WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Michael James Owen v. MSM Commercial Services

Case No. D2006-0155

1. The Parties

The Complainants are Michael James Owen and Owen Promotions Limited, Horsforth, Leeds, United Kingdom of Great Britain and Northern Ireland, represented by Gordons Solicitors, United Kingdom of Great Britain and Northern Ireland.

The Respondent is MSM Commercial Services, Aude, France.

2. The Domain Names and Registrar

The disputed domain names and are registered with Intercosmos Media Group d/b/a directNIC.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February�3,�2006. On February�6,�2006, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain names at issue. On February�6,�2006, Intercosmos Media Group d/b/a directNIC.com 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 February�13,�2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March�6,�2006. The Response was filed with the Center on February�27,�2006.

The Center appointed Peter G. Nitter as the sole panelist in this matter on March�13,�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 March 16, 2006, the Center received a 58 page supplemental filing from the Complainant. Based on its discretion pursuant to paragraph 12 of the Rules, the Panel has decided to reject the supplemental filing.

4. Factual Background

Michael Owen is a world-known footballer and the proprietor of the UK trade mark No. 0916182528 - MICHAEL OWEN - registered as of August�22,�2001. The application for the Mark was prepared and filed with the British Patent Office on August�20,�1998.

Owen Promotions are responsible for the administration of Michael Owen’s affairs. Michael Owen has assigned his rights to exploit his image, name, likeness and appearance to Owen Promotions.

The Respondent registered the disputed domain name on August�7,�1998 and on August�16,�1998.

5. Parties’ Contentions

A. Complainant

The disputed domain names are identical to the trade mark in which the Complainants have established both registered and unregistered rights.

The Complainants submit that the registration of the trade mark MICHAEL OWEN is not strictly necessary. According to the Complainants, common law trade mark rights have been asserted in MICHAEL OWEN through the development of goodwill by the Complainants’ activities.

Michael Owen’s significant profile and the goodwill attached to MICHAEL OWEN have been used to produce income since his first season in top flight football in 1997. In doing so, prior to its registration and prior to the registration of the domain names, MICHAEL OWEN developed goodwill and rights as an unregistered trade mark protected in England and Wales by the law of passing-off, and in other territories by similar causes of action.

The Complainants submit that the Respondent has failed to show that he has any rights or legitimate interests in the disputed domain names.

Prior to receiving notification of the Complainants interests, the disputed domain names redirected to a website entitled “The Michael Owen Football Page” which advertised a number of sports related websites offering products for sale. By doing this the Respondent has intentionally attempted to attract for commercial gain, Internet users to a website by creating a likelihood of confusion with MICHAEL OWEN. Online users will have been and would continue to be confused into believing the domain names are registered to, owned, operated, authorized to, endorsed by, or otherwise connected to Michael Owen. In willingly creating this confusion the Respondent, his servant or agent has sought to gain an unfair advantage by using the MICHAEL OWEN, in which the Respondent has no rights, to the detriment of the goodwill which the Complainants have established in the mark.

Following correspondence from the Complainants, the Respondent terminated the offending redirect and indicated that the disputed domain names would be disabled. However, the disputed domain names now contain information regarding a Survey which the Respondent is proposing to conduct regarding common names. The Complainants consider it reasonable to assume that the “Survey” is simply an attempt to establish a legitimate purpose for the Respondent’s ownership of the domain names and that this has been prompted by notification of the Complainant’s interests.

The Complainants are i