Domain Name Disputes - Rooney scores home and away in complaint over domain names
The footballer Wayne Rooney brought successful complaints against the registrant of waynerooney.com and waynerooney.co.uk and was granted the transfer of those domain names. The decisions are interesting because they show the differences in the rules of the different domain name registries and the limits to which the interpretation of those rules can be stretched to obtain a transfer of a domain name. Although in both cases the facts were the same and the same decision was reached, there were distinct differences in the approach taken in reaching each decision.
Domain Name Dispute Resolution
Disputes over the ownership of domain names may be resolved through the dispute resolution schemes established by the registry where the domain name is registered. Nominet is the registry for domain names ending in .uk. It operates a dispute resolution service (DRS Policy) under which a panel of experts provides contractually binding decisions on whether a domain name registration should be transferred, cancelled or suspended.
ICANN, the registry for .com, .org and .net domain names, has a Uniform Dispute Resolution Policy (UDRP) under which disputes are referred to a number of bodies including the Arbitration and Mediation Centre of the World Intellectual Property Organisation (WIPO).
Nominet's DRS Policy
To succeed in a complaint about a .uk domain name under the DRS Policy, the complainant must prove that, on the balance of probabilities:
1. the complainant has rights in respect of a name or mark which is identical or similar to the domain name in dispute; and
2. the domain name in dispute, in the hands of the respondent, is an "abusive registration".
Under the DRS Policy "rights" include, but are not being limited to, "rights enforceable under English law".
The DRS Policy includes a non-exhaustive list of factors which may be used as evidence that a domain name is an abusive registration. This list includes circumstances that indicate that the respondent has registered or otherwise acquired the domain name primarily as a blocking registration against a name or mark in which the complainant has rights.
The DRS Policy also sets out how the respondent may demonstrate that its registration is not abusive. These include showing that, before being aware of the complainant's cause for complaint, the respondent has made legitimate, non-commercial or fair use of the domain name, and that includes operating a site solely in tribute to, or in criticism of, a person or business.
Under the UDRP a complainant must prove three things to obtain an order that a domain name should be cancelled or transferred:
1. he has rights in a trade mark which is identical or confusingly similar to the domain name;
2. the respondent has no rights or legitimate interest in the domain name; and
3. the domain name has been registered, and is being used, in bad faith.
The UDRP lists various circumstances which constitute evidence of registration and use of a domain name in bad faith, including using a domain name to attract users to the respondent's website for commercial gain by creating a likelihood of confusion with the complainant's trade mark.
Background to the Complaint
The respondent, Huw Marshall, had registered waynerooney.com and waynerooney.co.uk after watching Wayne Rooney play in an Everton youth team match in April 2002. He claimed that he planned to operate a non-commercial fan site (even though by 2006 he had not yet begun to do so). At the time of the registration of the domain names Wayne Rooney did not have any trade marks registered covering use of his name and he was unknown outside
Rights in a mark identical or similar to the Domain Name
The expert hearing the complaint under Nominet's DRS Policy disagreed with Mr Marshall's contention that Wayne Rooney did not have any rights in the name Wayne Rooney in 2002. His view was that under paragraph 1 of the DRS the reference to "rights being those that include but are not limited to rights enforceable under English law" meant that Wayne Rooney did not have to demonstrate a right to bring a claim in passing off under English law or the existence of any registered trade marks. The expert concluded that the requirement to establish rights did not have a very high threshold and a person had sufficient rights in their own name to satisfy the requirements of the DRS Policy.
The decision of the panel under the ICANN UDRP came to a different conclusion on the existence of rights in 2002. They decided that an English court in 2002 would have held that Wayne Rooney was well enough known in the
Abusive Registration and Bad Faith
The Nominet expert found that the registration of waynerooney.co.uk was an abusive registration as it was intended as, and acted as, a blocking registration. He relied on the fact that the reason Mr Marshall bought the domain names was a belief that Wayne Rooney would be a very successful footballer and that Mr Marshall had never developed a fan site as he claimed was his intention. The UDRP panel decided that waynerooney.com had been registered in bad faith as it was registered knowing of Wayne Rooney and in contemplation of his future reputation. The fact that Mr Marshall never got around to using the domain name did not prevent it from amounting to "being used in bad faith" as required under the UDRP.
There are differences between what needs to be shown under the ICANN UDRP and Nominet's DRS and it is interesting to see how the same set of facts are dealt with under the different rules when reaching the same decision. Experts deciding complaints under the UDRP and Nominet's DRS are not bound to follow earlier decisions made by other experts or on appeal as a judge would be in the English courts. Consequently, it isn't possible to say that a future complaint with similar facts will always result in the same decision. The WIPO Overview of WIPO Decisions is useful in showing how different questions under the UDRP have been resolved and the panel in the waynerooney.com decision showed that the Overview can be taken into account by a panel in reaching its decision.
If you would like further advice about any of the issues considered above please contact Paul Northwood on 01869 331753 or email him at email@example.com
This article is not intended to be, and should not be taken as being, legal advice. The law often changes and it varies from jurisdiction to jurisdiction; the information in this article is generic in nature and specific legal advice should be taken before acting on any of it.