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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Wollongong City Council v. Viva La Gong

Case No. D2003-0113

 

1. The Parties

The Complainant is Wollongong City Council, New South Wales, Australia, represented by Mr. Peter Knight of Clayton Utz, Solicitors of Sydney.

Respondent is Viva La Gong, New South Wales, Australia, represented by Mr. Troy Strachan trading as Viva La Gong®.

 

2. The Domain Name and Registrar

The disputed domain name <vivalagong.com> is registered with VeriSign, Inc., (Network Solutions) of Dulles, Virginia, United States of America.

 

3. Procedural History

This is an administrative proceding pursuant to the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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").

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") by email on February 14, 2003, and in hard copy on February 19, 2003. On February 14, 2003, the Center acknowledged receipt of the Complaint and sought verification from the Registrar regarding the disputed domain name. On February 24, 2003, the Registrar confirmed that the disputed domain name is registered with Network Solutions in the name "viva la gong," giving contact details; the Policy applies; the language of the Service Agreement is English and the Respondent has submitted to the jurisdiction of the courts at the location of the principal office of the Registrar.

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 February 25, 2003. In accordance with the Rules, paragraph 5(a), the due date for the Response was March 17, 2003. The Response was filed with the Center by email on March 18, 2003, and in hard copy on March 25, 2003. Despite the late filing, the Panel has taken the Response into account.

The Center appointed Alan L. Limbury as Panelist on March 19, 2003, Mr. Limbury having submitted a Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. The Panel finds that it was properly constituted.

The case file sent by the Center to the Panel included, as is usual, copies of the Center’s communications with the parties and the Registrar.

The language of the proceeding was English, being the language of the registration agreement.

On March 27, 2003, Complainant requested permission to submit a Reply to the Response, to correct a factual error in the Complaint that the Response had exposed. In the same communication, the Complainant drew attention to asserted facts of which the Complainant claims to have become aware after the filing of the Complaint. On March 31, 2003, the Respondent sought to respond to both aspects of the proposed Reply.

Many panels have held that additional submissions are inappropriate except in the rarest of circumstances, such as discovery of evidence not reasonably available to the submitting party at the time of its initial submission or arguments by the Respondent that the Complainant could not reasonably have anticipated: CRS Technology Corp. v. CondeNet, Inc., NAF FA0002000093547; Plaza Operating Partners, Ltd.; Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO D2000-0270; Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO D2000-0416; Wal-Mart Stores, Inc. v. Richard MacLeod, WIPO D2000-0662; Electronic Commerce Media, Inc. v. Taos Mountain, NAF FA0008000095344; Parfums Christian Dior S.A. v. Jadore, WIPO D2000-0938; Viz Communications, Inc. v. Redsun dba www.animerica.com, WIPO D2000-0905 and Goldline International, Inc. v. Gold Line, WIPO D2000-1151.

Here the Complainant does not assert that the facts of which it claims to have become aware after filing the Complaint were not previously ascertainable with reasonable diligence. The Panel admits the proposed Reply only insofar as it seeks to correct an error in the Complaint and, in fairness to the Respondent, admits the Respondent’s Rejoinder only insofar as it comments on and takes issue with that purported correction. The purported correction and the admitted portion of the Rejoinder addressed the dates on which the Complainant claims to have registered two domain names and whether one of them was in fact a domain name. On the view taken of this case by the Panel, the registration of any such domain names is irrelevant to the outcome and likewise their registration dates.

 

4. Factual Background

The Complainant is an incorporated statutory local government entity serving the needs of the residents of Wollongong, Australia’s ninth largest city, affectionately known as "The Gong." The Complainant’s charter includes the promotion of multiculturalism, pursuant to which it established a Festival Committee in 1999. On August 11, 1999, the Festival Committee brought together representatives of two existing Wollongong festivals with a view to combining them into "the best yet Wollongong Festival ‘celebrating the arts and cultures of the Gong’." Those present considered several suggested names for the combined festival, including "Viva La Gong," which was adopted by the Committee shortly thereafter, in order to appeal to members of the Wollongong community to embrace and take pride in its unique culture.

Since September 1999, the Complainant has used the name "Viva La Gong" to distinguish its festival from other cultural events. Festivals under the name "Viva La Gong" were held in 2000, 2001 and 2002. Extensively publicized, each attracted thousands of people, involved numerous cultural groups, artists, performers and musicians, generated revenue for the Complainant from ticket sales and stall fees and benefited the Complainant indirectly through increased economic activity.

Mr. Troy Strachan is an artist, stylist and self-described "Performer, Designer, Free Radical and Creative Human," resident in the Illawarra region of Australia, where Wollongong is located. He contributed to the inaugural "Viva La Gong" festival in 2000, volunteering his assistance for the lead up and throughout the ten days of the festival, including providing a creative perspective on promotional design, marketing strategies and audience development and involvement in major events, including participation in the Grand Parade. In a written reference provided on April 17, 2000, he was commended for his contribution to that festival by the Festival Director, the Complainant’s Coordinator of Cultural Services, Amanda Buckland.

In 2000 court proceedings between Mr. Strachan as plaintiff and the Complainant and two other Councils as defendants were settled.

In December 2000, Mr. Strachan enquired of Ms. Buckland as to a consultancy position for the 2001 "Viva La Gong" festival. He also submitted an expression of interest to enter a float in the community parade for that festival. The 2001 festival ran from March 22, 2001, to April 1, 2001. Mr. Strachan participated in the Grand Parade.

On May 31, 2001, the disputed domain name <vivalagong.com> was registered in the name "viva la gong." The Response identifies the Respondent as "Troy Strachan t/a Viva La Gong®." On June 6, 2001, Mr. Strachan became the proprietor in New South Wales of the registered business name VIVA LA GONG.

The 2002 "Viva La Gong" festival took place between September 19 and 29, 2002. On September 26, 2002, the disputed domain name resolved to a website with a front page entitled "Viva La Gong The Official Viva LA GONg® Web Site ©2002." That and other pages contained sexually explicit material about representatives of the Complainant; a statement that an unspecified domain name is for sale on e-Bay Australia; a photograph of Mr. Strachan; recipes; an essay entitled "2 Screw U A Report for Viva La Gong by Brash," and another "Report for Viva La Gong" by "Nick Brash." Mr. Brash is a former employee of the Complainant in connection with the 2000 "Viva La Gong" festival.

 

5. Parties’ Contentions

A. Complainant

Although the Complainant’s objectives are "not for profit," it is nevertheless engaged in trade and commerce in its use of the name "Viva La Gong" in connection with its annual festival and it has established common law trademark rights in that name. The disputed domain name is identical to that mark.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. It is not using and never intended to use the disputed domain name in connection with a bona fide offering of goods or services. It registered and has used the disputed domain name for the primary purpose of diverting Internet users searching for information about the Complainant’s festival to a website containing offensive and defamatory material that ridicules and derides representatives of the Complainant and the "Viva La Gong" festival. The Respondent has never been known by the disputed domain name and has not acquired any trademark or service mark rights. The disputed domain name was registered after the Complainant had acquired trademark rights. No Wollongong resident could choose the disputed domain name unless attempting to abuse the Complainant’s trademark rights. As far as the Complainant is aware, the Respondent has not carried on any business before the disputed domain name was registered.

Further, the Respondent was well aware of the Complainant’s extensive use and promotion of and investment in the name "Viva La Gong." The Complainant has never licensed or otherwise permitted the Respondent to use its trademark nor to register the dispute domain name.

The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name and is trying misleadingly to divert consumers, to tarnish the Complainant’s unregistered trademark and for commercial gain. The Respondent is misrepresenting a relationship with the Complainant by describing its website as the official "Viva La Gong" website; using "Viva La Gong" on the front page of the website; stating on the website that certain material constitutes "A Report for Viva La Gong" and using the Complainant’s marketing images, logos and event names. This misrepresentation of a relationship is designed most effectively to defame, ridicule and denigrate representatives of the Complainant and to tarnish its trademark. It is also apparent from one of the web pages that the Respondent attempted to use the disputed domain name for commercial gain by offering the disputed domain name for sale on e-Bay Australia.

The Respondent registered and is using the disputed domain name in bad faith. Apart from the circumstances already mentioned, the Respondent reserved its most defamatory and vitriolic material for publication on its website during the 2002 "Viva La Gong" festival. This was clearly aimed at creating maximum confusion amongst consumers so that this material would achieve its widest audience. As at the date of the Complaint, the disputed domain name does not resolve to a website or other on-line presence. Nevertheless, inactivity may constitute bad faith use.

B. Respondent

The Respondent Troy Strachan is the proprietor of the registered business "Viva La Gong." He trades under that business name, which he registered on June 6, 2001. Viva La Gong® is a diverse registered business with the desire to self/promote and enhance the creative diversity of the Illawarra region and beyond. Viva La Gong® provides information and a range of creative services. On May 31, 2001, the Respondent registered the disputed domain name for a web-site to promote and provide information about the services of the registered business "Viva La Gong." The disputed domain name is also registered to the registered trading name "Viva La Gong."

On February 22, 2002, the Complainant registered the business name "Viva La Gong Festival." The Complainant is not commonly known as "Viva La Gong" or "vivalagong.com" and those names are not identical to the Complainant’s registered business "Viva La Gong Festival."

Viva La Gong® has engaged in trade and commerce and hence has acquired a commercial reputation and goodwill sufficient to support trademark rights in the mark "Viva La Gong."

The disputed domain name is not misleading and does not use the Complainant’s images, event names, logos or text. <vivalagong.com> is not an authorized site for the Viva La Gong Festival and has never suggested that it is. The Respondent has never attempted to disrupt the activities of the Complainant.

The Respondent does have legitimate interests in the disputed domain name. His website was active before any notice of this dispute. His use of the domain name is in connection with a bona fide offering of goods and services, particularly the payment for reviews received and published on the website. The material provided by the Complainant as to the content of the Respondent’s website is not a true and correct representation of that website. A true version is available online at "http://www.vivalagong.com."

The registered business "Viva La Gong" has been commonly known and associated with the disputed domain name. The website has now received over 10,000 hits. The website is currently active but due to technical difficulties was unavailable between January 13, 2003, and February 20, 2003.

The Respondent did not register and is not using the disputed domain name for the primary purpose of diverting Internet users searching for information on the Complainant’s festival. He has never entered the disputed domain name on any search engines.

The Complainant submitted that the Respondent has never been known by the disputed domain name and has not acquired any trademark or service mark rights. However, the Complainant was aware that the Respondent was the proprietor of the business name "Viva La Gong" and therefore had acquired service and trademark rights in the name "Viva La Gong."

The Respondent admits that he was aware of the Complainant’s registered business name "Viva La Gong Festival" but this is not identical to the Respondent’s registered business name "Viva La Gong" nor to the disputed domain name. He is making fair use of the disputed domain name and does not intend misleadingly to divert consumers. He is not using the Complainant’s images. The image used is from a photograph of the Sydney 2000 Olympic torch relay.

The Respondent submits that the registered business "Viva La Gong" and the disputed domain name are not using the Complainant’s exact trademark. The Complainant has registered the trading name "Viva La Gong Festival."

The domain name offered for sale on e-Bay Australia was not the disputed domain name but another name <aconillawarra.com>.

The Respondent denies any of the circumstances of bad faith contemplated in paragraph 4(b) of the Policy. He submits that he registered the disputed domain name primarily for the purpose of promoting and providing information about the services of the legitimate registered business "Viva La Gong."

 

6. Discussion and Findings

A. Rights in a mark

To succeed in a Complaint under the Policy in relation to an unregistered mark, it is necessary for the Complainant to prove that the mark is in fact a trademark. Thus, the Complainant must produce evidence proving that, prior to the filing of the Complaint, it had provided goods or services under the unregistered mark and had thereby acquired a reputation such that members of the public would associate those goods or services with the Complainant and not with others not authorized by the Complainant to use the mark. That is to say, the Complainant must prove that, prior to filing the Complaint, it had acquired a right in the unregistered mark entitling it to succeed in a legal action against a third person using the mark without its consent: British Heart Foundation .v. Harold A Meyer III (eResolution Case No. AF0957).

The Panel finds that the Complainant has provided sufficient evidence to establish that, prior to the filing of the Complaint, it had acquired, through use, common law rights in the mark VIVA LA GONG. The fact that the Complainant has also registered the business name Viva La Gong Festival is irrelevant.

B. Identical or Confusingly Similar

The TLD ".com" has no source identification function and cannot serve any trademark purpose.

The Panel finds that the disputed domain name is identical to the Complainant’s common law mark VIVA LA GONG.

The Complainant has established this element.

C. Rights or Legitimate Interests

The Panel is satisfied that the Complainant’s common law trademark rights in the name VIVA LA GONG had been established not merely prior to the filing of the Complaint but prior to the registration by the Respondent of the disputed domain name.

The Respondent is not licensed or otherwise authorized by the Complainant to use its VIVA LA GONG mark nor to register the disputed domain name. Having participated in the planning and activities of the 2000 festival and in the activities of the 2001 festival, the Respondent was intimately aware of the Complainant’s VIVA LA GONG mark when he registered the disputed domain name. These circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interest in the disputed domain name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in that name: Do The Hustle, LLC v. Tropic Web (WIPO Case No. D2000-0624) and the cases there cited.

The Respondent relies heavily on his registration of the business name "Viva La Gong" and on his asserted trading activities under that name. That business name was registered after the registration of the disputed domain name and cannot therefore assist the Respondent in establishing that he was known by the disputed domain name prior to having registered that domain name. Further, at the time the business name was registered, the Respondent was well aware of the Complainant’s trademark, as he was a few days earlier when he registered the disputed domain name.

Contrary to the Respondent’s submission, registration and use of a business name does not "therefore" give rise to trademark or service mark rights. The juxtaposition of a business name with the symbol ® reveals a misunderstanding of the important difference between business names and trademarks. A business name is not the same as a trademark and will not necessarily protect its proprietor from trademark infringement nor from misleading or deceptive conduct. More relevantly, under the Policy, registration and use of a business name corresponding to a disputed domain name do not necessarily establish a legitimate interest in the domain name. Each case must depend on its own facts.

The Respondent asserts that his use of the domain name is in connection with a bona fide offering of goods and services, particularly the payment for reviews received and published on the website. However, use which intentionally trades on the fame of another cannot constitute a bona fide offering of goods or services: Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847. Although the Complainant’s mark cannot not be regarded as famous, it is clear from the content of the Respondent’s website during the 2002 festival that, despite his assertion to the contrary, the Respondent intended to attract to his site Internauts expecting to find a site associated with the Complainant. Indeed, he described the site as "official," a clear reference to the Complainant. Under these circumstances his offering of goods or services under the disputed domain name cannot be accepted as bona fide.

The Respondent does not dispute the content of his site as at the time of the 2002 festival. Rather he asserts that the content is now different and invites the Panel to examine the website. The Panel declines to do so. Any changes after notice of this dispute must be treated with caution since they can shed no light on the state of the site prior to the dispute arising.

The Panel finds that the Respondent does not have any rights to or legitimate interest in the disputed domain name. The Complainant has established this element.

D. Registered and Used in Bad Faith

It is important to note that the circumstances set out in the Rules, paragraph 4(b), are not exhaustive.

On the evidence, the Panel is not satisfied that the Respondent has offered the disputed domain name for sale.

The Panel has found that the Respondent registered the disputed domain name with knowledge of the Complainant’s mark, intending to use the domain name to attract web traffic from Internauts seeking a site associated with the Complainant. This justifies a finding of bad faith registration.

Since the Respondent admits he has received payment for reviews published on the website, it is clear the disputed domain name has been used for commercial gain. Under these circumstances the Panel finds the Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internauts to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of his website. This constitutes evidence of both bad faith registration and bad faith use, pursuant to the Rules, paragraph 4(b)(iv).

The Complainant has established this element.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Panel directs that the domain name <vivalagong.com> be transferred to the Complainant.

 

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Alan L. Limbury
Sole Panelist

Dated: April 2, 2003