WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Joe Cole v. Dave Skipper
Case No. D2003-0843
1. The Parties
The Complainant is Joe Cole of Gidea Park, Essex, United Kingdom of Great Britain and Northern Ireland, represented by Mishcon de Reya, solicitors.
The Respondent is Dave Skipper of Latton Bush Business Centre, Southern Way, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with Network Solutions, Inc. (the "Registrar").
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 24, 2003. On October 24, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name at issue. On October 28, 2003, the Registrar transmitted by email to the Center its verification response confirming that the Respondent was listed as the registrant and providing the contact details for the administrative, billing, and technical contacts.
3.2 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").
3.3 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 October 29, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was November 18, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of his default on November 19, 2003.
3.4 The Center appointed Matthew S. Harris as the Sole Panelist in this matter on December 8, 2003, (the "Panel"). 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 paragraph 7 of the Rules.
3.5 On December 22, 2003, the Panel issued a procedural order in this matter (Procedural Order No. 1). Procedural Order No.1 recorded the fact that the Panel had reached the preliminary view that the facts identified in the Complaint were sufficient to constitute a prima facie case to the effect that the Respondent has registered and used the Domain Name primarily for the purpose identified within the scope of paragraph 4(b)(i) of the UDRP Policy and/or with the intention of selling the domain name to a person for use in a manner described in paragraph 4(b)(iv) of the UDRP Policy. Given that no allegation to this effect was recorded in the Complaint, Procedural Order No. 1 invited both parties to submit such further statements, documents or evidence as they might consider appropriate in relation to this issue by no later than January 5, 2004. The Panel also postponed issuing a decision in this proceeding until January 15, 2004.
3.6 On December 30, 2003, Mishcon de Reya, the Complainant�s legal advisers, sought an extension of time in which to submit further material. By email of the same date the Panel granted an extension until 5:30pm GMT on January 7, 2004.
3.7 On January 6, 2004, the Complainant submitted a further submission in accordance with Procedural Order No. 1. No submission or document was submitted by the Respondent.
4. Factual Background
4.1 The Complainant is a well-known English football player and English national currently residing in the United Kingdom.
4.2 The Complainant began his career at the London Premiership Football Club West Ham United, and made his debut on January 2, 1999. The Complainant has provided several online newspaper articles evidencing the media attention surrounding this debut.
4.3 The Respondent registered on January 19, 1999.
4.4 The Complainant is the owner of a United Kingdom trademark registration (No. 2271980) dated June 6, 2001, in various classes for the JOE COLE mark, as a device only mark in the form of the Complainant�s signature.
4.5 Legal advisers to the Complainant wrote to Valentine & Co., liquidators for a company named Chocolate Technology Limited, which was listed in the WHOIS database as the Respondent�s "care of" contact, on May 7, 2003. The Complainant ascertained from this correspondence that the Respondent was the owner of the Domain Name.
4.6 The Complainant�s lawyers wrote to the Respondent on June 10, 2003, and requested that the Respondent transfer the Domain Name to the Complainant.
4.7 The Respondent�s lawyers replied on June 18, 2003, stating that their "clients" acquired domain names to develop them into active websites, and were not prepared to transfer the Domain Name to the Complainant in exchange for administrative costs.
4.8 The Complainant�s legal advisers wrote to the Respondent�s solicitors again on July 9, 2003, and requested the transfer of the Domain Name. The Complainant received no response to that letter.
4.9 As at the date of this decision, the Domain Name, when accessed, resolves to a "Page Not Found" message and a statement that the page is "Powered by Zeus Web Server."
5. Parties� Contentions
Complainant
5.1 The Complainant asserted in its Complaint as follows:
(a) The Domain Name is virtually identical or confusingly similar to the JOE COLE mark, save for the fact that the trademark is in the stylised form of Joe Cole�s signature.
(b) The Complainant has become famous throughout the United Kingdom and as a result the name "Joe Cole" has acquired a secondary meaning such that the public associates the Complainant�s services as a footballer with the name Joe Cole. The Complainant has therefore acquired common-law rights in his name.
(c) The Respondent has not received a licence or consent to use the JOE COLE trademark or common law rights in any manner, and accordingly has no legitimate interest in respect of the Domain Name.
(d) The Respondent asserts that the Domain Name is intended to be used as a Joe Cole website but has not made any use of the Domain Name since it was registered on January 19, 1999.
(e) The Respondent has no rights or legitimate interests in respect of the Domain Name and at the time the Respondent registered the Domain Name the Complainant was very well known throughout the UK as a talented footballer.
(f) Accordingly, the Respondent has registered and used the Domain Name in bad faith.
5.2 In support of its assertion of bad faith, the Complainant relied upon the decision in Helen Fielding v. Anthony Corbert aka Anthony Corbett, WIPO Case No. D2000-1000.
5.3 The Complainant subsequently asserted that in its submission dated January 6, 2004, that:
(a) "the Respondent registered the Domain Name because he knew at the date of registration that the Complainant was a rising star in British football. He never had any intention of using the Domain Name as a fan site or otherwise, but intended to sell it to the Complainant for a financial profit." and that therefore paragraph 4(b)(i) of the UDRP Policy applied; and
(b) "if [the Respondent] intends to create a website there is a strong likelihood that he will seek to attract internet users for commercial gain, by creating a likelihood of confusion with the complainant�s mark" which is contrary to paragraph 4(b)(iv) of the UDRP Policy.
5.4 The Complainant requests that the Panel issue a decision that the Domain Name be transferred to the Complainant.
Respondent
5.5 The Respondent has made no formal substantive reply to the Complainant�s contentions.
6. Discussion and Findings
Introduction
6.1 The Panel has reviewed the Complaint together with its annexures. In the light of this material, the Panel finds as set out below.
6.2 This Panel does not find there are any exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel determining the Complaint. Details of these proceedings have been served in accordance with the relevant requirements set out in the Rules.
6.3 It is incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. However, under paragraph 5(e) if the Respondent does not submit a response and in the absence of exceptional circumstances, "the Panel shall decide the dispute based upon the Complaint." Further, under paragraph 14 of the Rules where a party does not comply with any provision of the Rules, the panel "shall draw such inferences therefrom as it considers appropriate."
Identical or Confusingly Similar
6.4 Under paragraph 4(a)(i) of the Policy, the Complainant must show that the Domain Name is identical or confusingly similar to a trademark in which it has rights.
6.5 The Complainant relies upon a United Kingdom registered device only trademark for JOE COLE (No. 2271980). The priority date for this mark is June 6, 2001, which post-dates the date of the registration of the Domain Name.
6.6 There are a large number of decisions in which a complaint that relied upon a trade mark that post-dated registration of the relevant domain name has failed. These include Mr. Severiano Ballesteros Sota, Fairway, S.A. and Amen Corner S.A. v. Patrick Waldron, WIPO Case No. D2001-0351. Where in the Policy is the rationale for this approach to be found? One possibility is that the words "at the time of registration" are to be implied at the end of paragraph 4(a)(i); i.e. to say that the relevant trade mark rights must exist at the time that the domain name is registered. Another approach is to accept that there is no such time restraint in paragraph 4(a)(i), but to say that the fact that a trade mark did not exist at the time of the domain name�s registration is a factor to be taken into account on the issue of bad faith. The latter approach is one that has been followed in a number of UDRP cases including, for example, the recent decision of MADRID 2012, S.A v Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598.
6.7 In many (if not most) cases, this difference in approach will make no difference to the outcome of a decision. But in some cases it may be vital. Take for example, the following hypothetical situation. A business announces to the world that it intends to use some new name in connection with its business or one of its products but has not yet obtained a registered trade mark in respect of that new name and has no other rights that constitute a trade mark for the purposes of paragraph 4(a)(i) of the Policy. A registrant, because he heard that announcement, decides to register that name (or something confusingly similar to that name) as a domain name. In such a case, if the existence of rights at the time of registration is a requirement, the business has no recourse under the Policy. If this is merely a factor to be taken into account on the question of bad faith, a remedy may still be available.
6.8 However, it is not necessary to consider these issues further in this case since the Complainant does not just rely on a registered trademark. He also relies upon "common law rights" in the name "Joe Cole".
6.9 It is now clear under the Policy that "common law rights" suffice for the purposes of establishing the relevant trademark rights of the Complainant pursuant to paragraph 4(a)(i) of the Policy. The Panel refers in this respect to the decision in Louis de Bernieres v. Old Barn Studios Limited, WIPO Case No. D2001-0122 and the decision of this Panel in Sibyl Avery Jackson v. Jan Teluch, WIPO Case No. D2002-1180.
6.10 Has the Complainant in this case brought sufficient evidence before the Panel to establish such rights as at the date of registration of the Domain Name? While the evidence submitted by the Complainant is brief, amounting to 6 articles from the online archive of The Sun newspaper (a UK national newspaper), it is nevertheless sufficient to show that even at the time of the Complainant�s debut in early January 1999, he already had a reputation as a "sensation" and a "rising star."
6.11 There have been a number of WIPO decisions involving professional footballers made by the panel (including Francesco Totti v. Jello Master, WIPO Case No. D2002-0134 and Pierre van Hooijdonk v. S.B. Tait, WIPO Case No. D2000-1068) in which sufficient common law rights were held to exist. These cases have concerned complainants with arguably more established reputations in the footballing arena than the Complainant had at the time of the registration of the Domain Name. However, the Panel is satisfied that the Complainant has in this case put forward a prima facie case that at the time of registration he had common law rights in his name that are recognised under the UDRP.
6.12 The Panel also finds that the Domain Name is identical to the Complainant�s common law rights. The existence of the ".com" suffix, the absence of a space between the two words "Joe" and "Cole," and the use of lower case characters in the Domain Name do not in this case serve to alter this finding.
6.13 Accordingly, the Panel concludes that the Complainant has proved the relevant elements of paragraph 4(a)(i) of the Policy.
Rights or Legitimate Interests
6.14 Under Paragraph 4(a)(ii) of the Policy, the Complainant must show that the Respondent has no rights or legitimate interests in the Domain Name.
6.15 It appears clear that the Complainant has not licensed or otherwise authorised the Respondent to use the JOE COLE mark.
6.16 However, whilst the Respondent has not submitted a response to the Complaint, his legal advisors indicated in a letter to the solicitors to the Complainant dated June 18, 2003, that his clients were:
"businessmen who acquire domains to develop them into active websites. They are presently in the process of developing this domain [i.e. ] into a fan site for Joe Cole."
and that arbitration panels have consistently held that fan sites are a legitimate use of a domain and of a person�s name.
6.17 Paragraph 4(c) of the Policy sets out certain circumstances in which a respondent may demonstrate rights or legitimate interests in the Domain Name. They comprise:
(i) use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name with a bona fide offering of goods or services (paragraph 4(c)(i));
(ii) the respondent has been commonly known by the domain name, even if the respondent has required no trademark or service mark rights (paragraph 4(c)(ii));
(iii) a legitimate non commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark issues (paragraph 4(c)(iii)).
6.18 Only paragraphs 4(c)(i) or 4(c)(iii) are potentially of relevance to this case. Paragraph 4(c)(i) can be easily dismissed in this instance. Paragraph 4(c)(i) requires either use or "demonstrable preparation to use." A mere ascertain in a letter of an intention to develop a fan site for commercial purposes without further explanation or evidence, is not enough.
6.19 What about paragraph 4(c)(iii)? In Helen Fielding v. Anthony Corbert aka Anthony Corbett, WIPO Case No. D2000-1000, the panel accepted that use of a domain name to establish a fan site might fall under heading 4(c)(iii) of the Policy. However, the panel went on to hold that heading 4(c)(iii) did not apply where a respondent had stated this was his intention and yet had not so used the domain name in the two years that had passed since registration. The reasoning behind that decision was that the words "making a legitimate non commercial or fair use" were to be interpreted narrowly so as not to include the holding of the domain name over for two years even if there was a genuine intention to subsequently use the domain name for the purposes of a fan site.
6.20 If this reasoning is applied to the current case, heading 4(c)(iii) would not be satisfied. The Respondent has had over 3 � years in which to develop the alleged website and has not done so. However, the Panel does not need to decide this issue in this way. Heading 4(c)(iii) can be discounted for somewhat simpler reasons. The Respondent�s lawyers claim that the Respondent is a business man who has registered that domain name to develop the domain name into a fan site. For reasons that are explained in greater detail later in this decision in the context of the question of bad faith, the Panel does not accept that the real reason for the registration of the Domain Name was for use in connection with a fan site. However, even if this were the Respondent�s intention, the clear and obvious inference from this statement is that any use of the Domain Name by the Respondent would be for commercial gain. Therefore, the Panel holds that 4(c)(iii) does not apply.
6.21 In the circumstances, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interest in the Domain Name. In the absence of any evidence to the contrary, the Panel is entitled to find, and does so, that the Respondent does not have any rights to or legitimate interest in the Domain Name.
Registered and Used in Bad Faith
6.22 Paragraph 4(a)(iii) of the Policy requires that the Domain Name was registered by the Respondent, and has been used, in bad faith.
6.23 A non-exclusive list of circumstances constituting evidence of bad faith for the purposes of paragraph 4(a)(iii) are set out in paragraph 4(b) of the Policy. Initially, the Complainant did not rely on any of these circumstances in this case. Of course, since the list in paragraph 4(b) is non-exclusive, this is not necessarily fatal to the Complainant�s case. What then were the Complainant�s grounds for alleging bad faith in this case?
6.24 Firstly, he asserted that UDRP panels have found the non-use of a domain name amounts to bad faith use and cited the decision in Helen Fielding v. Anthony Corbert aka Anthony Corbett, WIPO Case No. D2000-1000. Next, he claimed as follows:
"holding of a domain name in these circumstances amounts to bad faith use due to the fact that the Complainant�s registered and unregistered marks have a strong reputation and are well known. The fact that the Respondent has failed to provide credible evidence of any actual or contemplated good faith use is further evidence that the domain was registered in bad faith."
6.25 For the Complainant to present its case in this fashion is, to say the least, somewhat unhelpful. Firstly, the decision in Helen Fielding v. Anthony Corbert aka Anthony Corbett, WIPO Case No. D2000-1000, is of limited relevance to the question of when bad faith exists notwithstanding the fact that the factors set out in paragraph 4(b) are not alleged. In Helen Fielding v. Anthony Corbert aka Anthony Corbett, WIPO Case No. D2000-1000, the respondent had offered to sell the domain name to the complainant and the circumstance of the case were such that the panel were able to infer that the domain name had been registered with the intention of selling it to the complainant for valuable consideration in excess of his out of pocket expenses. As such Helen Fielding v. Anthony Corbert aka Anthony Corbett, WIPO Case No. D2000-1000, is a case where paragraph 4(b)(i) of the Policy had been made out.
6.26 Secondly, whilst the Panel fully accepts the proposition that the fact that a domain name has been passively held does not prevent a finding of bad faith use, in a case where bad faith is alleged for reasons other than that out in paragraphs 4(b) of the Policy, the Panel would expect the Complainant to set out its reasoning in this respect and/or to cite any relevant WIPO Decisions that support this reasoning. The Panel of course recognises that the UDRP has been designed so that it is not an overly legalistic procedure, is not bound by concepts of precedent, and is accessible to persons who are not legally advised. However, this is not an excuse for a complainant not to properly argue his case; particularly where, as here, the complainant is legally advised.
6.27 However, subsequent to the Procedural Order No.1 in this case, the Claimant now alleges that paragraph 4(b)(i) applies. Paragraph 4(b)(i) states that the following is evidence of registration and use in bad faith:
"circumstances indicating that you have registered or you have 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name."
6.28 Further or alternatively the Complainant also contends that there is bad faith in this case because if the Respondent were to create a website there is a strong likelihood "that he will seek to attract internet users for commercial gain, by creating a likelihood of confusion in the complainant�s mark" contrary to paragraph 4(b)(iv).
6.29 The way that the Complainant formulates his argument in relation to paragraph 4(b)(iv) appears to the Panel to be somewhat confused. There is no credible evidence before the Panel that the Respondent has any intention of using the Domain Name in the manner contemplated by paragraph 4(b)(iv). Indeed, 3� years� non-use suggests that the Respondent has never had this intention. In such circumstances, to assert that if the Respondent used the Domain Name it would be activity that falls within paragraph 4(b)(iv) constitutes little more than hypothetical speculation of what the Respondent might do in future. This is not sufficient.
6.30 In the Panel�s opinion the most realistic interpretation of the actions of the Respondent is that he registered the Domain Name in the hope that he might be able to sell it at a significant profit to the Complainant or alternatively to someone who could use the Domain Name to his commercial advantage by engaging in the activity contemplated by paragraph 4(b)(iv) of the Policy.
6.31 The facts and circumstances that suggest this are as follows :
(a) The contents of the letter from the Respondent�s legal advisors dated June 18, 2003, which suggest that the Respondent�s interest in the Domain Name is as a businessman who wishes in some form to use the Domain Name commercially.
(b) The various circumstances of this case that suggest that the Domain Name was registered by the Respondent in the knowledge of the Complainant and with a view to registering a domain name that corresponded to the name of the Complainant. In particular:
(i) the registration of the Domain Name only 17 days after the Complainant�s debut at West Ham United;
(ii) the uncontested assertion in the Complaint that at the time of registration the Complainant was "very well known throughout the UK";
(iii) the fact that the address given by the Respondent is an address in the United Kingdom; and
(iv) the reason given for registration set out in the letter from the Respondent�s legal advisors dated June 18, 2003, which at the very least seems to imply such knowledge.
(c) The fact that the Respondent has not provided any evidence of its intention to use the Domain Name for a fan site as alleged in the said letter of June 18, 2003.
(d) The fact that the Respondent has not put the Domain Name to use in the 3� years it has been in his possession.
(e) The Respondent has not denied the Complainant�s allegation (albeit implicit rather than explicit) in paragraph 12.9 of the Complaint that the Respondent�s claimed intention to use the Domain Name for a fan site was false.
(f) The Respondent�s refusal to transfer the Domain Name "in exchange for administrative costs" to be found in the said letter of June 18, 2003.
(g) The Respondent has not denied this characterisation of his intention in registering the Domain Name, even though he was expressly given an opportunity to do so by Procedural Order No. 1.
6.32 Accordingly, the Panel finds that the Complainant has made out a credible and uncontradicted case to the effect that the Respondent has registered and used the Domain Name for the reasons identified within the scope of paragraph 4(b)(i) of the UDRP Policy and/or with the intention of selling the Domain Name to a person for use in a manner described in paragraph 4(b)(iv) of the UDRP Policy.
6.33 In light of these conclusions, the Panel finds that bad faith registration and use is made out in this case.
7. Decision
7.1 For all of the foregoing reasons, the Panel finds that the Complainant has sufficiently proved that:
7.1.1 the Domain Name is confusingly similar a trademark in which to the Complainant has rights;
7.1.2 the Respondent does not have any rights to or legitimate interest in the Domain Name; and
7.1.3 the Domain Name was registered and has been used in bad faith.
7.2 Therefore, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Matthew S. Harris
Sole Panelist
Dated: January 12, 2004
Full & Egal Universal Law Academy