WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jaap Stam v. Oliver Cohen
Case No. D 2000 - 1061
1. The Parties
The Complainant is Jaap Stam, a Dutch citizen, residing in Cheshire, United Kingdom having a postal address c/o World Soccer Consult, Postbus 254, 8000 AG Zwolle, The Netherlands.
The Respondent is Oliver Cohen, with a mailing address at the Department of Physics, Carnegie-Mellon University, Pittsburgh, PA 15213 United States of America.
2. The Domain Name and Registrar
The domain name in issue in these Administrative Proceedings is . The Registrar with which the said domain name is registered is R Inc.
3. Procedural History
On August 15, 2000 the Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") in digital form and the hard copy was received on August 24, 2000.
On August 18, 2000 the Center sent an Acknowledgement of Receipt of Complaint to the authorized representative of the Complainant by e-mail.
On August 22, 2000 the Center sent a request for Registrar Verification to the Registrar by e-mail. On August 25, 2000 the Registrar responded to the Center by fax and stated that it was in receipt of the Complaint sent by the Complainant, confirmed that it is the registrar of the said domain name , confirmed that the Respondent was at that time the registrant of the said domain name and confirmed that the Uniform Domain Name Dispute Resolution Policy ("the Policy") applied to the said registration. The Registrar further provided a print out of the information contained in its WHOIS database relating to the said registration.
The Center reviewed the said Complaint and noted that paragraph 15 of the Complaint did not comply with the requirements of paragraph one of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules").
On September 6, 2000 following an exchange of e-mails, copies of which were furnished to the Respondent, the Complainant filed an amendment to said paragraph 15 of the said Complaint in digital form. A hard copy of the said amendment was received by the Center on September 11, 2000. The Center acknowledged receipt of same by e-mail on September 11, 2000.
On September 25, 2000 the Center finalised its review and was satisfied that the amended Complainant complied with the Rules and the WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("the Supplemental Rules") and that the appropriate fees had been paid by the Complainant.
On September 25, 2000 the Center sent a Notification of Complaint and Commencement of Administrative Proceeding relating to the said domain name to the Respondent by post/courier (with enclosures), by facsimile (Complaint without attachments and Amendment) and by e-mail (Complaint without attachments and Amendment). A copy of said Notification was sent to the authorised representative of the Complainant by e-mail. Further copies of said Notification were sent to the Internet Corporation for Assigned Names and Numbers ("ICANN") and to R, Inc., the Registrar of the domain name (Complaint without attachments).
Said Notification of Complaint and Commencement of Administrative Proceeding inter alia advised the Respondent that the Administrative Proceedings had commenced on September 25, 2000 and that the Respondent was required to submit a Response to the Center on or before October 14, 2000.
On October 15, 2000 the Respondent filed a Response by e-mail.
On October 17, 2000 the Center sent an acknowledgment of receipt of Response to the Respondent and advised him that the Center would proceed to appoint the Administrative Panel.
On October 19, 2000 the Center invited James Bridgeman to act as Administrative Panel in these proceedings.
On October 25, 2000, having received a Statement of Acceptance and Declaration of Impartiality from the said James Bridgeman the Center proceeded to appoint this Administrative Panel consisting of a single member. On the same date, the case file was transferred to the Administrative Panel.
In the view of the Administrative Panel, the proper procedures were followed and the panel was properly constituted.
On October 26, in breach of the procedure set out in the Rules, the representative of the Complainant sent an e-mail to this Administrative Panel with attachments purporting to be a supplement to the Complaint.
Further in breach of the procedure set out in the Rules, the representative of the Complainant sent a letter directly to this Administrative Panel.
4. Factual Background
The Complainant is a professional international soccer player and the proprietor of the Benelux trademark and service mark registered since in classes 25, 28, 35 and 41 in respect of various goods and services in the name of Jakob Stam.
The Complainant is a famous Dutch soccer player and has been playing for the Dutch national team for a number of years. The Complainant also plays at Manchester United in the Premier league in England. Internationally, the Complainant has developed an international reputation for his performances including participation in the World Championships in France 1998 and the European Championships in Belgium and The Netherlands 2000 ("Euro 2000").
There is little information about the Respondent, save that according to the Registrar's Whois database the Respondent has an address in North Lanarkshire, United Kingdom. According to the Complaint the said domain name was registered by the Respondent on April 23, 2000.
5. Parties� Contentions
A. Complainant
The Complainant requests that the said domain name be transferred to the Complainant. In support of this application the Complainant submits that this dispute is properly within the scope of the Policy and the Administrative Panel has jurisdiction to decide the dispute. The registration agreement, pursuant to which the domain name that is the subject of this Complaint is registered, incorporates the Policy. The domain name was registered on December 21, 1999.
The Complainant further submits that in accordance with the Policy, Paragraph 4(a), the Respondent is required to submit to a mandatory administrative proceeding because:
(1) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) The Respondent has no rights or legitimate interests in respect of the domain name; and
(3) The domain name was registered and is being used in bad faith.
The Complainant submits that he is a world renowned Dutch soccer player for many years and has been the proprietor of the Benelux registered trademark and/or service mark of the word for almost two years. This trademark and/or service mark consists of the words and has been registered for the Benelux countries since September 2, 1998 in the name of Jakob Stam. In addition the Complainant submits that he is the proprietor of a registered United Kingdom word mark and a device trademark and service mark since September 8, 1998. The trademarks and/or service marks are registered for, amongst others, articles of sports clothing, games and playthings, publicity services and recreational services. The Complainant has submitted a print-out of the registration details of the said Benelux trademark and photocopies of relevant pages of the United Kingdom Trade Marks Journal as annexes to the Complaint in support of this claim.
The Complainant submits that at the time of these Administrative Proceedings he plays at Manchester United in the Premier league in England. The Complainant submits that he has developed an international reputation through his participation in many international games and events including his performances during the World Championships in France 1998 and the European Championships in Belgium and The Netherlands 2000 ("Euro 2000"). The Complainant submits that these tournaments have been watched by hundreds of millions of people from all over the world and in the course of these tournaments the Complainant has been the subject of significant media attention.
The Complainant submits that the general public recognizes his trademark and proper name as being those of the world renowned Dutch soccer player and that a considerable goodwill is attached to his proper name.
The Complainant submits that even if he could not rely on his registered trademark and/or service mark rights, he could rely on common law trademark and/or service mark rights. During the past few years the Complainant has acquired, in addition to the rights in the Benelux and the United Kingdom registrations, common law rights in the goodwill of his proper name as a trademark and service in various other countries. The Complainant is always typically known as and therefore is a common law mark.
The Complainant submits that his rights to a remedy in these proceedings under the Policy and Rules are not limited to circumstances in which the Complainant has a "registered" trademark and submits that an unregistered, or common law trademark is sufficient for the purpose of paragraph 4(a) (i). In support of this submission the Respondent refers to following WIPO cases:
Steven Rattner v. BuyThisDomainName (John Pepin) WIPO Case No. D2000-0402;
Monty and Pat Roberts, INC v. Bill Keith, WIPO Case No. D000-0299;
Jeannette Winterson v. Mark Hogarth, WIPO Case No. D20000-0235;
Julia Fiona Roberts v. Russell Boyd WIPO Case No. D2000-0210.
The Complainant submits that his rights to the goodwill in his name is protected by the laws of the United Kingdom, the laws of the United States of America and Dutch law. In support of this submission the Complainant refers to the recent decision of the President of the Amsterdam District Court in Albert Heijn and 159 other plaintiffs v. Name Space, July 13, 2000. According to the Complainant this decision is not yet published but the Complainant has submitted an English language translation of the judgment of the Court, from which it appears that the Court decided in favour of the plaintiff�s claim in summary proceedings and directed the transfer of approximately 300 domain names registered by Name Space. The Complainant submits that in that case the President of the District Court sustained the request to transfer all domain names that consisted of the trademarks, trade names and/or proper names of the plaintiffs to the plaintiffs concerned and quoted from the said judgment as follows:
"the contested use of the proper names of various plaintiffs must, in respect of these plaintiffs, be considered to be unlawful as they are now unable to register their proper names (or have their proper names registered) as domain names and are therefore unable to exploit these, causing them to suffer losses".
The Complainant submits that it is and will continue to be very important for a world famous soccer player like the Complainant to have presence on the Internet. The Complainant states that he intends to use his domain name and attach a web site to it, in order � amongst others � to provide international visitors from all over the world with detailed information about himself, his present club Manchester United, the Dutch national team and upcoming tournaments such as the Champions League and the World Championships for national teams ("World Cup").
The Complainant submits that the element of the said domain name is identical to and/or confusingly similar with the Complainant�s registered trademarks and/or service marks, common law trademark rights and his proper name. Therefore, the Respondent is infringing these rights.
The Complainant submits that the following circumstances indicate that the Respondent has no rights or legitimate interests in respect of the domain name and that the domain name should be considered as having been registered and is being used by the Respondent in bad faith:-
The Complainant submits that the Respondent has registered the said domain name in order to prevent the Complainant, being the owner of the said trademark and/or service mark, from reflecting the said trade mark and service mark in a corresponding domain name. The Complainant submits that this is especially damaging, since the Complainant has invested much time, effort and money in establishing his name as a trademark, which has resulted in the fact that a lot of goodwill is attached to this name and trademark.
In the annexes to the Complaint, the Complainant has also furnished copies of letters and e-mail correspondence between the Complainant's representative and the Respondent dated July 26, 2000 and subsequent correspondence between the Complainant's representative and the Respondent's representative on July 28, August 3, and August 11, 2000. In the initial correspondence between the Complainant's representative and the Respondent, the Respondent stated as follows "When I registered the domain name I was not aware that the trademarks existed for that name. I apologise if my registration has caused any offence. I will seek to arrange transfer of this name to Mr Stam as soon as possible". Two days later the Respondent's representative sent an e-mail to the Complainant's representative stating inter alia that "[d]espite his earlier email, which was made without advice of counsel, Mr Cohen will not surrender ownership of the aforesaid domain until he is satisfied as to the correct course of action."
The Complainant submits that the said domain name was registered by the Respondent with the Registrar on December 21, 1999. By this time the Complainant was already a famous and well known soccer player. The Respondent should have had actual knowledge of the proper name of the Complainant and the rights of the Complainant at the time the Respondent registered the said domain name . The Complainant submits that the Respondent has no rights or legitimate interest in the said domain name .
The Complainant submits that by using the said domain name, the Respondent creates a likelihood of confusion with the Complainant�s mark as to the source, sponsorship, affiliation, or endorsement of the domain name. The Complainant submits that the public will be misled as to the origin and owner of the said domain name . People in search of the domain name of , or people otherwise encountering the said domain name , will believe it emanates from, is endorsed by, licensed by, approved by or otherwise associated with the Complainant. The Respondent thus falsely suggests to the public � among which are those people working or interested in soccer - that the entity owning the said domain name is the Respondent or is in some way associated or connected with the Respondent.
The Complainant submits that according to the decision of the administrative panel in Telstra Corporation Limited v. Nuclear Marshmellows WIPO Case No. D2000-0003, inaction (passive holding) other than those identified in paragraphs 4(b)(i), (ii) and (iii) may constitute a domain name being used in bad faith.
The Complainant submits that the Respondent is not actively using the said domain name as the address of a www site. The Complainant submits that on the web site , which is linked to the said domain name , it is merely indicated that the said domain name is parked by the Registrar on behalf of the Respondent. The Complainant submits that these circumstances lead to the conclusion that in this case the inaction (passive holding) of the Respondent also amounts to use in bad faith.
The Complainant further submits that Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name and the Respondent has not ceased his wrongful behavior despite the Complainant�s repeated requests to cease and desist.
The Complainant submits that it follows that any realistic use of the domain name will misrepresent an association with the Complainant and his goodwill and that it is not possible to conceive of any plausible actual or contemplated active use of the said domain name by the Respondent that would not be illegitimate, resulting in infringements of the trademarks and/or service marks and/or common law trademarks or service marks of the Complainant.
The Complainant submits that the Respondent has not in any way been commonly known by the domain name . The Respondent does not use the said domain name as part of his legal name, corporate name or any commonly known identifier and the Respondent has no trademark or service mark rights. The Complainant has not licensed or otherwise permitted the Respondent to use his trademark and/or service mark, nor has the Complainant licensed or otherwise permitted the Respondent to apply for or use any domain name incorporating his mark. The Complainant submits that the Respondent has no relationship with the Respondent, neither did the Complainant give his permission to the Respondent to use his proper name in any way.
The Complainant submits that the Respondent is not making a legitimate non-commercial or fair use of the domain name. Instead, it clearly is the Respondent�s intention to prevent the Complainant from registering the domain name.
B. Respondent
The Respondent submits that the Complainant bears the burden of showing that he is entitled to the transfer and it is clear that the Complainant cannot meet his burden. The Respondent submits that the Complainant has not produced even a scintilla of evidence with regard to how the Respondent registered and is using the Domain Name in bad faith. Further, he also cannot prove that he has a legitimate right or interest in the Domain Name.
In support of the defence that the Complainant has not proved that the domain name was registered by complainant in bad faith or that it is being used in bad faith, the Respondent submits that the Respondent innocently registered the said domain name and that there is " simply is no evidence before the Court (sic), or in existence whatsoever, to support Complainant�s view".
The Respondent submits that there has been no attempt to sell the said domain name and that the only attempt to buy it was declined by the Respondent.
The Respondent admits that it is true that Respondent has not put the site in use, but argues there is no requirement that he do so. The Respondent submits that this is not an example of where someone has held a registration for a long period of time. This action was initiated a mere seven months after the Respondent registered the said domain name. Due to the fact that domain names may be hard to locate, it is not inappropriate for someone to merely hold a domain name for a short period of time.
The Respondent points out that the onus is on the Complainant to prove both that the Respondent registered the domain name in bad faith and that he is using the said domain name in bad faith. The Respondent submits that in the present case, it is simply crystal clear that there is no evidence of bad faith arising from the Respondent�s registration or use of the said domain name.
The Respondent further submits that the Complainant has failed to prove that he has the requisite legitimate interest in the domain name. Even assuming that Complainant has a valid registration in the United Kingdom and the Benelux jurisdictions, the Complainant�s claims that he has a common law trademark rights from the rest of the world are "mere bold accusations". The Respondent submits that there is no underlying evidence before this Administrative Panel that Complainant has any trademark rights in the U.S.A. Even assuming that he is well known in parts of Europe, the Respondent submits that the Complainant is not known in the United States at all, and if so, only "by a miniscule number of esoteric people following sports in foreign countries".
The Respondent submits that there is no evidence before this panel that the Complainant has any rights in the United States and that the Complainant has, yet again, failed to meet his burden.The Respondent submits that essentially, the Complainant has asked that this Administrative Panel extend his trademark rights through common law all over the globe without any attempts to monitor or secure those rights beyond merely stating that he has them. To extend his common law trademark rights all over the globe without providing any evidence whatsoever that he is in fact policing them and/or has taken any steps to secure them is preposterous and contrary to the law of many nations, including that of the United States. The Respondent submits that at the time of filing his Complaint, the Complainant had yet to even register and/or . The Respondent submits that this is evidence that the Complainant is not entitled to the trademark rights he alleges. Even assuming that he has registration in the Benelux countries and in the United Kingdom, it is inappropriate to, in effect, extend his trademark rights across the world. There are other ways for him to do this and he has not taken those steps.
The Respondent further submits that the Complainant has made illegal threats which are violations of the Pennsylvania Consumer Protection Law.
6. Discussion and Findings
Preliminary Issue
Subsequent to the appointment of this Administrative Panel the Complainant's representative, in breach of the Rules, sent two unsolicited communications directly to this Administrative Panel.
Paragraph 8 of the Rules provides as follows:-
"8. Communication Between Parties and the Panel
No Party or anyone acting on its behalf may have any unilateral communication with the Panel. All communications between a Party and the Panel or the Provider shall be made to a case administrator appointed by the Provider in the manner prescribed in the Provider's Supplemental Rules."
In the circumstances, this Administrative Panel has not considered either of these communications and it follows that the content of same has not been admitted in evidence.
Substantive Issues
Paragraph 4(a) of the Policy places on the Complainant the onus of proving that:-
(i) the domain name in dispute 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 said domain name; and
(iii) the said domain name has been registered and is being used in bad faith.
The Complainant has established that Jakob Stam is the owner of the Benelux registered trademark and service mark and the United Kingdom registered trademark, details of which are set out above. This Administrative Panel is satisfied that on the basis of the information provided in the Complaint that the Complainant is the said Jakob Stam and the owner of the said registrations.
Furthermore the Complainant has submitted that he is a world renowned footballer with common law rights in the name , although he has not provided any evidence in support of this submission. The said domain name is clearly identical to the said registered trademark and servicemark save for the ".com" element in the domain name. The United Kingdom device mark is essentially a photograph of the Complainant and as such this image bears no resemblance whatsoever to the said domain name.
As to the Respondent's arguments that the Complainant has no common law rights in the name, this is not relevant to this decision as this Administrative Panel is satisfied that the said domain name is identical or confusingly similar to the said registered trademarks and service marks and this is sufficient for the Complainant to satisfy the first part of the said test.
Furthermore the Complainant has established a prima facie case that the Respondent has no rights or legitimate interest in the said domain name. It is clearly not the Respondent's name and the Respondent has not provided any information to suggest otherwise. While acknowledging that it would be preferable to have further information relating to the business activities of the Complainant, this Administrative Panel is satisfied that the Complainant has provided sufficient evidence to make out a prima facie case that the Respondent has no right to use the said domain name and that any use of the said domain name would be unlawful. The Respondent has had the opportunity to address this point with some substantive evidence or pertinent submissions of substance but has failed to take the opportunity so to do. In the circumstances this Administrative Panel is satisfied that the Complainant has provided sufficient evidence to make out a prima facie case sufficient to satisfy the second leg of the test.
This Administrative Panel is confirmed in this view by the attitude first taken by the Respondent in his above mentioned e-mail to the Complainant's representative on July 26, 2000 when he apologised if the registration of the name had caused any offence to the Complainant and agreed to arrange for the transfer of the said domain name to the Complainant as soon as possible.
As regards the question of registration and use in bad faith, this Administrative Panel is satisfied that the Complainant has made out a prima facie case that the Respondent would have been aware of the Complainant and his reputation as an international football player at the time when the Respondent registered the said domain name. The Respondent has stated that he innocently registered the said domain name, but besides that assertion the Respondent has not provided any explanation as to how or why he chose this domain name. This Administrative Panel does not accept the Respondent�s submission that the Complainant is known only "by a miniscule number of esoteric people following sports in foreign countries". Alternatively if this is the case, the selection and combination of the unusual (and in the English language -meaningless) words and by the Respondent as a domain name, without any explanation, leads this Administrative Panel to be of the view that the Respondent appears to fall into that category.
This Administrative Panel accepts that the effect of the Respondent's registration is to deprive the Complainant of the ability to register his trademark and service mark as a domain name in the ".com" domain. Furthermore the Respondent's non-use of the said domain, for a substantial period of seven months, without any explanation or any evidence of any plans or preparations on the part of the Respondent to establish a substantive www site at that addess, permits this Administrative Panel to infer that the Respondent has registered and is using said domain in bad faith.
This Administrative Panel therefore accepts that the Complainant has made out a prima facie case that the Respondent has registered and is using said domain name in bad faith and that the Respondent has failed to satisfactorily address any of the issues raised by the Complainant.
7. Decision
With specific reference to paragraphs 4(i) of the Policy and paragraph 15 of the Rules this Administrative Panel decides that the Respondent has registered the domain name identical or confusingly similar to the Complainant's trademark and service mark, that the Respondent has no rights or legitimate interest in respect of that domain name and that the Respondent has registered and is using that domain name in bad faith. Accordingly, this Administrative Panel decides that said domain name should be transferred to the Complainant.
James Bridgeman
Presiding Panelist
Dated: November 4, 2000
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