WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Robbie Williams v. Howard Taylor
Case No. D2002-0588
1. The Parties
The Complainant is Robbie Williams c/o IE Music Limited, 111, Frithville Gardens, London, W12 7JG, United Kingdom.
The Respondent is Howard Taylor of 32, Pentire Avenue, Southampton, SO15 7RS, Hampshire, United Kingdom.
2. The Domain Name and Registrar
The Domain Name is .
The Registrar is Tucows International Corp.
3. Procedural History
This Complaint is to be resolved under the Uniform Policy for Domain Name Dispute Resolution (the "Policy") and Rules (the "Rules") approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center�s Supplemental Rules for Uniform Domain Name Dispute Resolution (the "Center", the "Supplemental Rules").
The Complaint was filed on June 25, 2002, by e-mail, and on June 27, 2002, in hard copy. On June 28, 2002, the Center sent a Request for Registrar Verification to the registrar of the disputed domain name, pursuant to which on the same day the Center received verification that the disputed domain name was registered by the Respondent, and that the registration is subject to the Policy.
In accordance with Paragraph 2 (a) of the Rules, the Center notified the Respondent of the Complaint on July 3, 2002, and the commencement of the Administrative Proceeding on that same date.
The panelist Dawn Osborne was duly appointed on July 29, 2002, and submitted a Statement of Acceptance and Declaration of Impartiality and Independence. The date scheduled for the issuance of the Panel�s decision is August 12, 2002.
The Panel finds the Center has adhered to the Policy, the Rules and the Supplemental Rules in administering this Case.
4. Factual Background
The Complainant is a successful pop star, having sold over 19.3 million albums worldwide. He is very famous and popular in the United Kingdom. As well as building up considerable goodwill in the name ROBBIE WILLIAMS for entertainment services, the Complainant has registered trade marks for ROBBIE WILLIAMS worldwide including UK and CTM registrations for these services and related goods.
The Respondent, a UK resident, registered the Domain Name on September 21, 2001. He says he wishes to run an unofficial Robbie Williams fan club, but does not appear to have been actually involved with a Robbie Williams fan club before, whether on line or not. Instead, he has pointed the Domain Name to the website of a rival pop group, Oasis, who have had a long running "rift" with the Complainant.
The Respondent also owns the Domain Names , and .
5. Parties� Contentions
A. Complainant
The Complainant states:
i) He was in the famous boy band Take That for five years before moving on to have tremendous global success as a solo artist, using his personal name Robbie Williams. As a solo artist he has sold 19.3 million albums worldwide and is the UK�s biggest selling male artist. He played to over 1.1 million fans at live shows throughout the UK, Europe, Australia, New Zealand and South East Asia. As a result of these activities, the Complainant has built up a reputation and significant goodwill in the name ROBBIE WILLIAMS.
ii) The Complainant has trade mark registrations for entertainment services and related goods in a number of countries worldwide, including UK and CTM registrations.
iii) The Domain Name consists of the Complainant�s registered trade mark plus the generic top level domain .info. The addition of the top level domain .info cannot serve to distinguish the Domain Name from the Complainant�s trade mark, to which it is confusingly similar.
iv) The Complainant has a web site attached to the domain names , , and and has registered and . The Complainant has invested a great deal in his online presence and took over responsibility for his web site from his record company in May 2000. Since this time 125,000 people have joined as members and given the Complainant permission to market to them by e mail. The site was a finalist in the Revolution awards 2001.
v) The Respondent does not have any rights or legitimate interests in respect of the Domain Name. He has no prior rights or legitimate connection to the name ROBBIE WILLIAMS. The Complainant has not given any consent, license or authorization to the Respondent for use or registration of the Domain Name. The Respondent is not known by the name ROBBIE WILLIAMS.
vi) The Respondent has registered the Domain Name in bad faith. The Respondent is resident in the UK. By the time of registration in September 2001 the ROBBIE WILLIAMS name had been extensively used and promoted for the Complainant�s business and was well known in the UK. The Respondent must have been aware of the Complainant and his rights and the registration of the Domain Name cannot be a coincidence.
vii) The Respondent has registered other famous marks as domain names too, including , and . The Respondent has engaged in a pattern of conduct and registered the domain names containing the trade marks in order to prevent the owners of these trade marks, including the Complainant from reflecting their mark in a corresponding domain name.
viii) The Respondent has pointed the Domain Name to the official web site for the pop group Oasis. The pointing of the Domain Name of the Complainant, a famous musical artist, to another musical artist�s web site is likely to harm the Complainant and cause a likelihood of confusion with the Complainant�s mark as to the source, sponsorship, affiliation or endorsement of the other artist�s site or of the products and services on such web site and cause damage to the Complainant�s brand and reputation. The Respondent must have been aware of the likely result of his actions.
B. Respondent
The Respondent has filed an informal response by letter stating that:
i) His intention is to run the best unofficial Robbie Williams fan club from October of this year, containing information about the recording artist Robbie Williams. The site will clearly state that it is unofficial, and contain a link to the official site to give people the choice to go to the official site instead if they are not interested in the Respondent�s site.
ii) Anyone looking for the official site would go to "www." first.
iii) The TLD .info has a significant effect on the Domain Name. The .info Registry says that .info names can be used for "whatever you like". It can legitimately be used to host an unofficial, independent fan website.
iv) The Respondent has a legitimate right or interest as a fan of a publicly recognized figure to reasonable rights to remain the owner of the Domain Name.
v) The Respondent works as a consultant in the IT industry and has registered multiple domain names for companies and individuals with which he is associated for commercial and personal use. He is busy so some projects take some time to get off the ground. He has registered a number of "clearly legitimate" domains such as , and . He has "no particular interest in Lady Dianna", but a friend would like to set up a site in her memory, and he is assisting with the technology.
vi) He pointed the Domain Name to the Oasis site to be controversial, to draw attention to the site, and to see what interest there was in .info. He thought that the "rift" between Robbie Williams and Mr Gallagher of Oasis was a public relations exercise and "that anyone who knows about it would see the humour". There were only 50 hits to his site in 6 months (half of which were caused by himself) and he does not believe any harm would come to the Complainant. Once the Complaint was received, he redirected the site as soon as was practicable to the Complainant�s site.
6. Discussion and Findings
According to paragraph 4(a) of the Uniform Dispute Resolution Procedure 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.
a) Complainant�s Rights
The Complainant is a well known pop star with a significant reputation and goodwill in the name ROBBIE WILLIAMS for entertainment services. He also is the owner of a number of trade mark registrations for ROBBIE WILLIAMS for such services and related goods. The Complainant has trade mark rights in the name ROBBIE WILLIAMS.
b) Identical or confusing similarity
It is immediately obvious that the Domain Name is identical to the Complainant�s ROBBIE WILLIAMS mark, save for the .info generic top level domain which does not serve to distinguish the Domain Name from the Complainant�s trade mark. The Domain Name is virtually identical and confusingly similar to the Complainant�s trade mark.
c) Rights or Legitimate Interest of the Respondent
The Respondent says it intends to set up an unofficial fan club using the Domain Name. However, there is no evidence that the Respondent has run his own Robbie Williams fan club either on-line or off line and he has yet to use the Domain Name for this purpose. He has not produced any evidence whatsoever of his preparations to do so. Accordingly, the Respondent has not used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods and services. Nor has the Respondent been commonly known by the Domain Name. Nor is he making a legitimate non commercial or fair use of the Domain name. He has previously pointed it to the commercial site of the band Oasis, rivals of the Complainant. Currently he is pointing it at a "Google" search page on which the official commercial site of the Complainant appears as the first item. The Respondent says he has plans to substitute his own site in future and it is not at all clear that this use will be non commercial or fair. Respondent has not demonstrated any rights or legitimate interest in the Domain Name.
d) Bad Faith
Paragraph 4 (b) of the Policy sets out non exclusive criteria, that are evidence of the registration and use of a domain name in bad faith by the Respondent. These include:
i) the Respondent has registered or has 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 that Complainant for valuable consideration in excess of the Respondent�s documented out-of-pocket costs directly related to the domain name; or
ii) the Respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct: or
iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the complainant�s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
There are facts in this case which cast doubt on the Respondent�s claims that he has registered the domain name to set up an unofficial Robbie Williams fan site.
The Respondent has in the past pointed the Domain Name to the site of a rival pop group Oasis and has admitted he knew of the "rift" between the Complainant and Mr Gallagher when so doing. This does not appear to be the action of a fan, but rather th the actions of someone who wished to provoke the Complainant. The Respondent refers to the "humour" involved in such an act. However, I doubt that the Complainant would have seen any joke. The technique of pointing a domain name containing a famous trade mark to a site which the registrant knows will be undesirable to the trade mark owner is commonly used by cybersquatters who wish to sell the name to the trade mark owner and wish to expedite the prospect of a large monetary offer in exchange for transfer of the domain name.
Further, the Respondent owns the other domain names , and . Although he explains that he has registered the Princess Diana related names for a friend who is interested in hosting a memorial site, there is no attempt to justify the holding of containing the famous financial services trade mark Scottish Widows.
Accordingly, I consider that it is likely that the Respondent registered the Domain Name in order to sell it to the Complainant or to a competitor of the Complainant for a sum exceeding his costs of registration or that he meant to prevent the Complainant from reflecting his trade mark in the .info domain. The fact that he has registered other famous names as domain names suggests a pattern of conduct.
Finally, by pointing the domain name to the official site of the band Oasis, the Respondent does appear to have intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant�s mark as to the source, sponsorship, affiliation, or endorsement of the content attached to the Domain Name or a product or service featured in that content. He admits that the pointing of the site to the Oasis site was intended to attract attention to the Domain Name in order to increase the traffic to his site, presumably for commercial gain. Any confusion will be compounded by the fact that the site now points to a Google search page with a link to the Complainant�s official site as the first item. People may well think is registered by the Complainant as it points to a page which links to the Complainant�s official site. Were the Respondent to substitute his new independent site, also linking to the Complainant�s site, confusion would undoubtedly be caused, even if the site were to contain a disclaimer as suggested by the Respondent. Again, this would produce an obvious commercial gain for the Respondent. The Respondent�s disclaimer argument would have been much stronger had the domain name not directly reflected the trade mark of the Complainant, but rather had inherently warned the public that it was not official, for example if it had been .
Accordingly, the panelist holds that the Respondent has registered and used the Domain Name in bad faith.
7. Decision
In the light of the foregoing, the panelist decides that the Domain Name is confusingly similar to the Complainant�s trade mark and the Respondent has no rights or legitimate interests relating to the Domain Name, which was registered and used in bad faith.
Accordingly, in the light of the above, the panelist requires that the registration of the Domain Name be transferred to the Complainant.
Dawn Osborne
Sole Panelist
Dated: August 8, 2002
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