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ARBITRATION

AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION


Coolside Limited v. Get On The Web Limited
Case No. D2016-0335

1. The Parties
The Complainant is Coolside Limited of Glasgow, Scotland, the United Kingdom of Great Britain and
Northern Ireland (the United Kingdom), represented by Burness Paull LLP, United Kingdom.
The Respondent is Get On The Web Limited of Hertfordshire, the United Kingdom represented by John
Berryhill, United States of America.

2. The Domain Name and Registrar


The disputed domain name <trtl.com> (the Domain Name) is registered with Tucows Inc. (the Registrar).

3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the Center) on
February 19, 2016. On February 19, 2016, the Center transmitted by email to the Registrar a request for
registrar verification in connection with the Domain Name. On February 19, 2016, 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 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 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on February 25, 2016. In accordance with the Rules,
paragraph 5, the due date for Response was March 16, 2016. Further to the Respondents request, the
Response due date has been extended to March 20, 2016. The Response was filed with the Center on
March 20, 2016.
On March 9, 2016, the Complainant submitted a supplemental filing.

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The Center appointed Ian Lowe, Jon Lang and Richard G. Lyon as panelists in this matter on April 15, 2016.
The Panel finds that it was properly constituted. Each member of 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.
The Complainants supplemental filing comprised further argument as to why the Domain Name could be
said to have been registered and used in bad faith. The Rules do not provide any scope for a party to make
a supplemental filing, save that the Rules paragraph 12 provides that the Panel may request, in its sole
discretion, further statements or documents from either of the Parties. The Panel does not consider that
there is any ground on which to admit the supplemental filing and, accordingly, declines to do so, noting that
nothing in that filing would alter its decision.

4. Factual Background
The Complainant is a company incorporated in Scotland in 2010. The Complainant commenced trading
under the name trtl on October 26, 2013 and sells what it claims is a re-invention of the traditional travel
pillow, marketed as the trtl pillow. It has spent USD 17,217.60 and GBP 6,791.55 on advertising the trtl
product under the TRTL brand since May 1, 2015, mainly focusing on the .com, .co.uk and .de Amazon
websites.
The Complainant is the proprietor of United Kingdom registered trademark number 3023092 TRTL filed on
September 22, 2013, registered in respect of pillows and scarves. It has also applied for registered
trademarks in respect of trtl in the United States of America and other countries. It operates a website at
www.trtl.co.uk.
The Respondent is a company incorporated in England and Wales on October 6, 1998. It is a web
development company. From the late 1990s through to the early part of the 21 st century it registered a
number of domain names comprising acronyms or initialisms, including the Domain Name which was
registered by the Respondent on March 4, 2000.

5. Parties Contentions
A. Complainant
The Complainant contends that the Domain Name is identical to its TRTL trademark, that the Respondent
has no rights or legitimate interests in respect of the Domain Name and that the Respondent registered and
is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Complainant argues that the Respondent has no rights or legitimate interests in respect of the Domain
Name because there is no evidence that the Respondent or any other party has used the Domain Name
since it was registered. It further points out that the Respondent has not sold any goods or offered any
services using the Domain Name. Furthermore, there are no companies registered in the UK Companies
House register with the name trtl and, to the Complainants knowledge, the Respondents business has
never been known by the Domain Name and it has never traded under the mark TRTL.
So far as bad faith registration and use is concerned, the Complainant points out that the Respondent
registered the Domain Name in March 2000 but has not used the Domain Name, or provided any goods or
services under the Domain Name, and is not known by the Domain Name. It complains that the Respondent
has sat on the Domain Name since March 2000 and now offers it for sale at an inflated cost. The
Complainant relies on the finding in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No.
D2000-0003 that the passive holding of a domain name by a respondent amounted to the respondent acting
in bad faith.

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The Complainant also alleges that TRTL is a distinctive mark which no other business is trading under. In
the circumstances, given also that the Complainant owns the UK registered trademark TRTL and has other
pending registrations in respect of that mark, it is likely that the Complainant is the only party who would be
interested in purchasing the Domain Name.
B. Respondent
The Respondent states that one of its aims in the early days of its operation, in light of the circumstances of
the Internet in 1998, was to assist small businesses to obtain visibility on the Internet. Its activities extended
to developing acronyms (a number of which are unpronounceable as words and should be more properly
described as initialisms) as domain names with a view to building and deriving value from the utility of short
domain names.
The Respondent points out that its registration of the Domain Name is many years senior to the adoption by
the Complainant of the TRTL mark and submits that it is perfectly entitled to dispose of its legitimately
acquired business asset as it sees fit. The Respondents use of the Domain Name has had nothing to do
with the Complainants rights. The Respondent maintains that it has never used the Domain Name for
anything to do with pillows and scarves and has not attempted to trade on the Complainants junior
reputation. It has not attempted to pass itself off as the Complainant and has not used the Domain Name to
divert consumers to competitive offerings of pillows or scarves.
In relation to bad faith registration and use, the Respondent points out that the Domain Name was registered
more than 10 years before the Complainant came into existence, let alone the date on which the
Complainant may have acquired rights in respect of TRTL. The Respondent also submits that there is no
evidence either to support a finding in line with those minority findings by UDRP panelists that a targeted
changing of use of a domain name in some way creates a retrospective bad faith registration. The
Respondent does not accept that its offering the Domain Name for sale can be deemed to indicate that the
Domain Name was registered, or is being used, in bad faith. The Respondent has not targeted the
Complainant in any way and the Respondents general offer to sell the Domain Name is not premised on the
Complainants mark or directed to any competitor of the Complainant. The Respondent believes, for good
reason, that this short acronymic domain name has inherent commercial value wholly independent of the
Complainants junior claim to rights in respect of TRTL. The Respondent is adamant that the Domain Name
was for sale from 2009, before the Complainant came into existence, and has been and is still for sale.

6. Discussion and Findings


According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the
Complainant must prove that:
(i)

the Domain Name is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights; and

(ii)

the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii)

the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar


Although the Respondent disputes that the pending applications by the Complainant for registered
trademarks in respect of TRTL could give rise to relevant rights for the purposes of the Policy, there is no
dispute that that the Complainant is the registered proprietor of UK trademark TRTL. Ignoring the gTLD
suffix .com for this purpose, the Domain Name is identical to the Complainants mark. Accordingly, the
Panel finds that the Domain Name is identical to a trademark in which the Complainant has rights.

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B. Rights or Legitimate Interests
In light of the Panels finding in respect of bad faith registration and use below, there is no need for the Panel
to address the issue of whether the Respondent has rights or legitimate interests in respect of the Domain
Name.
C. Registered and Used in Bad Faith
The Domain Name was registered on March 4, 2000, some 10 years before the Complainant came into
existence, and 13 years before the Complainant acquired rights in respect of the mark TRTL and
subsequently commenced trading under that name. In those circumstances, it hardly needs stating that the
Respondent cannot conceivably have been aware of the existence, or even potential existence, of the
Complainant or of any rights it might subsequently acquire in the name TRTL at the time of registration. In
this Panels view, therefore, the Domain Name cannot conceivably have been registered in bad faith.
A small minority of UDRP panelists has in the past attempted to construe subsequent bad faith use of a
domain name as reflecting back to bad faith registration, notwithstanding no evidence of any bad faith
actually operating at the date of registration. This Panel does not adhere to that theory. The UDRP policy is
clear in requiring that a complainant must show both that the domain name was registered in bad faith and
that it is being used in bad faith.
Even those panelists who have advocated such an interpretation of the Policy still require there to be some
evidence that the domain name has been used in bad faith in a manner which indicates a change of
behaviour or other specific targeting of the complainant and its rights. The Complainant has not brought any
coherent evidence even of any such bad faith use in this case.
It follows that the Panel does not find that the Domain Name has been registered and is being used in bad
faith.
D. Abuse of the Administrative Proceeding
Several circumstances of this case require the Panel to consider whether the filing of the Complaint
constitutes using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain
name. Rules, paragraph 1, definition of Reverse Domain Name Hijacking (RDNH). The Rules, paragraph
15(e), call for this analysis even when the Respondent has not expressly requested a finding of abuse.
Timbermate Products Pty Ltd v. Domains by Proxy, LLC / Barry Gork, WIPO Case No. D2013-1603.
Among the reasons cited by UDRP Panels for a finding of RDNH or other abuse are the following, all of
which are present in this case:
-

The Complainant ignored settled Policy precedent in presenting its case as it does: pre-trademark
registration of the disputed domain name (WIPO Overview 2.0, paragraph 3.1, first paragraph,
Consensus View); bad faith requires targeting (Policy, paragraph 4(b)(i), the basis for the Complaint);
bad faith in registration and use must be separately proven. Orient Express Travel Group Pty Ltd v.
Mookstar Media Pty Ltd (ACN 083 167 293), WIPO Case No. DAU2015-0004; GIGS United S.L. v.
SIE MANTIC, WIPO Case No. D2014-1689.

The Complainant has not even tried to explain why ordinary precedent should not apply, which is
directly contrary to its undertaking (Complaint paragraph 21, required by Rule 3(b)(xiii)) that the
assertions in this Complaint are warranted under these Rules and under applicable law, as it now
exists or as it may be extended by a good-faith and reasonable argument. Liquid Nutrition Inc. v.
liquidnutrition.com/ Vertical Axis Inc., WIPO Case No. D2007-1598.

The Complainant was told prior to filing that its case was baseless (Response, Annex F) and why, yet
proceeded anyway. Coperatie Univ U.A. v. Ashantiplc Ltd / c/o Domain Name Privacy LLC, WIPO
Case No. D2011-0636. In the present case this was particularly inexcusable, as the Respondent

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pointed out a case involving similar allegations against this same Respondent in which the complaint
was summarily denied.
-

Ordinarily if the face of the complaint itself demonstrates a settled reason why the complaint must be
denied, a panel may make a finding of RDNH. Tarheel Take-Out, LLC v. Versimedia, Inc., WIPO Case
No. D2012-1668, citing Liquid Nutrition Inc. v. liquidnutrition.com/ Vertical Axis Inc.,supra.

In light of the foregoing, this Panel concludes that the complainant in fact knew or clearly should have
known at the time that it filed the complaint that it could not prove one of the essential elements required by
the UDRP bad faith in registration and use. WIPO Overview 2.0, paragraph 4.17. Accordingly the Panel
finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

7. Decision
For the foregoing reasons, the Complaint is denied.

Ian Lowe
Presiding Panelist

Jon Lang
Panelist

Richard G. Lyon
Panelist
Date: April 26, 2016