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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Stoneygate 48 Limited and Wayne Mark Rooney v. Huw Marshall

Case No. D2006-0916

 

1. The Parties

The Complainants are Stoneygate 48 Limited (“the First Complainant”) and Wayne Mark Rooney (“the Second Complainant”) both c/o Grant Thornton, Heron House, Albert Square, Manchester M60 8QT, United Kingdom of Great Britain and Northern Ireland, represented by Kilburn & Strode, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Huw Marshall, of Wrexham, United Kingdom of Great Britain and Northern Ireland (“the Respondent”), represented by Trowers & Hamlins, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Name and Registrar

The disputed domain name <waynerooney.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 July 19, 2006. On July 20, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 25, 2006, 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 for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the 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”).

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 July 26, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was August 15, 2006. The Response was filed with the Center on August 15, 2006.

The Center appointed Mr. Tony Willoughby as the sole panelist in this matter on August 30, 2006. 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.

On September 18, 2006, the Panel sought a further submission from the Complainants in respect of two matters raised in the Response. The Complainants responded on September 25, 2006, and the Respondent responded by way of a further filing on October 2, 2006.

On October 4, 2006, the Center forwarded to the Panel an email from the Registrar asking the Center whether the Registrar was compelled to answer some questions put to it by the Respondent. The Panel’s reply, forwarded to the Registrar by the Center, was to the effect that it was a matter for the Registrar whether or not it responded to the Respondent’s questions.

The issue is academic in that for the purposes of this decision the Panel will assume that the Registrar, if it were to reply, would provide answers consistent with the Respondent’s contentions.

 

4. Factual Background

The First Complainant, a company incorporated in England on February 22, 2002, is the registered proprietor of CTM number 00298905 dated December 23, 2002, WAYNE ROONEY (words) covering a variety of goods and services.

The Second Complainant assigned to the First Complainant his trademark rights along with certain other image/merchandising rights in January 2003.

The Second Complainant is a very well-known professional footballer who was born in Liverpool in 1985. He made his name with Everton for whom he first started playing (in their youth team) as a 15 year old in 2000. He played his first game in the Premiership in August 2002, but by then he was well-known in footballing circles and particularly in the Liverpool area. The Liverpool Echo in the early months of 2002 featured several reports of Everton’s youth team’s matches in which the Second Complainant merited a headline.

One example from the February 7, 2002 issue read: “WAYNE STARS IN SHOW OF MAGIC”. Others from around the same time read: “No rest for Blues hotshot, Rooney” and “Rooney to lead Blues Youth Cup charge”. At the time the Second Complainant was earning about Ј100 per week.

The Second Complainant turned professional with Everton in January 2003. He moved to Manchester United in August 2004 and rapidly achieved international status.

The Respondent is an actor. He is an ardent Everton fan and recognised the Second Complainant’s star properties at an early stage. He registered the Domain Name on April 16, 2002. On the same day he registered the domain name <waynerooney.co.uk>.

On May 20, 2003, a sports management agency representing the Second Complainant wrote to the Respondent noting that the Respondent had registered the Domain Name and <waynerooney.co.uk> and asking the Respondent what plans he had for those domain names. There is a dispute as to what did or did not ensue following that letter.

As at the date of the Complaint, the Domain Name was connected to a directory site operated by the Registrar which feature links to a variety of other sites ranging from football related sites to on-line dating sites.

Following receipt of the Complaint the Respondent instructed the Registrar to remove the link to the directory site and the link was duly removed.

 

5. Parties’ Contentions

A. Complainants

The Complainants contend that the Domain Name is identical to a trademark in which the Complainants have rights. The Complainants claim unregistered rights in addition to the trademark registration referred to above.

The Complainants contend that the Respondent has no rights or legitimate interests in respect of the Domain Name, pointing out that it is not the Respondent’s name and that the Complainants have granted the Respondent no licence to use the Second Complainant’s name in any shape or form.

The Complainants contend that the Domain Name was registered and is being used in bad faith. The Complainants point to the Respondent’s lack of any rights in respect of the Domain Name and the use of it to connect to the Registrar’s directory site which, while it contains references to the Second Complainant, is also linked to sites in respect of which the Complainants have no interest of any kind. The Complainants contend that the Respondent is deriving income from the directory site.

The Complainants allege that they have approached the Respondent with a view to acquiring the Domain Name, but the Respondent has never replied.

The Complainants’ primary contention under the heading of “bad faith”, which effectively wraps up within it the subsidiary contentions, is that the Respondent registered the Domain Name with a view to exploiting the Second Complainant’s name, thereby causing damage to the Complainants in the form of loss of business opportunity and dilution and/or tarnishment of the WAYNE ROONEY trademark.

The Complaint concludes as follows:

“The [Domain Name] is an obvious Internet address for consumers to use when looking for the Complainants’ website. Instead of locating the Complainants’ website when waynerooney.com (sic) is entered in the Internet browser, consumers are directed to a directory of Internet websites which have no connection whatsoever with the Complainants.

It is evident that [the Respondent] is through the use of the website at “www.waynerooney.com” attempting directly to target and attract consumers in the UK, where the bulk of the Complainants’ fans (and potential customers) are based. The fact that the registrant’s website contains “sponsored`’ Internet links indicates that [the Respondent] has obtained payment for displaying these Internet links or obtains revenue through a click/pay arrangement. [The Respondent] has therefore used the [Domain Name] for the purpose of attracting Internet users for commercial gain. This has resulted in a potential loss of opportunity for the Complainants to exploit the WAYNE ROONEY name.”

B. Respondent

The Respondent denies the Complainants’ allegations.

While he accepts that the Complainants have trademark rights, he says that they should be ignored. He points out that the CTM which dates back to the application date in December 2002 (a) post-dated the registration of the Domain name and (b) in any event did not in fact mature into a registration until 2004, long after the Domain Name was registered. Publication of the registration did not occur until August 2004.

The Respondent denies that the unregistered rights existed at the time he registered the Domain Name. At that time the Second Complainant was a 16 year-old boy whose reputation and goodwill (such as it was) was very local. He had not at that stage turned professional. The Respondent observes that the Second Complainant was a junior employee of Everton and that not all employees attract reputation and goodwill sufficient to acquire common law rights in passing off.

Additionally, the Respondent argues that trademark rights (registered and unregistered) are not so broad that they cover all uses of the mark in question. In particular, they do not cover uses other than in the course of trade.

The Respondent, an ardent Everton fan, claims that he registered the Domain Name in good faith having watched the Second Complainant play in a youth team football match in early 2002. He says that he immediately recognised the boy’s potential and planned to set up a non-commercial fan site.

However, not then having the know-how necessary to set-up a website and being too busy as an actor to devote time to the matter, he did not immediately get around to doing anything about it. The Second Complainant then “betrayed” Everton by moving to Manchester United in August 2004, and the Respondent lost all interest in him. Certainly, there was now no question of the Respondent using the Domain Name for a fan site. Accordingly, he did nothing with the Domain Name.

Following receipt of the Complaint he learnt that the Registrar was using the Domain Name to connect to its directory site featuring sponsored links to other sites. He immediately contacted the Registrar and instructed the Registrar to remove the link to its directory site and this was done.

The Respondent denies all responsibility for any commercial use made of the Domain Name and denies too that he derived any commercial benefit.

The Respondent denies that at the relevant time he had no rights or legitimate interests in respect of the Domain Name. He claims that his intended use of the Domain Name for a non-commercial fan site gives rise to a legitimate interest. He claims that for such a site it is legitimate to use the name of the subject of the site. By way of illustration he points to two such sites, namely “www.waynerooneyonline.com” and “www.davidbeckham.ws”.

The Respondent denies that the Domain Name was registered and is being used in bad faith. He reiterates that he had a legitimate interest in registering the Domain Name. He denies that he has blocked the Complainants from registering an appropriate domain name. He observes that there are several available including <wayne-rooney.com>. Insofar as the bad faith allegations concern the content of the website connected to the Domain Name, that is historical and in any event it had nothing to do with him, everything to do with the Registrar and he derived no commercial benefit of any kind. He knew nothing of it until the Complaint arrived.

Finally, the Respondent denies that he ever failed to respond to the Complainants when they approached him. He received a letter, which was followed by a telephone call. He says that he told them that he had never thought of selling the Domain Name and the call ended on that note. There were then a couple of follow-up calls from the agency, but the people to whom he spoke appeared to be unaware of the original call. The conversations led nowhere.

C. The Responses to the Procedural Order

The Procedural Order, directed to the Complainants, gave the Complainants an opportunity to respond to two matters raised in the Response, namely the Respondent’s denials that he (a) failed to respond, as alleged by the Complainants, to an approach made by the Complainants to acquire the Domain Name and (b) derived any income from the content of the website connected to the Domain Name.

The Complainants dealt with the first of those matters by saying that they could not verify the position because of changes to the personnel at the Second Complainant’s sports management agency. They went on to say that because the Respondent had produced nothing to verify his story they declined to accept it.

As to the second matter they produced a substantial argument in support of the proposition that even if the Respondent did not benefit from the content of the website and was not responsible for selecting the content, he should nonetheless bear the responsibility for the result – he had demonstrated by getting the content removed that he could control the Registrar and when he registered the Domain Name the agreement he signed made it clear that unless he rejected the option the Domain Name would connect to a site featuring content selected by the Registrar including advertisements. He elected not to reject the option. While it may be the case that he did not derive any commercial benefit from the advertising links, the Registrar certainly did so and paragraph 4(b)(iv) of the Policy still applied.

The Complainants also disclosed that the Respondent had registered the domain name, <waynerooney.co.uk> on the same day that he registered the Domain Name. They contend that this is inconsistent with the Respondent’s stated intention of creating a non-commercial fan site.

In relation to the first matter the Respondent produces a letter from the Second Complainant’s sports management agency dated May 23, 2003, asking the Respondent what his plans were for the Domain Name and the domain name, <waynerooney.co.uk>. He has not retained notes of his telephone conversations. He stands by his story and contends that if the Complainants expect any weight to be given to their allegation, they should support it with evidence.

As to the second matter, the Respondent argues strongly that for a bad faith allegation under the Policy to succeed there has to be a bad faith intention on the part of the Respondent. The Respondent was completely unaware of what the Registrar was doing with the Domain Name until the content of the site was drawn to his attention in the Complaint.

Since the Panel does not intend to decide this case on the basis of the use made by it by the Registrar, it is unnecessary for the Panel to set out in full the weighty arguments advanced on the issue.

 

6. Discussion and Findings

General

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

(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have 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 in bad faith and is being used in bad faith.

A. Identical or Confusingly Similar

There is no dispute that the Complainants have trademark rights in the name WAYNE ROONEY, nor is there any dispute that the Domain Name is identical to that trademark if one discounts the generic domain suffix.

That being so, the Panel finds that the Domain Name is identical to a trademark in which the Complainants have rights.

As will be noted from section 5B above, the Respondent argues that the Complainants’ rights should be ignored because they did not exist at the date of registration of the Domain Name.

The Panel refers to the passage in paragraph 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (accessible on the WIPO website), which reads:

“1.4 Does the complainant have UDRP-relevant trademark rights in a mark that was registered, or in which the complainant acquired unregistered rights, after the disputed domain name was registered?

Consensus view: Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity. The UDRP makes no specific reference to the date of which the owner of the trade or service mark acquired rights. However it can be difficult to prove that the domain name was registered in bad faith as it is difficult to show that the domain name was registered with a future trademark in mind.”

The Panel adopts the consensus view and stands by his finding above that the Domain Name is identical to a trademark in respect of which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent claims that as an ardent Everton fan, having watched the Second Complainant play in a youth team match for Everton in early 2002 and recognizing the latter’s potential, he resolved to set up a non-commercial fan site devoted to the Second Complainant. He says that this gives him a legitimate interest in respect of the Domain Name. He says that it makes eminent sense for him to select a domain name for the website which features the name of the subject of the site. In support he draws the Panel’s attention to two other such sites, namely “www.waynerooneyonline.com” and “www.davidbeckham.ws”.

The Panel confesses to finding this a difficult story to swallow.

The Respondent admits that he has no knowledge or experience of web design, yet following a football match he develops an urge to register not one domain name, but two domain names, the Domain Name and the ‘.co.uk’ equivalent, featuring the name of a 16 year old footballer whose reputation and goodwill barely exists (see the Respondent’s submission in relation to common law rights), but in whom he sees the potential for a fan site.

Thus far, while the story is unusual, it could be made good if this ardent fan, so motivated to do something wholly outside his knowledge and experience, actually took some steps to realize his ambition. But he did nothing. He registered the Domain Name in April 2002, but did absolutely nothing until the event occurred in August 2004, some two and a quarter years later, which is said to have dashed his dreams. The Second Complainant moved from Everton to Manchester United.

What might he have been expected to have done? He could have produced some plans for the fan site. He could have entered into talks with someone with the relevant expertise. He could even have booked himself on a course to acquire the relevant expertise. But he did nothing. His reason is that at that time his acting career precluded him from devoting the time to it.

Paragraph 4(c) of the Policy, which is addressed to respondents, includes a non-exhaustive list of what a respondent can produce to the Panel to demonstrate rights or legitimate interests for the purpose of paragraph 4(a)(iii) of the Policy. The only sub-paragraph relevant here is sub-paragraph (i) which reads:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;”

As indicated, the Panel has nothing before him, other than the Respondent’s assertion, to demonstrate his intention. Whether his stated intention would have been enough for this purpose is an open question. What is unquestionable is that without any supporting evidence the Panel has no alternative but to find that the Respondent has no rights or legitimate interests in respect of the Domain Name.

Before departing this section of the decision it should be explained that while it is for the Complainants to prove all three elements of paragraph 4(a) of the Policy, proving that the Respondent has no rights or legitimate interests is often impossible for a complainant to prove and particularly where, as here, the stated justification for registering the Domain Name is entirely in the hands of the Respondent. In these circumstances it is for the Complainants to make out a prima facie case and for the Respondent to answer that case. Here there is no question but that the Respondent deliberately adopted the Second Complainant’s name, the only issue is as to the reason, hence the need for some demonstrable support as referred to in paragraph 4(c)(i) of the Policy.

C. Registered and Used in Bad Faith

Under this head it is necessary to re-visit the issue as to the date on which the Complainants acquired trademark rights in the WAYNE ROONEY mark. The Panel refers again to the WIPO Overview of WIPO Panel Views on Selected Questions. Paragraph 3.1 states:

“3.1 Can bad faith be found if the disputed domain name was registered before the trademark was registered/common law trademark rights were acquired?

Consensus view: Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right. However: In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This often occurs after a merger between two companies, before the new trademark rights can arise, or when the respondent is aware of the complainant’s potential rights, and registers the domain name to take advantage of any rights that may arise from the complainant’s enterprises.”

Clearly, on that basis, it is open to the Panel to find bad faith under the Policy even if the Complainants’ rights post-dated the Domain Name registration. There can be no doubt that the Respondent registered the Domain Name with full knowledge of the existence of the Second Complainant and in contemplation of the reputation and goodwill that he knew the Second Respondent would develop.

However, the Panel is satisfied on the balance of probabilities that as at April 2002, an English court would have entertained a passing off action at the suit of the Second Complainant based upon the Second Complainant’s reputation and goodwill in existence at that date. Goodwill for this purpose need not be national. All the evidence points to the Second Complainant being very well-known in the Liverpool area at that time. Certainly, readers of the Liverpool Echo with an interest in football cannot have missed the headlines in which he featured.

The specific allegation of bad faith levelled at the Respondent is that he registered the Domain Name, knowing it to be the name of the Second Complainant, the name under which the Second Complainant carried on his profession, and intending to use it to connect to a commercial website. Thus, Internet users would be encouraged to visit the Respondent’s website erroneously believing it to be the official website of the Complainants. The cause of the confusion is the web address, the principal element of which is the Domain Name. On the back of that so-called “confusion” visitors to the site would be faced with various commercial links and advertisements. Whether or not those visitors to the site then appreciated that it was not an official site, nonetheless they might be tempted to click on the links and make purchases. At any rate, that (according to the Complainants) would be the Respondent’s hope and expectation.

If this can be proved, the Complaint succeeds under paragraph 4(b)(iv) of the Policy which reads:

“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website . . ., by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website . . .or of a product or service on your website . . .”

The Complainants thought when they lodged the Complaint that they had clear evidence to support the claim. The Domain Name was connected to a directory page of the Registrar and featured sponsored advertisements.

However, it now turns out that the website in question was a creation of the Registrar, not the Respondent and the Respondent knew nothing about it. As soon as he read the Complaint and learnt of the website, he contacted the Registrar and the link to the offending site was removed. That is the evidence of the Respondent and the Panel accepts it.

The Complainants say that that is not the end of the matter because even if all that is true, the Respondent signed up to the Registrar’s terms and could have rejected that option. In not having rejected it, the Respondent, while not actually operating the site or responsible for the selection of the advertisements on the site, should nonetheless bear the overall responsibility for it. The Complainants produce a WIPO UDRP decision in support of that argument, but the Panel would prefer to deal with the matter on another basis.

As indicated under the previous head, the Panel has serious doubts as to the truth of the Respondent’s story. It is an extraordinary story. It asks the Panel to assume that out of ardent fervour the Respondent behaved totally out of character registering a domain name for the first time and with a view to setting up a website devoted to the Second Complainant at a time when he (the Respondent) had no relevant knowledge or expertise and apparently without access to anyone having that knowledge or expertise. The Panel is then asked to believe that that ardent fervour died a death for over 2 years as the second Complainant’s career was going from strength to strength until his move to Manchester United.

If the Respondent’s story is a complete fabrication, then it is but a short step to conclude that the Respondent’s purpose all along was abusive.

Nonetheless, truth can sometimes be stranger than fiction so the Panel explores the Respondent’s story further. The Respondent says that he was going to set up a fan site and he points to two fan sites of the kind in question, “www.waynerooneyonline.com” and “www.davidbeckham.ws”. The Panel has visited those websites and they are commercial sites. The links connect to sites many of which have no connection with Wayne Rooney and David Beckham. They both offer merchandise (directly or indirectly) and feature sponsored links. It is inconceivable to the Panel that the operators of those sites do not derive any commercial benefit.

The Panel has no idea what the Respondent means by a non-commercial fan site if, as appears to be the case, those two fan sites, which he identifies, are typical of what he had in mind. The existence of the potential commercial benefit renders his story credible. In any event the Panel is unable to accept that the Respondent had no eye to the potential commercial benefit. The Panel does however accept that the idea was dependent upon the Respondent’s support for the Second Complainant and the latter’s move to Manchester United would have killed the idea off, if it was not already dead by then.

The Panel finds that when the Respondent registered the Domain Name he knew that the Second Complainant was likely to become a very hot property indeed and saw a benefit in registering the Domain Name with a view to creating a site and deriving a commercial benefit via that site. A high proportion of visitors to a site with the URL “www.waynerooney.com” would believe it to be the official website of the Complainants (in precisely the same way that people would expect “www.evertonfc.com” to be the official website of Everton Football Club) and would be visiting it for that reason. On reaching the site they might or might not appreciate that it is not an official site, but by then the deception will have occurred. If as is likely the site is offering (directly or indirectly) Wayne Rooney merchandise, there is a high chance that visitors will consider purchasing it. If they see other links that interest them, they will click on those links and thereby generate click revenue for the Respondent, the operator of the site.

The Panel finds that registration of the Domain Name with that intent in the circumstances of this case constitutes bad faith registration and use. The fact that, as things have turned out, the Respondent has never actually got around to using the Domain Name is neither here nor there.

This finding stems in part from the Panel’s inability to accept as plausible the Respondent’s claim that his fan site would be non-commercial and because the fan sites which the Respondent himself has cited as examples (“www.waynerooneyonline.com” and “www.davidbeckham.ws”) are indeed commercial fan sites.

Accordingly, the Panel finds for the Complainant under the third element of the Policy.

 

7. Addendum

In the Complaint the Complainants asserted that they had attempted to contact the Respondent regarding ownership of the Domain Name, but that no response had ever been received. Clearly they regarded this failure on the part of the Respondent to be reprehensible.

The Respondent’s response to that allegation was that he had been approached by a sports management agency and had responded to the effect that he had never thought of selling the Domain Name. There were then a couple of further telephone calls from the agency but to no purpose or effect.

In the face of that story one might have expected the Complainants either to come out with evidence to disprove the Respondent’s response or to withdraw the allegation. They have done neither. They maintain the allegation, but say that they cannot verify it due to personnel changes at the agency. Effectively, they say that it is for the Respondent to disprove it.

In the view of the Panel that approach is, to say the least, most unfortunate. If factual allegations of that kind, the details of which ought to be in the possession of the party making the allegation, are made, they should be properly particularised. If they cannot be particularised because there is nobody around to verify them, the allegation should be suitably qualified to indicate to the Panel the limitations to be placed on it. This is particularly important in a procedure such as this where for any number of reasons a response to the complaint may not be forthcoming.

 

8. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <waynerooney.com>, be transferred to the Complainants.

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Tony Willoughby
Sole Panelist

Dated: October 6, 2006