The domain DawsonGroup.com, registered in 2009 by US-based consultant Rhett Dawson, was challenged by UK leasing giant Dawsongroup Limited. Despite owning UK trademarks and operating since the 1980s, the Complainant failed to show that the Respondent lacked rights or acted in bad faith.
Dawsongroup argued the name matched its long-used brand and domain inactivity pointed to bad faith. But the Respondent, whose surname is Dawson, provided records showing use of “The Dawson Group” for his business and invoices dating back to 2009. He denied knowing of the UK firm, and the panel found no evidence of targeting.
The panel acknowledged the confusing optics of a Dawson battling another Dawson but concluded that the Respondent had legitimate interests and did not act in bad faith.
Final decision: Deny the transfer of the domain DawsonGroup.com, while also denying the Respondent’s request for a finding of Reverse Domain Name Hijacking—all because the Respondent used WHOIS privacy.
Copyright © 2025 DomainGang.com · All Rights Reserved.ARBITRATION AND MEDIATION CENTER – ADMINISTRATIVE PANEL DECISION
Dawsongroup Limited v. Rhett Dawson
Case No. D2025-19701. The Parties
The Complainant is Dawsongroup Limited, United Kingdom, represented by Freeths LLP, United Kingdom.
The Respondent is Rhett Dawson, United States of America (“United States”), represented by Venable LLP.
2. The Domain Name and Registrar
The disputed domain name dawsongroup.com is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 16, 2025. On May 16, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 19, 2025, 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 (Domains by Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on May 20, 2025, 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 amendment to the Complaint on May 22, 2025.
The Center verified that the Complaint together with the amendment to 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 May 23, 2025. In accordance with the Rules, paragraph 5, the due date for Response was June 12, 2025. The Response was filed with the Center on June 11, 2025.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on June 23, 2025. 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 was incorporated in the United Kingdom under its present name in 1985. It appears to be the successor in title to a business initially trading under the name AEH Dawson & Sons in 1935.
Now, the Complainant’s business involves business-to-business asset hire and funding. This includes leasing or rental of wheeled assets, automation and supply of temperature control solutions. According to the Complaint, the Complainant’s corporate group trades in the United Kingdom, France, Germany and the Netherlands (although the temperature control solutions are described as “global supply”).
The Complainant and its corporate group have been trading under the name “DawsonGroup” in plain and stylized versions since 1985. In 1985, the Complainant’s group generated revenues of almost GBP 19 million. In 2009, the revenues had risen to almost GBP 142 million and in 2023 the revenues were GBP 393 million.
The Complaint includes evidence that the Complainant owns the following registered trademarks:
(1) United Kingdom Registered Trademark No. UK00004097633, DAWSONGROUP, which has been registered with effect from September 9, 2024, in respect of a wide range of goods and services in International Classes 6, 7, 9, 11, 12, 17, 19, 20, 35, 36, 37, 39, 40, 41, 42;
(2) United Kingdom Registered Trademark No. UK00004097655 which has been registered since the same date in respect of the same goods and services for the same mark save that the word “Dawson” is depicted in red and “group” in blue;
(3) United Kingdom Registered Trademark No. UK00002550639, which has been registered with effect from June 5, 2010 in respect of a wide range of goods and services in International Classes 6, 7, 11, 12, 19, 36, 37, 39, 40 and 43 for the figurative mark:
Trade mark image
The Complainant also has pending applications for one or other versions of its word mark in the United States (Serial No. 99076011), the European Union (Application No. 019147535), Canada (Application No. 2381371) and New Zealand (Application No. 1273677).
The disputed domain name was first registered on November 11, 1998. However, the Respondent acquired the disputed domain name from an unrelated party on April 22, 2009.
Before acquiring the disputed domain name, the Respondent registered the trading name “The Dawson Group” with the Department of Consumer & Regulatory Affairs in the District of Columbia United States. According to the Response, this was in 2008 although the only date on the application form is April 8, 2009.
The Respondent is a business consultant providing corporate strategy consulting services and business coaching and mentoring.
The disputed domain name does not resolve to a website. However, the Response includes evidence of invoices either from suppliers or various clients for executive coaching addressed to, or from, “Dawson Group” in 2009 and 2010 and a letter of agreement from 2012. According to the Response, the Respondent uses the disputed domain name “as the primary method of communication” of the business (but does not include examples of such use).
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
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. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.
The Complainant has proven ownership of the three registered trademarks for DAWSONGROUP and DAWSONGROUP and device identified in section 4 above. The pending applications, however, do not qualify as trademark rights under the Policy. WIPO Overview 3.0, section 1.1.4.
While the Respondent points out that he registered the disputed domain name before the Complainant registered its trademarks, that (like the arguments about the different geographical locations and fields of business of the parties) is misplaced at this stage of the inquiry although such considerations may become relevant under the other elements of the Policy. What is required to satisfy the first requirement under the Policy is that the Complainant has trademark rights (whether registered or unregistered) at the time the Complaint is brought. The arguments about the timing of the rights are further misplaced in the present case as the evidence before the Panel clearly establishes the Complainant has developed common law rights in its trademarks as unregistered trademarks. See WIPO Overview 3.0, section 1.3.
The comparison of the disputed domain name to the Complainant’s trademark simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. As already noted, this test is narrower than and thus different to the question of “likelihood of confusion” under trademark law.
In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11.
It is also usual to disregard the design elements of a trademark under the first element as such elements are generally incapable of representation in a domain name. Where the textual elements have been disclaimed in the registration or cannot fairly be described as an essential or important element of the trademark, however, different considerations may arise. See for example, WIPO Overview 3.0, section 1.10. The figurative elements of the Complainant’s trademarks are not so dominating that the verbal element cannot be considered an essential or important part of the trademarks in this case. Accordingly, it is appropriate to apply the usual rule.
Disregarding the “.com” gTLD, therefore, the disputed domain name consists of the Complainant’s trademark. Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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. WIPO Overview 3.0, section 2.1.
The Respondent registered the disputed domain name after the Complainant began using the trademark.
It is not in dispute between the parties that the Complainant has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it.
While the Complainant relies on its very substantial reputation in its name and the absence of any website using the disputed domain name, the Complaint must fail.
The Respondent’s surname is “Dawson”. Further, the Respondent denies knowledge of the Complainant and its business when adopting and commencing use of the disputed domain name. In the circumstances of this case, that denial cannot be disregarded.
First, as already noted, “Dawson” is the Respondent’s surname. Secondly, “Dawson Group” is a fairly common form of business description. Thirdly, the Panel recognises that “Dawson” is a common surname. Further, the Respondent’s evidence shows that there are multiple businesses operating under the name Dawson Group or which include Dawson Group. Fourthly, while the global nature of the Internet means that geographical borders are not barriers to bad faith (e.g., WIPO Overview 3.0, section 1.3 and 3.2.2), the two parties are in different countries and different fields of activities. Moreover, while the Complainant had a substantial reputation in 2009, there is no evidence in the Complaint that the Complainant was operating in the United States then or any other reason to suspect that the Respondent is or has been seeking to trade off the Complainant’s reputation.
In these circumstances, the Panel finds that the Respondent has demonstrated rights or legitimate interests in line with paragraph 4(c)(ii) of the Policy.
Accordingly, the Panel finds that the Complainant has not established the second requirement under the Policy. As the Complainant has not established the second requirement under the Policy, the Complaint must fail.
C. Registered and Used in Bad Faith
As the Complaint must fail, there is no need for a detailed assessment of the third requirement. The Panel’s findings in section 5 B. above, however, are consistent with a finding that the Respondent did not register and has not been using the disputed domain name in bad faith.
D. Reverse Domain Name Hijacking
Paragraph 15(e) of the Rules provides that, if after considering the submissions, the Panel finds that the Complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or to harass the domain-name holder, the Panel shall declare in its decision that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. The mere lack of success of the complaint is not, on its own, sufficient to constitute reverse domain name hijacking. WIPO Overview 3.0, section 4.16.
In the present case, the Panel does not make a finding of reverse domain name hijacking. First, the Respondent’s identity was protected by a privacy service. Secondly, the disputed domain name has not resolved to a website and there does not appear to have been other means for the Complainant to ascertain the Respondent or the nature of the Respondent’s business. In that connection, the Panel notes that the Letter of Protest apparently filed by the Respondent with the United States Patent and Trademark Office in connection with the Complainant’s trademark application appears to have identified a number of conflicts between the Complainant’s application and prior registered trademarks – trademarks which were not registered to the Respondent.
6. Decision
For the foregoing reasons, the Complaint is denied.
/Warwick A. Rothnie/
Warwick A. Rothnie
Sole Panelist
Date: July 7, 2025
