WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Glasgow 2014 Limited v. Tommy Butler

Case No. D2012-2341

1. The Parties

The Complainant is Glasgow 2014 Limited of Glasgow, United Kingdom of Great Britain and Northern Ireland, represented by Harper Macleod LLP, United Kingdom.

The Respondent is Tommy Butler of Glasgow, United Kingdom, represented by himself.

2. The Domain Name and Registrar

The disputed domain name, <glasgow-2014.com> (the “Domain Name”), 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 November 28, 2012. On November 28, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 24, 2012. The Response was filed with the Center on December 24, 2012, but it features no text other than that which appears in the WIPO template (not even the names of the parties) and is undated and unsigned.

Supplemental filings were received from the Complainant and the Respondent on December 27 and 28, 2012 respectively in which the Complainant drew the Center’s attention to the apparent defects in the Response and the Respondent rectified the “error”. The Complainant has objected to the introduction of the substantive Response out of time, but it was plainly an accidental error, it occurred over the holiday period, nobody has suffered as a result and the Panel sees no reason to exclude it.

At the same time the Respondent sent a series of emails objecting to the behaviour of the Complainant and its representatives. The Panel notes the content of those emails but does not regard any of the content as relevant save to the limited extent that it supports matters set out in the Response.

The Center appointed Tony Willoughby as the sole panelist in this matter on January 7, 2013. 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 January 8, 2013, the Panel issued a Procedural Order seeking from the parties a complete collection of the inter-party correspondence preceding the Complaint, if either of them thought the pre-Complaint correspondence to be relevant. Both parties responded but neither produced any emails, which were not already exhibited. The Complainant had not retained copies of the earlier emails, but in any event contended that they were not relevant. The Respondent responded by expressing surprise that the Complainant had not retained the earlier emails and claiming that he retains all “copies of importance with regards business dealing”. However, the Respondent did not provide any copies either. Instead, he suggested that the Complainant’s former member of staff who was the author of some of the earlier emails should be permitted to make a statement. The Respondent was in touch with that individual prior to filing the Response. Had a statement from him been put in with the Response, the Panel would have had no reason not to admit it. Now it is too late. To the extent that the Complainant’s response to the Procedural Order consisted of new evidence the Panel has ignored it.

4. Factual Background

In July 2003 the Respondent acquires the domain name, <glasgow.com>. That domain name is connected to a website devoted to all things Glasgow.

In August 2003 Glasgow.com Limited is incorporated in Scotland by the Respondent.

On August 16, 2005 the Scottish Government announced that Glasgow would be applying to host the 2014 Commonwealth Games.

On January 9, 2006 the Domain Name was registered.

On September 18, 2006 Glasgow City Council filed application at the United Kingdom Intellectual Property Office for registration of inter alia the GLASGOW 2014 logo as a trade mark for a wide selection of goods and services. Registration came through on September 7, 2007 under No. 2433070 and the registration was assigned to the Complainant on December 18, 2009¹.

On June 11, 2007 the Complainant was incorporated for the sole purpose of organising and operating the 2014 Commonwealth Games in Glasgow, assuming the bid to host the games proved successful.

Glasgow was awarded the 2014 Commonwealth Games at the Commonwealth Games Federation General Assembly on November 9, 2007.

On July 20, 2009 the Secretary of State for Scotland made an Order known as The Glasgow Commonwealth Games Act 2008 (Games Association Right) Order 2009 (“the Order”), which came into force on January 20, 2010. By virtue of the Order the Complainant was afforded a right, the Games Association Right, being the exclusive right “to the use of any representation (of any kind) in a manner likely to suggest to the public that there is an association between the Glasgow Commonwealth Games and (a) goods or services; or (b) a person who provides goods or services”.

The Order contains various provisions providing for circumstances where the right is not infringed. One is where the use of a representation is in accordance with an authorisation granted by the Complainant. Another is where the use of the representation is “for the purposes of an undertaking and the way in which the representation is used for the purposes of the undertaking is a way in which it has been continuously used for those purposes before the day on which the Order comes into force [i.e. January 20, 2010]”.

At some stage during 2009 it seems that a Mr. Donnelly of the Complainant entered into an email exchange with the Respondent over the Respondent’s website to which the Domain Name was connected. Of the earlier correspondence, all that the Panel has seen is three expurgated and undated emails from Mr. Donnelly to the Respondent. They were produced by the Respondent and were expurgated allegedly to protect Mr. Donnelly’s privacy. The Panel is reluctant to draw any conclusions from this one-sided view of the exchange, which in any event in expurgated form is singularly uninformative. The Panel made it clear in his Procedural Order that he was not happy about it, saying:

“The Panel has also noted the expurgated versions of emails purportedly sent to the Respondent by a Mr. John Donnelly of the Complainant. However, in their expurgated form they are not easy to understand and significantly they are undated.

If the pre-Complaint exchanges are relevant, the Panel would prefer to see them in unexpurgated form. Since Mr. Donnelly’s emails (or some of them) were being sent from the Complainant’s email account, the Panel assumes that the Complainant can extract them. The Panel notes that the Respondent has not produced any of his communications with Mr. Donnelly.”

As indicated in section 3 above, the Complainant was unable to fill the gap, not having retained the emails, and the Respondent elected not to do so.

On September 26, 2012 the Complainant emailed the Respondent explaining in very gentle terms the scope of its “association right” and seeking removal from the website any material “that associates with the Games”.

On October 1, 2012 the Complainant emailed the Respondent referring to a meeting, which took place the previous week. The Complainant stated that “budget restraints” militate against any purchase of the Domain Name and suggested terms which the writer described as being “with the aim of attempting to achieve something we are both happy with”, the first being “Glasgow-2014.com continues to report news stories about the Games”. It is clear from the email that the Complainant’s concern was that the Respondent should remove from the website commercial links to apartments, hotels and restaurants.

The Respondent acknowledged receipt and said that he would call back the following morning.

On October 2, 2012 the Complainant followed up with another email seeking an indication from the Respondent as to what price the Respondent would require for purchase or rental of the Domain Name.

There then followed email exchanges on October 2, 2012 in which (a) the Respondent said that he had never contemplated selling the Domain Name (he had refused an offer from the Complainant of £600 back in 2006 [sic]) and both parties agreed that rental of the Domain Name was “overly complicated”; and (b) the Respondent stated that it was up to the Complainant to come up with a purchase price with the Complainant responding that it would review the options internally.

On October 5, 2012 the Complainant emailed the Respondent stating that it was “not in a position to make an increased offer to purchase” the Domain Name.

On October 23, 2012 the Complainant again emailed the Respondent wondering if the Respondent had any further thoughts on how the situation might be resolved and asking the Respondent if he might remove the sponsored links from the website.

The Respondent replied the same day saying that he had never asked the Complainant to make an offer to purchase the Domain Name. The email ended “Really can’t see how our business model would function with the request you’re asking – let’s agree to disagree on this and move on as sure you have more important things to do”.

On November 27, 2012 the Domain Name was connected to a commercial website devoted inter alia to hotel and holiday accommodation and various other facilities available to visitors to Glasgow. Some of the content is general, whereas some is Commonwealth Games specific e.g. “Glasgow holiday rooms accommodation apartmnets [sic] for 2014 games. Book your hotel accommodation in Glasgow”.

Currently, the Domain Name is connected to a website which is under development, having no substantive content.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is identical or confusingly similar to a trade mark in which it has rights. The Complainant acknowledges that the trade mark is a device mark and was not in existence at the date the Domain Name was registered.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name.

Finally, the Complainant contends that the Domain Name was registered and is being used in bad faith. In so contending the Complainant relies upon what it believes to be an incontrovertible fact, namely that the Respondent registered the Domain Name knowing that if the bid succeeded the Complainant or its licensor, the Commonwealth Games Federation, would be acquiring rights in respect of any designation indicating association with the 2014 Commonwealth Games, “Glasgow 2014” being an obvious example. The Complainant contends that the Respondent’s purpose in registering the Domain Name was to take commercial advantage of the rights that he knew would be developed in respect of the term, Glasgow 2014”.

B. Respondent

The Respondent denies the Complainant’s contentions, observing that when the Respondent registered the Domain Name there were no relevant trade marks in existence; nor indeed was the Complainant in existence at that time.

The Respondent points to the fact that he already had the domain name <glasgow.com> which he had purchased in 2003 and asserts that that together with some other domains dating back to 1999 establishes that he had a legitimate interest in respect of Glasgow when he registered the Domain Name.

He refers to the correspondence with the Complainant set out in section 4 above and contends that that correspondence makes it clear that until late 2012 not even the Complainant was asserting that there was anything wrong in him holding the Domain Name.

The Respondent contends that the Domain Name is being used to “promote the geographical location of Glasdgow in Scotland, U.K. not the Commonwealth Games”.

The Respondent contends that this is not a case coming within the terms of the Policy, but that it is “a case of reverse domain name hijacking by a corporate body who is using bullying tactics to get its own way”.

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:

(i) The Domain Name is identical or confusingly similar to a trade mark 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 was registered and is being used in bad faith.

The Panel also has to have regard to paragraph 15(e) of the Rules and in particular the following sentence namely:

“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 was brought primarily 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”.

Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.

B. Identical or Confusingly Similar

For the purposes of paragraph 4(a)(i) of the Policy the date upon which the Complainant acquires relevant trade mark rights is irrelevant just so long as they were acquired by the date of filing of the Complaint.

Here, the Complainant succeeds on two fronts. First, the Complainant is the registered proprietor of a GLASGOW 2014 word mark registration, the rights dating back to the filing of the application with the United Kingdom Intellectual Property Office by its predecessor on September 18, 2006. Secondly, the Panel is satisfied on the preponderance of the evidence that, not unlike the designation “London2012” in relation to last year’s Olympic Games, the Complainant has devoted sufficient time, resources and effort over the last three years to establish “Glasgow 2014” as a common law (unregistered) trade mark signifying the goodwill that it has developed in relation to its primary object, namely the organization and operation of the 2014 Commonwealth Games in Glasgow.

The Domain Name comprises the Complainant’s trade mark with the addition of a hyphen and the generic “.com” top level domain identifier. It is permissible for the Panel to ignore the top level domain identifier when assessing identity and confusing similarity under this element of the Policy. The hyphen is of no significance.

The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.

C. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the Complainant to prove a negative, namely that the Respondent has no rights or legitimate interests in respect of the Domain Name. This can often be a difficult matter for a complainant to establish. Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) deals with this issue as follows:

“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”

The Complainant’s case is that the Respondent registered the Domain Name in anticipation of the rights that would be developed by those responsible for the 2014 Commonwealth Games in the event that the Glasgow bid was successful. The Complainant contends that the Respondent registered the Domain Name for the purpose of exploiting the anticipated rights for commercial gain and points to the commercial use that the Respondent was making of the Domain Name on November 27, 2012 (see Section 4 above).

The Panel is satisfied that the Complainant has made out a prima facie case, a case calling for an answer.

Paragraph 4(c) of the Policy, which is addressed to respondents, is headed “How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint” and sets out (on a nonexhaustive basis) three sets of circumstances any of which, “if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for the purposes of paragraph 4(a)(ii) [of the Policy]”. They are:

(i) before any notice to you 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 (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or

(iii) you 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 trade mark or service mark at issue.

The Respondent’s position is that when he registered the Domain Name he had a legitimate interest in respect of “Glasgow” through his commercial website connected to his <glasgow.com> domain name and at that time nobody had any rights in respect of the term “Glasgow 2014”, least of all the Complainant, which was not then in existence. He then refers to correspondence that he had with the Complainant in 2009 and 2012 in which no objection was taken to the Domain Name, the only complaint being to certain of the content on the website. It is convenient to mention here that in his various submissions the Respondent has referred to communications with the Complainant in 2006. The Complainant was not in existence in 2006, but in any event, even if the correspondence was with the Complainant’s predecessor, the Panel can take no account of it, not having seen it; although as will be seen below the Panel has nonetheless been prepared to make certain assumptions in the Respondent’s favour.

The Respondent has established to the satisfaction of the Panel that he has a legitimate interest in respect of the name “Glasgow” derived from his website connected to his domain name, <glasgow.com>, a commercial website through which he provides visitors with information and a wide variety of services and advertising links relating to Glasgow, its hotels, shops and entertainment.

However, the Domain Name is not just “Glasgow”, but “Glasgow-2014”. What is the significance (if any) of adding the numerals “2014” to the name “Glasgow”?

If it had been the case that the Respondent had promoted Glasgow in each year by reference to the year in question (e.g. “Glasgow 2010”, “Glasgow2011” et cetera), the Panel could have accepted that “Glasgow 2014” was just another example in the series. However, that is plainly not this case. As a stand-alone term from the moment that it was announced back in 2005 that Glasgow would be bidding to host the 2014 Commonwealth Games, “Glasgow 2014” will have been taken by a very large number of people in the United Kingdom (and certainly all those with an interest in Glasgow) as a reference to the 2014 Commonwealth Games, in the same way that “London 2012” has been taken as a reference to last year’s Olympic and Paralympic Games in London. And this phenomenon is not peculiar to the United Kingdom, as can be seen from a number of previous decisions under the Policy: Madrid 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598 (<madrid2012.com>); Melbourne 2006 Commonwealth Games Corporation v. B & M Group Of Companies Pty Ltd, WIPO Case No. D2005-0366, (<melbourne2006.com>); Organization Committee for the World Championship of Alpine Ski in 2009 v. Kenney E. Granum, WIPO Case No. D2006-0264 (<valdisere-2009.com>). In all those cases and The London Organising Committee of the Olympic Games and Paralympic Games Limited v. H&S Media Ltd WIPO Case No. D2010-0415 (<mylondon2012.com>) the UDRP panels found that the domain names in issue were likely to be taken not just as references to the events themselves, but also to the organizational effort behind and the goodwill associated with those events.

This latter point is significant, because as the Complainant has pointed out the whole exercise has involved the Complainant (including its predecessors) and will continue to involve the Complainant in substantial expense, a major part of which can only be recovered by way of marketing and merchandising schemes whereby sponsors of the games are given exclusive rights to associate themselves with the event. The activity of the Respondent under and by reference to the Domain Name is calculated to hamper the Complainant in that regard. The Complainant explains it thus:

“[…] the Complainant has entered and is entering into various arrangements with providers of accommodation and travel services, under which such providers are granted the right to associate themselves with the 2014 Commonwealth Games in Glasgow inter alia through use of the Mark. It is widely known that major sporting events derive income from granting rights to providers, such as providers of accommodation and travel, to associate themselves with relevant events. In the case where such exclusivity is not preserved, the value of such grant is reduced, and as such the business of the grantor disrupted. The use by the Respondent of the Mark in the form of domain name, linked to a website through which inter alia non-endorsed accommodation and travel services are being supplied, is disruptive of the business of the Complainant.”

The commercial significance of the issue has evidently not been lost on the Respondent, whose response to the Complainant’s request to remove the sponsored links from his site was to dismiss the suggestion out of hand (see Section 4 above).

That being the commercial reality of the situation, it seems somewhat astonishing to the Panel that, as the Respondent has pointed out, the Complainant and its predecessors not only took no firm action in the matter prior to the launch of this Complaint, but seem to have accepted until now that the Respondent’s possession of the Domain Name of itself is unobjectionable. The Complainant objects to this categorization of the position. In its response to the Panel’s procedural order it says:

“Whilst the awareness of the Complainant of the registration of the Domain Name is not denied, the Complainant disputes and denies that it has not objected to the registration of the Domain Name and/or its manner of application. Certainly, the Complainant has never consented to and has always maintained an objection to the holding of the Domain Name and its manner of use.”

There is no reliable information before the Panel as to what occurred between the parties prior to the September/October 2012 correspondence referred to in Section 4 above at any rate insofar as the Domain Name is concerned. However, the Panel is prepared to accept on the balance of probabilities that the Respondent is correct when he asserts that at a very early stage the Complainant’s predecessor, Glasgow City Council, unsuccessfully sought to purchase the Domain Name from him and that the Complainant objected to aspects of the website content. This is consistent with the general import of the September/October 2012 correspondence.

In an email from the Respondent to the Complainant’s representative dated December 28, 2012 the Respondent wrote:

“The Complainant since 2007 has been using Bullying and intimidation scare tactics more in line with a mafia hitman demanding that we the owners of the domain make changes to it we did try and resolve these issues and can confirm this was done in 2009 even then it was a kind of intimidation and corporate bullying by members of the Glasgow2014 Ltd team.”

This all refers to the content of the website, not the Domain Name.

The Complainant “denies that it has not objected to the registration of the Domain Name”. When (prior to the Complaint) did the Complainant complain? On the papers before the Panel, never. Does the Complainant seriously suggest that someone objecting to the Domain Name (as opposed to its use) would really say as the Complainant said in its email to the Respondent dated October 1, 2012:

“I do not have any issue at all with Glasgow-2014.com reporting about the Games but from a brand protection perspective, I need to ensure that any site promoting the Games does not promote the Games in a manner that may possibly conflict with the organizing committee’s own commercial promotions.”

The Panel would have found the Complainant’s position on this more plausible if it had frankly admitted that its handling of the issue up to the filing of the Complaint had been lamentable. The Panel has no problem in accepting that if any senior member of the Complainant’s staff had been asked if objection was taken to the Domain Name, the answer would have been in the affirmative. However, while it seems from what the Respondent has said that the Complainant’s predecessor wanted the Domain Name and was prepared to pay £600 for it, there is a big difference between wanting it and objecting to it. It also seems from what the Respondent has said that the Complainant had from 2007 been objecting to the commercial content of the website connected to the Domain Name, but, again, objecting to the website content is not the same as objecting to the Domain Name. Astonishingly, given the potential commercial importance of the issue, there is no record (prior to the Complaint) of the Complainant having objected to the Domain Name.

In the absence of any evidence to the contrary, the Panel finds as a fact that in the 5 years from its incorporation to the completion of the September/October 2012 correspondence the Complainant never made complaint about ownership of the Domain Name.

Does the fact that the Complainant has over the last five years sat back and apparently approved of (or at any rate not expressly objected to) the Respondent’s holding of the Domain Name mean that the Complainant has effectively conceded a legitimate interest to the Respondent?

If there had been evidence to show that over that period the Respondent had built up a business, relying upon the Complainant’s apparent approval (or lack of objection), the Panel might well have found that the Respondent had developed a legitimate interest within the meaning of paragraph 4(c)(i) of the Policy.

However, the Respondent has put no evidence before the Panel as to the nature and scope of his business. All that is before the Panel are screenshots of the Respondent’s website provided by the Complainant featuring commercial links which the Respondent has known all along were objectionable to the Complainant. It was their objections to the content of the website which he has categorized as the “intimidation and scare tactics” of the Complainant extending back as far as 2007.

The Respondent is an experienced Glasgow-based online businessman. The Panel notes that while in the Response he states that the Domain Name is being used to “promote the geographical location of Glasgow in Scotland, U.K. not the Commonwealth Games”, nowhere does he state that his choice of the Domain Name was independent of the news that Glasgow would be bidding to host the Commonwealth Games in 2014. Nor, in the view of the Panel, could he credibly make any such claim. Moreover, the November 27, 2012 screenshots make prominent reference to the 2014 Commonwealth Games.

Thus, in the view of the Panel, the Respondent selected the Domain Name for commercial use, with the 2014 Commonwealth Games in mind and knowing that the Domain Name would serve as a reference to those Games. Even if, as the Respondent states it is not his intention to use the Domain Name for the purpose of promoting the Games, he will at all times have known that any business conducted via the Domain Name will be enhanced by the association with the Games that the Domain Name necessarily brings to mind.

In the view of the Panel such behaviour cannot give rise to a right or legitimate interest within the meaning of paragraph 4(a)(ii) of the Policy. The Panel finds that the Respondent has no rights or legitimate interest in respect of the Domain Name.

D. Registered and Used in Bad Faith

In certain circumstances “Glasgow 2014” could be seen as a general reference to matters pertaining to Glasgow in 2014. In circumstances where a major (and very special) international event is due to take place in Glasgow in 2014, it is much more likely to be taken to be a reference to that event, as was the case with “Melbourne 2006”, “Val D’Isere 2009”, “Madrid 2012” and “London 2012”, the trade marks the subject of the WIPO cases cited in the previous section. As the Panel has found above, the Respondent selected the Domain Name knowing of its commercial value as a reference to the Glasgow 2014 Commonwealth Games and with a view to free-riding on the back of the goodwill associated with “Glasgow 2014”.

Ordinarily, such a finding would lead inexorably to a conclusion that the Complaint should succeed and transfer ordered as happened in the cited cases. The finding being that the Respondent registered the Domain Name with knowledge of the Complainant’s trade mark rights and with a view to causing damage to the Complainant or in some way taking unfair commercial advantage of the Complainant’s rights.

However, an unusual aspect of this case is that the Domain Name was registered before any rights had been developed. Glasgow was awarded the Games in 2005, the Domain Name was registered in January 2006, the Complainant’s trade mark was not applied for until September 2006 and there is no evidence of any endeavour on the part of the Complainant’s predecessor (Glasgow City Council) sufficient to give rise to unregistered trade mark rights. The Complainant was not incorporated until 2007.

WIPO Overview 2.0 deals with this issue as follows:

“3.1 Can bad faith be found if the disputed domain name was registered before the trademark was registered or before unregistered trademark rights were acquired?

Consensus view: Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date [see further paragraph 1.4 above], when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right.

[cited decisions omitted]

However: In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This has been found to occur: shortly before or after a publicized merger between companies, but before any new trademark rights in the combined entity have arisen; or when the respondent (e.g., as a former employee or business partner, or other informed source) seeks to take advantage of any rights that may arise from the complainant's enterprises; or where the potential mark in question is the subject of substantial media attention (e.g., in connection with a widely anticipated product or service launch) of which the respondent is aware, and before the complainant is able to obtain registration of an applied-for trademark, the respondent registers the domain name in order to take advantage of the complainant's likely rights in that mark. (In all such cases, in order to have a chance to succeed in any filed UDRP complaint, the complainant must actually demonstrate relevant trademark rights, as these are a precondition for satisfying the standing requirement under the first element of the UDRP for rights in a mark.)

[cited decisions omitted]”

One of the cited cases under this section is Madrid 2012, S.A. v. Scott Martin-MadridMan Websites (supra) relating to a collection of domain names, one of which was <madrid2012.com>, a domain name registered two days before the complainant applied for registration of its “Madrid 2012” trade mark. The complainant had hoped that Madrid would be selected to host the 2012 Olympic and Paralympic Games. The panel in that case stated:

“The Respondent registered the domain name <madrid2012.com> two days before the Complainant filed the first application for MADRID2012 and before the company was renamed MADRID 2012, S.A. He therefore probably did not know about the imminent filing. However, as Madrid’s bid for the 2012 Olympic Games had been published months before and as the Respondent provides information about Madrid under his website "www.madridman.com", he can be deemed to have been aware of this fact. The Respondent was, to the Panel’s belief, also aware of the fact, that the Olympic Games have always been identified by the name of the host city followed by the year of the games, such as Sydney 2000, Athens 2004 or Beijing 2008.

These circumstances lead to the assumption that the Respondent registered the domain name <madrid2012.com> to hinder the people in charge of Madrid’s bid for the 2012 Olympic Games from registering it. The Complainant certainly has no right to monopolize all domain names related to the 2012 Olympic Games in Madrid. However, the Respondent must have been aware that a second level domain name such as <madrid2012.com> is the most obvious domain name to represent Madrid’s bid for the 2012 Olympic Games and, if Madrid should be elected for host city, to represent the 2012 Olympic Games themselves. Bearing in mind these facts, the Respondent can be deemed to have registered the domain name for blocking purposes. The Panel finds that this was a bad faith registration under the Policy, paragraph 4(a)(iii).”

The panel in that case went on to find that the commercial use that the respondent had made of the domain name also constituted bad faith registration and use under paragraph 4(b)(iv) of the Policy: “The Panel finds that, by using the domain name <madrid2012.com>, the Respondent has intentionally attempted to attract Internet users to his websites under "www.madridman.com" by creating a likelihood of confusion with Complainant’s trademarks. This was done for commercial gain and therefore in bad faith under Policy, paragraph 4(b)(iv).”

This Panel has come across the same issue before. Another of the cited cases under this section of WIPO Overview 2.0 is 537397 Ontario Inc. operating as Tech Sales Co. v. EXAIR Corporation, WIPO Case No. D2009-0567:

“The Respondent's defence to the bad faith claim is that because the Domain Names, <ring-blade.com> and <ring-vac.com>, were registered prior to the Complainant's trade mark applications, none of the examples of bad faith registration and use set out in paragraph 4(b) of the Policy is applicable. The Respondent asserts that all those examples pre-suppose the existence of a trade mark.

The Panel disagrees. First, the list of examples in paragraph 4(b) of the Policy is expressed to be non-exhaustive, so there is room for a Panel to find abuse in another form. Secondly, as can be seen from the response to question 3.1 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, the latter part of which appears to the Panel to be precisely on point, there are circumstances where the rights may post-date the registration of the domain name.

[citation from the WIPO Overview omitted]

The Panel agrees that there is very little supporting evidence before the Panel as to the Complainant's use of its trade marks prior to registration of the Domain Names, <ring-blade.com> and <ring-vac.com>. However, for the reasons given above, the Panel is satisfied that the Respondent would never have registered those Domain Names were it not for the fact that the Respondent knew that they were in use or about to be used as trade marks by the Complainant.

Since the Respondent has made no active use of the Domain Names, it is impossible to assess with any certainty what the Respondent's precise motives were at time of their registration. The Complainant contends that the Respondent's purpose was to block the Complainant from registering them itself (paragraph 4(b)(ii) of the Policy), but the Panel believes it at least as likely that the Respondent's intention was to use them to disrupt the business of the Complainant (paragraph 4(b)(iii) of the Policy) or to use them for commercial gain (paragraph 4(b)(iv) of the Policy).

Parties do not register the trade marks of their competitors for no reason at all and in the particular circumstances of this case, the Panel feels entitled to infer that the Respondent's intentions were abusive. The fact that no use has in fact been made of the Domain Names may simply have been the realization that any commercial use of the names would be likely to infringe the Complainant's trade mark rights.

The Panel is satisfied that in the hands of the Respondent, a competitor, the Domain Names constitute an abusive threat hanging over the Complainant's head, which equates to a bad faith use under the Policy […]”

The issue is put succinctly by the panel in ExecuJet Holdings Ltd. v. Air Alpha America, Inc., WIPO Case No. D2002-0669:

“For the purposes of the Policy, a domain name registration can have been undertaken in bad faith even if the trade marks rights at which such bad faith was directed arose after the registration of the domain name. This might be the case where a registrant speculated on an impending merger between companies that would create a new name combining in whole or in part the names of the merger partners. Another example concerns the situation where a registrant based its registration of the domain name on its insider knowledge of the intentions of a (former) business partner or employer in relation to the latter's development of a new trademark. From the intent of the Policy, it is clearly irrelevant whether a registrant intended to abuse an existing trademark right or one which that registrant specifically knew would arise.”

In the present case not only were there no relevant trade mark rights in existence when the Domain Name was registered, the Complainant was not incorporated until the following year. Nonetheless, the Complainant’s predecessor, Glasgow City Council, was in existence and to borrow the wording of the panel in the <madrid 2012.com> case (supra): the Respondent must have been aware that a second level domain name such as <glasgow2014.com> is the most obvious domain name to represent Glasgow’s bid for the 2014 Commonwealth Games and, if Glasgow should be elected for host city, to represent the 2014 Commonwealth Games themselves.

To borrow (and develop) the wording of the panel in ExecuJet Holdings Ltd. v. Air Alpha America, Inc. (supra): from the intent of the Policy, it is clearly irrelevant whether a registrant intended to abuse an existing trade mark right or one which that registrant specifically knew would arise in the hands of an existing undertaking or its successor.

For the reasons given above the Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) of the Policy.

Finally, for completeness, the Panel should mention that for a time he was concerned at the potential effect of one of the provisions of The Glasgow Commonwealth Games Act 2008 (Games Association Right) Order 2009 (see Section 4 above) which provided that the Games Association Right would not be infringed where the use of a relevant representation is “for the purposes of an undertaking and the way in which the representation is used for the purposes of the undertaking is a way in which it has been continuously used for those purposes before the day on which the Order comes into force [i.e. January 20, 2010]”. Could it be that the Respondent’s pre-January 2010 use of the Domain Name has in some way circumscribed the Complainant’s rights in that respect? However, as indicated above, the Panel has no detailed information as to the Respondent’s use of the Domain Name pre-January 2010 and in any event, given the Complainant’s trade mark rights (registered and unregistered), it should not be necessary for the Complainant to rely upon its Games Association Right.

E. Reverse Domain Name Hijacking

There is nothing before the Panel to suggest that this Complaint was launched (albeit belatedly) for any other purpose than the very proper one of protecting the Complainant’s trade mark rights.

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 Domain Name, <glasgow-2014.com>, be transferred to the Complainant.

Tony Willoughby
Sole Panelist
Date: January 12, 2013

¹ For the purposes of the Complaint this one registration is sufficient, yet Annex 4 to the Complaint contained 81 pages of trade mark schedules and certificates with the relevant paperwork appearing at pages 65 to 71.