WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Glasgow Signs v. 1st Signs Limited trading as Sign-A-Rama

Case No. D2010-0409

1. The Parties

The Complainant is Glasgow Signs of Glasgow, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Morisons LLP, UK.

The Respondent is 1st Signs Limited trading as Sign-A-Rama of Glasgow, UK, represented by Burness LLP, UK.

2. The Domain Name and Registrar

The disputed domain name <glasgowsigns.com> (the “Domain Name”) is registered with Register.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2010. The Center transmitted its request for registrar verification to the Registrar on March 18, 2010. The Registrar responded the same day, stating that it had not received a copy of the Complaint; but confirming that the Domain Name was registered through it by the Respondent and would remain locked during this proceeding, that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applied to the Domain Name, that the registration agreement was in English and that the Respondent had submitted to the jurisdiction at the location of its principal office; and providing the contact details for the Domain Name held on its WhoIs database.

The Center verified that the Complaint satisfied the formal requirements of the 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 23, 2010. In accordance with paragraph 5(a) of the Rules, the due date for Response was April 12, 2010. The Response was filed with the Center on April 9, 2010.

The Center appointed Jonathan Turner as the sole panelist in this matter on April 20, 2010. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules.

The Complainant submitted a Supplemental Note together with a submission that it should be admitted by email on April 15, 2010. The Respondent requested by email of April 21, 2010 that the Panel should not take this Supplemental Note into consideration; but that if the Panel exercised its discretion to consider it, the Respondent should be informed so that it could prepare an appropriate response.

4. Procedural Ruling

Whether supplemental submissions can and should be admitted in proceedings under the UDRP has been considered in many cases. In The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447, the Panel summarised the position as follows:

“The principles adopted and confirmed in these decisions are that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimise prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.

These principles are based on the purpose of the Policy and Rules of providing an expeditious and relatively inexpensive procedure for determining a certain type of domain name dispute, in which each party is entitled to make just one submission. One of the matters which the Panel has to bear in mind is that the admission of a further submission from one party may lead the other party to submit a further document in reply, which may lead to a further submission by the first party, and so on, thereby compromising the procedural economy sought to be established by the Policy and the Rules.”

Having considered the Complainant's email of April 15, 2010, and having perused its Supplemental Note, the Panel was not satisfied that the latter contained material whose existence or relevance could not reasonably have been known by the Complainant when it submitted the Complaint. In particular, it should have been evident to the Complainant that the extent of its use and reputation under the name “Glasgow Signs” was a critical issue. Nor did the Panel find any other exceptional circumstance which would justify the admission of the Complainant's Supplemental Note.

In any event, the Complainant's Supplemental Note did not appear to contain sufficient evidence that the descriptive term “Glasgow Signs” has acquired a secondary meaning and become distinctive of the Complainant's business to establish that the Claimant has acquired a right in it as a common law mark, as required by the first element of the Policy in the absence of any registered rights.

The Panel accordingly decided not to admit this document. It followed that it was unnecessary for the Respondent to respond to it.

5. Factual Background

Both parties provide goods and services in relation to the design, manufacture and installation of commercial signs and signage and both are based in the Glasgow area.

The Complainant was constituted as a partnership in 2003 under the name “Glasgow Signs and Displays” but now trades under the name “Glasgow Signs”.

The Respondent was incorporated as a registered company on January 13, 2004, under the name “1^st Signs Limited” and is a franchisee of an American business called “Sign-a-rama”. The Domain Name has been directed to a website promoting the Respondent's business since March 2006.

6. Parties' Contentions

A. Complainant

The Complainant states that it has traded under the name “Glasgow Signs” since 2004, in particular using a logo comprising this name. However, the Complaint does not provide details of the Complainant's turnover or promotional expenditure under this name. The Complainant contends that it has rights in this mark and observes that the Domain Name is identical to this mark. It notes that when entering “Glasgow Signs” into search engines, the Respondent's website ranks first and this has led to confusion among Internet users wishing to access the Complainant's website.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant points out that the Respondent is not known or referred to by the Domain Name, which does not correspond to its corporate or its trading name. The Complainant draws attention to what it describes as an admission by the Respondent's representatives that the Respondent is not known as “Glasgow Signs”. The Complainant also confirms that it has not authorized or licensed the Respondent to use the Domain Name.

The Complainant alleges that the Domain Name was registered and is being used in bad faith, in that the Respondent has attempted for commercial gain to attract Internet users to its website by creating a likelihood of confusion with the Complainant's mark. The Complainant states that it is aware of several occasions where an Internet user looking to find the Complainant's business has entered the Domain Name into a browser. However, the Complainant has not provided details of these instances in its Complaint. The Complainant adds that it has approached the Respondent with a view to having the Domain Name transferred to it and offered to cover the Respondent's out-of-pocket expenses in connection with the transfer, but the Respondent refused.

The Complainant requests a decision that the Domain Name be transferred to itself.

B. Respondent

The Respondent contends that the Complainant's mark is a highly stylized logo and submits that a comparison between the mark and the Domain Name should be based on the overall impression given by them having regard to any dominant components and to visual, phonetic and conceptual similarities.

The Respondent further submits that the Complainant has provided insufficient evidence to establish a common law right in its “Glasgow Signs” logo. The Respondent disputes the Complainant's statement that it adopted the name “Glasgow Signs” in 2004. According to the Respondent, its representatives requested the Complainant's representatives to exhibit evidence of the Complainant's use of the mark by a letter of February 10, 2010, and a fax of February 22, 2010, but they have failed to do so. The Respondent asserts that the Complainant did not begin to use its logo until early 2010 and that it has remained listed in directories as “Glasgow Signs and Displays”.

The Respondent notes that the Complainant registered the domain names <glasgowsignsuk.co.uk> and <glasgowsignsdisplays.co.uk> in October and December 2009 respectively and suggests that the Complainant did not have an Internet presence prior to these dates. The Respondent further infers that the Complainant did not adopt the name “Glasgow Signs” in 2004, since if it had, it would have registered a corresponding domain name before late 2009. The Respondent also draws attention to recent changes on the Complainant's websites adding the “Glasgow Signs” name and logo.

The Respondent contends that the Complainant does not have a monopoly right to use the words “Glasgow” and “Signs”. The Respondent points out that it is a sign maker and has been based in Glasgow for about 12 years, and this is why it promotes its business using the Domain Name. The Respondent observes that the Complainant, by contrast, is in fact located about four miles away from Glasgow in Blantyre, South Lanarkshire.

The Respondent denies that it trades or intends to trade under the name “Glasgow Signs” but contends that this does not mean that it does not have a legitimate right to use these words in a domain name. The Respondent states that it has been using the Domain Name since 2006 in connection with a bona fide offering of services. It further states that it invested heavily in an advertising campaign in 2006 and registered the Domain Name and <glasgowsignmakers.com> as part of this campaign. It asserts that it was unaware at that date of any business called “Glasgow Signs” although it was aware that the domain name <glasgowsigns.co.uk> was being used for a website by another company called Allan Marrs signs.

The Respondent denies that it is using or that it registered the Domain Name in bad faith. In particular, it denies that it registered the Domain Name to disrupt the business of the Complainant.

Under a sub-heading “Reverse Domain Name Hijacking” the Respondent reiterates that when the Domain Name was registered, the Complainant had no identifiable presence as “Glasgow Signs” and that there was no evidence of use of its logo. The Respondent states that it operates a well-established business, that it spends approximately £20,000 per year advertising its domain names, and that it has derived about 80% of its business from online advertising since 2006. The Respondent notes that the Complaint exhibits no evidence that the Complainant has been trading or using its “Glasgow Signs” logo before the Respondent registered the Domain Name in 2006. It appears to the Respondent that the Complainant recently re-branded and has intended to instill confusion in order to justify its case.

The Respondent requests that the remedies sought by the Complainant be denied.

7. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith.

It is clear from the terms of the Policy that these are cumulative requirements.

As explained in Jason Hachkowski v. Lucas Barnes, WIPO Case No. D2009-1800, it is well-established that the first requirement can be satisfied by rights which are not registered, such as “common law” rights protected by laws on unfair competition or passing off. However, a person can only obtain such rights in descriptive terms if they have become distinctive of that person's business through its use of them. To put it another way, a person claiming rights in a descriptive term must show that the term has acquired a secondary meaning denoting its business.

The more descriptive the term, the more extensive must normally be the use, if it is to acquire such a secondary meaning and become distinctive of a particular company. Where a term is highly descriptive, even very extensive use may be insufficient to establish the requisite secondary meaning: see, for example, Cellular Clothing v. Maxton & Murray [1899] AC 326.

In this case, the Complainant has not provided any specific evidence as to the extent of its use of the descriptive term, “Glasgow Signs” in which it claims rights. The Complainant has not stated the value of its sales using the alleged mark or of its expenditure on any advertising or other promotion under the mark. Nor has it disclosed the nature of any advertising or promotion. There is no evidence showing that customers or suppliers of the Complainant have been taught to regard or have come to perceive the term as a brand.

In these circumstances, the Panel finds that the Complainant has not proved that it has rights in the alleged mark on which it relies. The Complaint fails at first base and it is unnecessary to consider whether the other requirements of the Policy are satisfied.

The Respondent refers to reverse domain name hijacking in a sub-heading of its Response but does not request a finding that the Complainant has engaged in reverse domain name hijacking. In any event, the Panel is not satisfied on the evidence that the Complaint was brought in bad faith so as to constitute reverse domain name hijacking as defined in paragraph 1 of the UDRP. Although the Complainant has failed to prove the first requirement of the UDRP in its Complaint, it appears to the Panel that it may nevertheless have brought the Complaint in a good faith belief that it was justified.

8. Decision

For all the foregoing reasons, the Complaint is denied.

Jonathan Turner
Sole Panelist

Dated: May 4, 2010