Owner of Glasgow.com loses Glasgow-2014.com in UDRP

The owner of Glasgow.com lost the domain name Glasgow-2014.com, that was registered in 2006, under the Uniform Domain Name Dispute Resolution Policy at WIPO. The Complainant was Glasgow 2014 Limited that is organizing and operating the 2014 Commonwealth Games in Glasgow. The Complainant and the Respondent negotiated in many occasions the sale or lease of the domain name over the past 6 year but didn’t reach an agreement.

It appears that the Panelist went out of his way in order to find in favor of the Complainant. He accepted the complaint because the Respondent should have known about Glasgow would be awarded the 2014 Commonwealth Games a year after the domain was registered. But that does not prove trademark rights or even unregistered trade mark rights at the time of domain registration. Sure, Scottish Government announced that Glasgow would be applying to host the 2014 Commonwealth Games in 2005 (a year before domain name registration) but that doesn’t give any rights to the Scottish Government.

The negotiations for the purchase or lease of the domain name together with the ownership of the domain Glasgow.com should have been enough to prove legitimate interest on behalf of the Respondent. The Panelist denied that.

This is what I believe a case that should have been dismissed and settled in court. And maybe this is where it is going…

Here is the timeline of events leading to this UDRP decision:

• In July 2003 the Respondent, Tommy Butler, acquires the domain name, glasgow.com.
• 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 Glasgow-2014.com 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, 2009.
• Glasgow was awarded the 2014 Commonwealth Games at the Commonwealth Games Federation General Assembly on November 9, 2007.
• The Complaint was filed with the WIPO Arbitration and Mediation Center on November 28, 2012.
• The domain name Glasgow-2014.com currently displays the default Apache server webpage.

The Panelist ordered the domain name glasgow-2014.com be transferred to the Complainant in what I believe is a very confusing decision because there are arguments made by the panelist that contradict the decision. Here is some of what he said:

“[…] 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. […]

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.”