5, 1999; and UK trademark 1,355,361 for the “Daily Mail” logo/masthead, registered on August 30, 1991.
Prior to filing this Complaint, the Complainant had filed a separate UDRP proceeding against the Respondent in 2019 in relation to the domain <dailymailnews.com>. See Associated Newspapers Limited v. Makhdoom Babar, Mail Group, WIPO Case No. D2019-0049 (the “Prior Dispute”). On February 25, 2019, the Panel in the Prior Dispute ordered that the domain name <dailymailnews.com> be transferred to the Complainant.
On February 22, 2019, the Respondent registered the disputed domain name. According to the Complainant, as of January 15, 2020, the disputed domain name resolved to a website that offered news content. A logo appeared on the website that the Complainant contends is a reproduction of the Complainant’s masthead. On January 16, 2020, the Complainant sent a cease and desist letter to the Respondent, to which the Respondent did not respond. According to the Complainant, at some point following the Complainant’s January 16, 2020, communication, the Respondent removed the website to which the disputed domain name had resolved but did not respond to the Complainant’s communication. As of the date of this decision, a website that offers news content is available at a website to which the disputed domain name resolves, although the most recent news story on the website appears to be dated February 24, 2020. Notably, that is the same date that the Center formally notified the Respondent of the Complaint and the proceedings commenced.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the disputed domain name incorporates the Complainant’s DAILY MAIL trademark in its entirety, and that the addition of the letters “pk” does not negate the confusing similarity between the mark and the disputed domain name. On the contrary, the Complainant contends that the disputed domain name is intended to give the impression that it is a Pakistani domain name linked to the Complainant and its website.
The Complainant contends that the Respondent has no rights or legitimate interest in the domain name because the Respondent is not associated with the Respondent and has never authorized or licensed the Respondent to use its trademarks. The Complainant contends that the Respondent has used the disputed domain name and the Complainant’s trademarks to impersonate the Complainant and/or to attract, confuse and profit from those seeking the Complainant. The Complainant contends that the Respondent’s activity here is the same as in the Prior Dispute in which the Panel found that the Respondent had no rights or legitimate interests in the domain name <dailymailnews.com>.
The Complainant contends that the Respondent registered and used the disputed domain name in bad faith. The Complainant contends that the Respondent was well aware of the Complainant because of the Prior Dispute, and because the Respondent was trying to impersonate the Complainant. Among other facts, the Complainant points to the Respondent’s use of a close copy of the Complainant’s distinctive logo as evidence of the Respondent’s bad faith.
B. Respondent
The Respondent has not responded to the Complaint.
6. Discussion and Findings
A. Procedural Rulings
Under paragraph 18 of the Rules, the Panel has the discretion to suspend or terminate a proceeding given the existence of a lawsuit that includes claims related to the disputed domain name. Many panels facing this situation decline to suspend or terminate “because of the potential for indeterminate delay,” and given “the relative expediency of the UDRP versus courts.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), section 4.14.2. Those considerations weigh against suspension or termination in this case, especially where the lawsuit has been filed after the UDRP proceeding was initiated in an effort to disrupt the UDRP proceeding. Tiara Hotels & Resorts LLC v. John Pepin, WIPO Case No. D2009-0041.
First, although the Respondent indicates that the Lawsuit seeks a declaration concerning the disputed domain name, the Panel has no assurances that the Lawsuit is likely to resolve the dispute over the disputed domain name. For example, there is no evidence in the record that the Lawsuit has been served on the listed defendants, nor is there any evidence in the record that the listed defendants have indicated that they agree to subject themselves to the jurisdiction of the court for purposes of resolving the claims alleged in the Lawsuit.
Second, the Panel notes that the Lawsuit has not been filed in the court of mutual jurisdiction, which in this case are the courts located in Massachusetts, United States of America, the location of the registrar. Accordingly, the Lawsuit would not provide a basis for preventing the implementation of this decision by the registrar. The Panel is therefore inclined to proceed to decision on the merits, and if the Respondent wishes to prevent implementation of the decision, it must file a new suit in the appropriate court of mutual jurisdiction rather than in the courts in Islamabad. See Policy, paragraph 4(k). Of course, the Respondent is able to file a suit unrelated to implementation of the present Decision in such court, if it considers that appropriate.
Third, although the Lawsuit was filed approximately one month ago for the purpose of enjoining this proceeding, the court apparently has taken no action. In particular, the Panel has not been made aware of any action that the court took on May 22, 2020, which is the date Respondent represented was the next hearing date. In any event, the Respondent has not submitted any factual allegations or legal arguments demonstrating that the court has jurisdiction over this Panel or that any decision of the court would be binding on the Panel.
Accordingly, the Panel will proceed to a decision on the merits.
As for the Respondent’s requests for a further extension of time dated April 14, 2020, and April 22, 2020, the Panel notes that, in its Order of May 4, 2020, the Panel gave the Respondent an opportunity to renew that request and explain how long of an extension it was seeking and why it needed additional time. In its submission on May 8, 2020, the Respondent did not renew its request for an extension of time, so the Panel considers that request to be withdrawn.
B. Decision
Paragraph 4(a) of the Policy provides that, to justify transfer of a domain name, a Complainant must prove each of the following:
(i) the domain name 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 respondent’s domain name has been registered and is being used in bad faith.
i. Identical or Confusingly Similar
The Complainant has established that it has rights to the DAILY MAIL trademark. Its ownership of UK and EUTM registrations “satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.” WIPO Overview 3.0, section 1.2
As the WIPO Overview makes clear, “in cases where a domain name incorporates the entirety of a trademark,” as is the case here, “the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” WIPO Overview 3.0, section 1.7; Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505. The addition of a geographic element, such as “pk”, does not prevent the disputed domain name from being seen as confusingly similar to the trademark. WIPO Overview 3.0, section 1.8.
The Panel therefore concludes that the Complainant has satisfied the first UDRP element.
ii. Rights or Legitimate Interests
As section 2.1 of the WIPO Overview 3.0 explains: “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.” The Panel finds that the Complainant has made out a prima facie case. It has alleged facts showing that the Respondent is not associated with the Complainant, that the Complainant has never authorized or licensed the Respondent to use its trademarks, and that the Respondent is using the disputed domain name to impersonate the Complainant and/or to attract, confuse and profit from those seeking the Complainant. The Respondent has not responded to the Complaint, which means that the Complainant’s prima facie showing is unrebutted. Accordingly, there is no evidence showing that the Respondent has any rights or legitimate interest in the disputed domain name and the Complainant has satisfied the second element.
Additionally, the evidence before the Panel convinces it that the Respondent has no rights or legitimate interests in the disputed domain name for a number of reasons.
First, as in the Prior Dispute, the Panel finds that the Respondent’s masthead resembles Complainant’s masthead too closely to be attributed to mere coincidence. That confusingly similar masthead is intended and likely to confuse consumers into believing that the Respondent’s website is associated with the Complainant. The registration and use of a domain name in a way that will misleadingly divert consumers is not consistent with a right or legitimate interest in a domain name. See Policy, paragraph 4(c)(iii).
Second, that no articles appear to have been posted to the website to which the disputed domain name resolves since February 24, 2020, (the date the Respondent was formally notified of the Complaint and this proceeding commenced) suggests that the Respondent does not have a legitimate ongoing business, and that this website is not a legitimate independent news website.
Third, the Respondent has not submitted any evidence demonstrating that, before notice of the dispute, it was using or preparing to use the disputed domain name in connection with a bona fide offering of services, or was known by the disputed domain name. See id, paragraph 4(c)(i), 4(c)(ii). Accordingly, the Panel finds that the Complainant has satisfied the second UDRP element.
iii. Registered and Used in Bad Faith
For all the reasons noted with respect to the second factor, the Panel also finds that the Respondent has registered and used the disputed domain name in bad faith. In particular, the Respondent’s actions here constitute bad faith under paragraph 4(b) of the Policy, which provide in relevant part:
Evidence of Registration and Use in Bad Faith
For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
[…]
(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 web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
Additionally, the Respondent’s registration of the disputed domain name after the Panel in the Prior Dispute found that the <dailymailnews.com> domain name was registered in bad faith is further evidence of the Respondent’s bad faith here. See Arla Foods Amba and Mejeriforeningen Danish Dairy Board v. Mohammad Alkurdi, WIPO Case No. D2017-0391 (respondent’s pattern of registering others trademarks as domain names was “abusive conduct” that “evidence[d] bad faith.”); see also Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046(“A ‘pattern of conduct’ as required in Paragraph 4.b.(ii) . . . may involve multiple domain names directed against a single Complainant.”); WIPO Overview 3.0, section 3.1.2 (“A pattern of abuse has also been found where the respondent registers, simultaneously or otherwise, multiple trademark-abusive domain names corresponding to the distinct marks of individual brand owners.”).
Moreover, in light of the Prior Dispute and the January 16, 2020, cease and desist letter, the Respondent was obviously aware of the Complainant’s famous DAILY MAIL trademark. That the Respondent chose to operate a media website at a domain name that incorporates “dailymail” and adopted a logo that is confusingly similar to the Complainant’s logo reinforces the Panel’s finding that the Respondent registered and used the disputed domain name in bad faith. As in the Prior Dispute, here, too, “there are too many similarities between Complainant’s mark and the [disputed 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.”
The Panel therefore concludes that the Complainant has satisfied the third UDRP element
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 <dailymailpk.com> be transferred to Complainant.
David H. Bernstein
Sole Panelist
Date: May 25, 2020