Westmore · UDRP DecisionTrongate103.com
The Panel ordered transfer of <trongate103.com>. It found that the Complainant had established common law trademark rights in TRONGATE 103 through recognition in print, social media, and search results, and that the domain was identical to that mark. The Respondent did not rebut the Complainant's prima facie showing on rights or legitimate interests. Bad faith was established from the Respondent's drop-catching of the Complainant's inadvertently expired domain and use of a website copying the look and feel of the Complainant's former website to divert traffic for likely commercial gain.
The timeline behind trongate103.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
The case illustrates how a complainant may recover an inadvertently expired domain without a registered trademark when the relevant name has acquired sufficient public recognition as a distinctive identifier. It also shows the significance of targeted drop-catching combined with replication of a former website: those facts supported both knowledge at registration and an inference of intentionally confusing, commercially motivated use.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Culture and Sport Glasgow t/a Glasgow Life v. Yemliha Toker Case No. D2015-2191 1. The Parties The Complainant is Culture and Sport Glasgow t/a Glasgow Life of Glasgow, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Demys Limited, United Kingdom. The Respondent is Yemliha Toker of Istanbul, Turkey. 2. The Domain Name and Registrar The disputed domain name <trongate103.com> is registered with DropCatch.com 646 LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2015. On December 4, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 4, 2015, 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 Complainant filed an amended Complaint on December 11, 2015. 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 December 14, 2015. In accordance with the Rules, paragraph 5, the due date for Response was January 3, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 2016. The Respondent sent an email communication to the Center on January 20, 2016. The Center appointed Tobias Zuberbühler as the sole panelist in this matter on January 11, 2016. 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 is a charity that delivers cultural, sporting and learning activities on behalf of the Glasgow City Council within the city of Glasgow, United Kingdom. As an important provider of arts venues within the city, the Complainant operates the Trongate 103 center for arts and creativity. The name “Trongate 103” refers to the address at which the center is situated – 103 Trongate. Trongate 103 began its transformation into an arts center in 2002 and opened to the public in 2009. It continues to host a wide range of exhibitions and events. The disputed domain name was originally registered by the Complainant. At some point between June 2015 and September 2015, the Complainant inadvertently allowed the disputed domain name to lapse. On or around September 2, 2015, the disputed domain name was recaptured via a “drop catch” service and subsequently registered by the Respondent. 5. Parties’ Contentions A. Complainant In summary, the Complainant contends the following: The Complainant seeks to rely on its unregistered or common law rights in TRONGATE 103, which is identical to the disputed domain name. The Complainant has exhibited a number of articles from third-party sources which demonstrate that the name “Trongate 103” was and is used extensively. In addition, the Complainant has submitted the results for a Google search for the term “Trongate 103”, which all relate directly to the Complainant and its activities. The Complainant further observes that it has a significant amount of followers who subscribe to updates about Trongate 103 on various social media channels such as Facebook and Twitter. Based on the above, the Complainant asserts that, by its use since its foundation in 2002 and opening in 2009, the term has gained secondary meaning and is a distinctive identifier intrinsically associated with the Complainant. The Complainant has found no evidence that the Respondent has been commonly known as “Trongate 103” prior to or after the registration of the disputed domain name. The Respondent is not a licensee of the Complainant and has not received any permission or consent from the Complainant to use its unregistered trademark. The Respondent has copied the look, feel and general substance of the Respondent’s former website and has thereby intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website in terms of paragraph 4(b)(iv) of the Policy. B. Respondent The Respondent’s email communication of Janaury 20, 2016 was forwarded to the Panel for its consideration. The Panel has reviewed the Respondent’s informal communication, and is of the view that its contents do not substantially alter the findings of the present decision. In any event, the Panel notes that the Respondent’s communication was filed well after the due date for the submission of a response and has, in its discretion, decided not to admit it in the present proceeding. 6. Discussion and Findings A. Identical or Confusingly Similar This element of the Policy raises two issues: (1) whether the Complainant has rights in a trademark and (2) whether the disputed domain name is identical or confusingly similar to such trademark or service mark. As to the first question, according to the consensus view of UDRP panelists, to successfully assert common law or unregistered trademark rights, the complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such “secondary meaning” includes the length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant’s rights in a common law trademark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), Paragraph 1.7 ). The record confirms that the Complainant is recognized in print and social media as a well-known center of arts in the city of Glasgow. In addition, the Complainant has submitted the results for a Google search for the term “Trongate 103”, which all relate directly to the Complainant and its activities. Furthermore, the term “Trongate 103” is a non-generic term apparently overwhelmingly attributable to the Complainant. The trademark is thus undoubtedly associated with the Complainant (see also Museum of Science v. Asia Ventures Inc, WIPO Case No. D2003-0691 ). Therefore, the Panel finds that the Complainant can assert common law trademark rights in TRONGATE 103. As to the second question, the disputed domain name is identical with the Complainant’s mark. The Complainant has thus fulfilled paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests There are no indications before the Panel of any rights or legitimate interests of the Respondent in respect of the disputed domain name. Based on the Complainant’s contentions, the Panel finds that the Complainant, having made out a prima facie case which remains unrebutted by the Respondent, has fulfilled the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Since the Complainant inadvertently allowed the disputed domain name to lapse and it was subsequently recaptured via a “drop catch” service, it is obvious that the Respondent was aware of the Complainant’s arts center Trongate 103 at the time of registering the disputed domain name. As per the evidence submitted by the Complainant, this Panel is satisfied that the Respondent uses the disputed domain name to divert Internet traffic to its website by copying the look and feel of the Complainant’s former website, for the likely purpose of achieving commercial gain. The Panel considers such conduct generally to constitute bad faith registration and use under paragraph 4(b)(iv) of the Policy. Accordingly, the Complainant has also satisfied paragraph 4(a)(iii) of the Policy. 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 <trongate103.com> be transferred to the Complainant. Tobias Zuberbühler Sole Panelist Date: January 21, 2016
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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