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WIPO Domain Name Decision: D2000-1673
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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Serena Williams and Venus Williams v. Eileen White Byrne and Allgolfconsultancy
Case No. D 2000-1673
1. The Parties
The Complainants are Serena Williams and Venus Williams, Individuals residing at, 313 rand Key TerracePalm Beach Gardens, Florida 33418, USA.
The Respondent is Eileen White Byrne and Allgolfconsultancy, Foxrock, Dublin, Ireland DU 18.
2. The Domain Names and Registrar
The Domain Names are <venusandserenawilliams.com>, <venusandserenawilliams.net> and <venusandserenawilliams.org>.
The Registrar is Register.com.
3. Procedural History
The Complaint was received by WIPO by email on November 30, 2000 and in hardcopy form on December 4, 2000 and a further four hardcopies on December 7, 2000. On December 12, 2000 WIPO issued a Complaint Deficiency Notification. The Amended Complaint was received on December 12, 2000 by email and in hardcopy form on December 14, 2000. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
The Complaint was properly notified in accordance with the Rules, paragraph 2(a). The Registrar has confirmed that <venusandserenawilliams.com>, <venusandserenawilliams.net> and <venusandserenawilliams.org> ("the Domain Names") were registered through Register.com and that Eileen White Byrne is the current registrant. The Registrar has further confirmed that the Policy is applicable to the Domain Names.
On December 15, 2000 WIPO notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending her Response to the Complainants and to WIPO was January 3, 2001. The Respondent sought an extension of time for submitting the Response and was granted an extension until January 8, 2001. The Response was received by email on January 3, 2001 and in hardcopy form on January 4, 2001.
The Panel was properly constituted. The undersigned Panellist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions were received by WIPO or the Panel, as a consequence of which the date scheduled for the issuance of the Panel’s Decision is February 5, 2001.
4. Factual Background
The Complainants are international tennis stars, both individually and as a doubles team. They use their names in the performance of their profession, competing in tennis tournaments and playing exhibition matches, and by way of ancillary trade including the endorsement of the goods and services of others. Venus Williams made her professional debut in 1993 and her sister, Serena, made hers in 1995.
In January and August 2000 the Complainants each filed applications for federal trade mark registrations of their names with the US Patent and Trademark Office claiming first use for goods/services variously from 1995 (Venus Williams) to 1998 (Serena Williams). The specifications cover "promoting the goods and services of others through the issuance of product endorsements" and "entertainment services in the nature of participating in professional tennis tournaments and exhibitions".
On July 9, 2000 the Respondent registered the domain name <venusandserenawilliams.com>.
On September 29, 2000 the Respondent registered the domain names <venusandserenawilliams.net> and <venusandserenawilliams.org>.
The domain name <venusandserenawilliams.com> is (or was on November 28, 2000) connected to a website making specific reference to the Complainants and their tennis world rankings and making references to the site/domain name being "under construction or may go to auction" and "open to offers over $1 million dollars". The other two domain names are not connected to active sites.
On November 17, 2000 the Respondent sent an email to those representing the Complainants telling them that she had registered the Domain Names, that she had been inundated with enquiries about the Complainants and that she was in the process of concluding a deal for the sale of the site. She says that she would prefer to give the Complainants "the option of buying the site first".
On November 19, 2000 those representing the Complainants sent an email to the Respondent indicating that they were interested in the Respondent’s proposal.
On November 20, 2000 the Respondent replied stating that she was on the point of concluding a deal on the ‘.com’ site for substantially more than the original asking price of $1 million and on the ‘.org’ and ‘.net’ sites at a reduced rate. She said that she would be happy to sell to the Complainants "for the current price which I have agreed".
On November 30, 2000 the Complaint was launched.
5. Parties’ Contentions
The Complainants point to their fame and to the importance to them professionally of their names. It is important to them to be able to craft their images by carefully selecting the companies with which they associate and whose products/services they endorse, the publications to which they grant interviews, the television shows on which they appear and the tennis events in which they participate.
They assert that professional athletes use their own names as domain names for such things as internet fan club sites, where they generate income from membership and product sales and advertising. They indicate other ways in which professional athletes derive income from domain names.
They contend that the Respondent was aware of them when she registered the Domain Names and that she should be regarded as having no rights or legitimate interests in respect of the Domain Names.
They contend that the Respondent manifestly only registered the Domain Names with a view to selling them to the Complainants at a profit. In support they refer to the ‘.com’ website and to the exchange of emails in November 2000.
The Complaint then goes on to set out the legal grounds for the Complaint reciting their trade mark applications, their common law rights and various US federal and Florida state common law and statutory provisions which they say have been infringed. The Panel notes that in her Response the Respondent claims ignorance of those federal and state rights/legal provisions. The Panel is in the same position and does not propose to decide this dispute by reference to US law.
The Complainants seek transfer of the Domain Names.
The Respondent admits that she was aware of the Complainants when she registered the Domain Names. She points out that she could not have been aware at that time of some of the information about the Complainants set out in the Complaint (eg their world rankings in November 2000) because that information post-dated the dates of registration of the Domain Names.
She states that the Complaint should fail at the first hurdle because the Complainants have no registered trade mark rights in their names whether individually or together. It is her understanding that for the Complainants to be able to launch a Complaint their rights have to be registered rights.
She asserts that as registrant of the Domain Names she has a right and legitimate interest in respect of the Domain Names. Accordingly, she says that the Complaint should fail for that reason too.
She says that the bad faith allegations are misconceived. She says that she has at all times acted in good faith, believing that she was entitled to register the Domain Names. She says that she registered the Domain Names because it was her intention to establish a General Sports Consultancy Website and some specific Sports Consultancy Websites in the future. She says that she has other websites covering sports such as golf and rugby. She goes on:-
"My intention is to have a Sport Consultancy Website with links to some other websites of my own, for specific information and consultations to Internet users. This would involve Sports Professionals and friends of mine who could contribute to these sites for a fee. That is why the words "UNDER CONSTRUCTION OR MAY GO FOR SALE FOR OFFERS OVER $1 MILLION" was placed on the .com site."
She goes on to say that she has not broken any law by registering the names of the Complainants jointly, she points out that they already have their own individual sites and she reiterates that they have no registered trade mark protection for their names.
She says that she is not a cybersquatter because she "never had the sites hosted with the intention of using or abusing the names of Venus and Serena Williams. Nor did I place the sites on any of the Domain Names for sale sections of the Internet, which I could have done if I had seriously made up my mind to sell on the sites FOR FINANCIAL GAIN ONLY." [sic].
The Respondent points out that the .net and .org Domain Names are not currently in use.
In response to the allegation that she had deliberately registered the Domain Names with a view to selling them to their rightful owners she responds:-
"I had never intended to sell these sites to the Williams Sisters at any time as stated by the Complainants whom are not at this time as stated in their Complaint the rightful owners of the site(s)."
In response to the allegation that the Respondent offered to sell the Complainant the Domain Names for $1 million the Respondent states:-
"Yes I had the .com site only – under construction or for sale for in excess of $1 million. This was my entitlement and to mention on the website what might appear to the Complainant as outrageous sums of money. As the current and rightful owner of the website, I feel entitled to use the site as I so wish."
In response to the allegation that "none of the Domain Names contain any bona fide offering of goods or services and that the only commercial purpose evident is to wrongfully sell the Domain Names at a huge commercial gain" the Respondent states:-
"Yes I was seeking a gain for the site – that is the .com site only.
In business people do try and buy goods or services for any financial gain. Such practice is around as long as people breathe air. It is not new and any newspaper or commercial magazine will show on a daily basis how people carry out commercial transactions for gain. That is business. I will not apologise to anyone for using my initiative or common-sense or any other qualifications I have for the purpose of commercial or financial gain."
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) The Domain Name is identical or confusingly similar to a trade mark 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.
Identical or confusing similarity
The Respondent is mistaken. For the purposes of paragraph 4(a)(i) of the Policy the relevant trade mark rights of the Complainant do not have to be registered rights. Common law rights will suffice.
The Complainants have satisfied the Panel that over the last five years and more the Complainants both individually and together have established a significant reputation and goodwill in their names for the purposes of trade.
The Domain Names comprise the names of the Complainants and the generic suffixes .com, .net and .org. When selecting the Domain Names the Respondent had the Complainants in mind and, so she claims, with a view to using the Domain Names in a sporting context.
The Panel finds that the Domain Names are identical or confusingly similar to trade marks in which the Complainants have rights.
Rights or legitimate interest of the Respondent
For this purpose the Respondent relies exclusively upon such rights as she might have acquired by registering the Domain Names. If that were the basis for deciding these disputes no domain name registration would be open to attack, for on that basis every registrant would have a right or legitimate interest in respect of the domain name in question.
The Respondent does not claim to be known by the Domain Names or any names corresponding to the Domain Names, the Respondent does not claim to have been granted any licence by the Complainants to use their names and the Respondent has not produced any evidence to show that she was proposing to use the Domain Names in a bona fide manner. In relation to this last, all that is before the Panel is a bare assertion on the part of the Respondent that she is proposing to use the Domain Names for a commercial purpose relating to sport.
Self-evidently, the Domain names comprise the names of the Complainants and not the Respondent. There is no evidence before the Panel to demonstrate that the Respondent has any right or legitimate interest in respect of the Domain Names and the Panel finds that the Respondent has no such right or legitimate interest.
Paragraph 4(b) of the Policy sets out various circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The first of these reads as follows:-
"Circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name".
The Respondent’s assertion of good faith is based almost entirely on her misconceived belief that she was entitled to register the Domain Names, because there were no registered trade marks protecting the Domain Names. On the basis that ignorance of the law is no excuse, she cannot rely on her ignorance of the Policy in defence of the bad faith allegation.
Her denial that she had ever "intended to sell these sites to the Williams Sisters at any time as stated by the Complainants whom are not at this time as stated in their Complaint the rightful owners of the site(s)" has puzzled the Panel, since it appears to be in direct conflict with what is stated in her emails to the Complainants’ representatives. The Panel is not sure what it means, unless it is a semantic argument based on her view that the Complainants are not the rightful owners of the Domain Names. At all events, if it is intended to be a denial that the Respondent never intended to sell the Domain Names to the Complainants, the Panel rejects it.
In relation to the .com Domain Name it is plain from the content of the website and from the Respondent’s emails to the Complainants’ representatives that the Respondent’s intentions were to alarm the Complainants at the enquiries concerning them, which were being directed to the Respondent and thereby to encourage the Complainants to part with extortionate sums of money for that Domain Name before she disposed of it to alleged competing bidders.
Had the Respondent had any bona fide intentions in relation to the Domain Names, she would have produced some supporting evidence as exhibits to her Response. She did not do so and the Panel concludes that no such evidence exists. The Panel finds that the Respondent registered the .com Domain Name in the erroneous belief that she was entitled to, but with the clear and unashamed intention of extracting large sums of money from the Complainants.
While the Respondent seeks to distinguish the .com Domain from the other two, observing as she does that the allegations made in respect of the .com Domain Name do not apply to the other two, they not being in use, the Panel sees no reason to draw any distinction between them. It is to be observed that in the emails the Respondent is proposing to deal with all three Domain Names as a package, the .net and .org Domain Names being offered "at a reduced rate".
The Panel finds that the Domain Names were registered in bad faith and are being used in bad faith.
In the result, the Panel having found that the Domain Names are confusingly similar to a trade mark in which the Complainants have rights and that the Respondent has no rights or legitimate interests in respect of the Domain Names and that the Domain Names have been registered in bad faith and are being used in bad faith, the Complaint succeeds.
The Panel directs that the Domain Names, <venusandserenawilliams.com>, <venusandserenawilliams.net> and <venusandserenawilliams.org>, be transferred to the Complainants.
Dated: January 30, 2001