Complainant is Glasgow 2014 Limited of Glasgow, Scotland, United Kingdom of Great Britain and Northern Ireland, represented by Harper Macleod LLP, United Kingdom.
Respondent is Vipin Kumar of Delhi, India. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2013. On June 18, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 19, 2013, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on June 21, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 11, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 12, 2013.
The Center appointed Michael A. Albert as the sole panelist in this matter on July 18, 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. 4. Factual Background
The Commonwealth Games is an international sports event which has been held every four years since 1930. All rights to the Commonwealth Games brand are the property of the Commonwealth Games Federation, which licenses the right to use the Commonwealth Games brand to various host cities.
In November 2007, Glasgow was appointed as the host city for the 2014 Commonwealth Games. Complainant, the entity organizing the 2014 Commonwealth Games in Glasgow, has rights to the Commonwealth Games brand under its contract with the Commonwealth Games Federation, as well as various trademark registrations in multiple countries for graphic and word marks involving GLASGOW 2014 (the “GLASGOW 2014 Family of Marks”). See generally Complaint Annex 4. In addition, Complainant was granted a sui generis statutory right in Scotland under the Glasgow Commonwealth Games Act 2008(1) (Games Association Right) Order 2009 (the “Order”), to “exclusive rights in relation 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…goods or services[,] or… a person who provides goods or services.” Order Article 4(1).
Respondent registered the disputed domain name on September 14, 2011. 5. Parties’ Contentions A. Complainant
Complainant argues that Commonwealth Games events are traditionally identified and referred to by their year of occurrence, creating trademark rights in the use of COMMONWEALTH GAMES in conjunction with 2014. Complainant further argues that the use of COMMONWEALTH GAMES in conjunction with 2014 is commonly construed as referring to Complainant’s event, leading to confusion between the disputed domain name and the Commonwealth Games brand.
Complainant contends that its contract with the Commonwealth Games Federation, granting it rights to use the Commonwealth Games brand and an obligation to protect the brand, endows it with sufficient rights to the mark to support its Complaint.
Complainant asserts that Respondent’s use of the mark suggests a connection between Respondent and Complainant, granting Complainant rights under the law of passing off.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name, because the disputed domain name is not descriptive of the goods or services of Respondent, Respondent does not operate under a name identical or similar to the domain name, and no nexus exists between the Commonwealth Games brand and Respondent.
Complainant notes that Respondent’s website presents information about the 2014 Commonwealth Games and advertisements. Complainant argues that Respondent’s use of the website relies on the goodwill of Complainant’s mark for profit, and may cause initial interest confusion among Internet users, and is therefore being used in bad faith. Complainant notes that many of the advertisements, for travel and hotel services, compete with Complainant’s own affiliates’ services.
Complainant argues that Respondent’s registration of the disputed domain name after the announcement of the 2014 Commonwealth Games event shows registration in bad faith, with the intention of profiting from Complainant’s advertising and goodwill in the mark. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
In the case of default by Respondent, the UDRP Rules state that “the Panel shall proceed to a decision on the complaint”, and that the Panel “shall draw such inferences… as it considers appropriate” from Respondent’s failure to comply with the Rules, (see Rules Paragraph 14). A. Identical or Confusingly Similar to a Mark in which Complainant Has Rights
Paragraph 4(a)(i)of the Policy requires Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Complainant’s status as a licensee of the Commonwealth Games Federation’s rights in the COMMONWEALTH GAMES mark is sufficient to grant it standing. See Lycos Europe N.V. v. RegionCo,WIPO Case No. D2000-1102 (“[T]he Policy and Rules do not limit the ability to be Complainant in the Uniform Domain Name Dispute Resolution Procedure to owners of trademarks but merely require that the Complainant demonstrate rights in a trademark. As a license confers upon the licensee the right to use a trademark, the fact that Complainant has demonstrated no trademark rights of his own does not bar his standing in this procedure.”); see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.8 (“In most circumstances, a licensee of a trademark or a related company such as a subsidiary or parent to the registered holder of a trademark is considered to have rights in a trademark under the UDRP.”).
The disputed domain name is not identical to any described COMMONWEALTH GAMES mark or to Complainant’s registered GLASGOW 2014 Family of Marks. However, given the common practice of referring to the Commonwealth Games in conjunction with their year of occurrence, the Panel finds that the addition of the prefix and suffix “2014” is insufficient to avoid confusion. The disputed domain name and the COMMONWEALTH GAMES mark are thus confusingly similar.
Given this finding, the Panel does not reach the issue of the extent to which Complainant’s sui generis statutory grant of rights creates rights in the mark under Policy paragraph 4(a)(i). B. Rights or Legitimate Interests
Policy Paragraph 4(a)(ii) requires Complainant to show that Respondent has no rights or legitimate interests in respect of the disputed domain name. Viewed in the most charitable light, Respondent’s website could be seen as a fan page devoted to providing information about the 2014 Commonwealth Games. Such use, however, would not grant Respondent rights or legitimate interests in the mark in this case.
Not all Panels recognize any rights or legitimate interests in fan sites whose domain names do not clearly identify the site as unaffiliated with the mark holder. See, e.g., David Foox v. Kung Fox and Bill Hicks,WIPO Case No. D2008-0472 (“[A] use of a domain name to cause confusion to Internet users by impersonating the trade mark owner cannot give rise to a right or legitimate interest whether the motivation is commercial or non-commercial.”). Even panels that recognize rights and legitimate interests in fan sites require that such sites be clearly identified as non-affiliates of the rights holder, and that the sites not be operated for commercial gain. See, e.g., Estate of Gary Jennings and Joyce O. Servis v. Submachine and Joe Ross,WIPO Case No. D2001-1042 (noting disclaimers of non-affiliation and the fact that “Respondent does not appear to obtain commercial gain from operating the web site” in a finding of legitimate interests); 2001 White Castle Way, Inc. v. Glyn O. Jacobs,WIPO Case No. D2004-0001 (“There are clear disclaimers on the website stating that it is not endorsed by or an official website of the recording artist. There is no evidence that Respondent obtains any commercial benefit from the website.”).
Respondent’s website has no disclaimers of affiliation and appears to generate revenue through its advertisements. Respondent therefore has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Policy Paragraph 4(a)(iii) requires Complainant to show that the disputed domain name has been registered and used in bad faith. The Panel agrees with Complainant that a strong inference of bad faith registration can be drawn from Respondent’s registration of the website after the announcement of the 2014 Commonwealth Games and from Respondent’s use of the website to generate revenue from visitors interested in the Commonwealth Games.
The Panel also agrees that bad faith registration and use can be inferred under Policy Paragraph 4(b)(iv) from the fact that Respondent’s website is likely to create a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the website, attracting Internet users to the site for commercial gain. Respondent’s website displays the logos of Complainant and of the Commonwealth Games Federation, has no disclaimer as to source or sponsorship, and provides advertisements to the same sort of services affiliated with the Commonwealth Games brand.
The Panel therefore finds that the disputed domain name has been registered and used in bad faith. 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 be transferred to the Complainant.
Michael A. Albert
Sole Panelist
Date: August 2, 2013
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