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 in the process of designing an official website to further promote MICHAEL OWEN. The registration by the Respondent prevents the Complainants from registering the Mark as a “.com” gTLD. The Complainants submit that the registration of the domain names, regardless of the use being put to them, constitutes a blocking registration against MICHAEL OWEN in which the Complainants have demonstrated they have both registered and unregistered rights.
In addition to the domain names the Respondent is also the registrant of the domain name . The Respondent has no apparent rights in Sir Clive Woodward’s name. The Complainants submit that the Respondent is engaged in a pattern of registrations of domain names which correspond to the names of well known sportsmen, and the disputed domain names are part of that pattern. The Complainants submit that the Respondent registered the domain names to prevent the Complainants as the owners of the Mark, from reflecting the Mark in a corresponding domain name and is engaged in a pattern of such conduct. In doing so the Respondent has acted in bad faith.
B. Respondent
The registrations of the disputed domain names pre-date the Complainants’ trade mark registration of MICHAEL OWEN.
The Respondent claims further, as registered trade marks are limited territorially, a UK registered trade mark only gives rights to the owner in the UK, while any “.com” domain indicates a world wide positioning.
There are many high profile people in the world with the name Michael Owen. The Respondent submits that if the Respondent had registered the domain name or , that would have had a more certain affinity with anyone in the UK with the name Michael Owen or a UK registered trade mark.
The Respondent has found no domain name containing MICHAEL OWEN registered by the Complainants. The Respondent submits that would suggest that the Complainants had never until now intended to register any domain name on their own behalf. That being the case the Respondent suggests that they should choose one of the remaining available domains.
The Respondent submits that it had the right to register, and still have the right to continue to own, the disputed domain names. The disputed domain names were registered for future projects, not primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations. The disputed domain names were further not registered in order to prevent anyone from reflecting any mark in any corresponding domain name. This is demonstrably so as no trade mark had been applied for or registered by the Complainant when the domains were registered by me almost six years ago.
The Respondent emphasizes that the re-direction at the disputed domain names were immediately disabled when the Respondent was informed that the Complainants were unhappy with the redirection. Further, the Respondent apologized for this to the Complainants. The Respondent also gave an assurance to the Complainants in writing that the Respondent would never redirect the disputed domain names to any site which might cause to upset or offence the Complainants, and offered to undertake to gain the Complainants’ clearance for any future project in connection with the disputed domain names. This offer was rejected out of hand.
The Respondent refuses the alleged pattern of conduct, in particular the alleged behavior in connection with the registration of . The Respondent emphasizes that he has registered different domain names for future use.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant Michael Owen is a well known football player with a significant reputation and goodwill in the name MICHAEL OWEN. He also is the owner of a trade mark registration for MICHAEL OWEN.
The Panel emphasizes that the Policy does not require that the Complainants’ trade mark is registered by a government authority or agency for such a right to exist. In this respect, the Panel refers to earlier WIPO UDRP decisions on unregistered trade marks.
The Panel thus finds that the Complainants have trade mark rights in the name MICHAEL OWEN. The Panel also notes, although this is more relevant in the context of the third element, that the trade mark rights pre-dates Respondent’s registration of the disputed domain names.
The disputed domain names are identical to the Complainants’ MICHAEL OWEN mark, save for the “.com” generic top-level domain, and the hyphen inserted between “MICHAEL” and “OWEN” in one of the disputed domain names. These minor differences do not serve to distinguish the disputed domain names from the Complainant’s trade mark. The disputed domain names are virtually identical to the Complainants’ mark, and the Panel therefore finds that the requirement of confusing similarity between the domain name at issue and the Complainants’ trade mark is fulfilled.
B. Rights or Legitimate Interests
Michael Owen’s widespread fame preceded the Respondent’s registration of the disputed domain names, and Respondent has previously connected the domain names at issue to a website titled “The Michael Owen Football Page”. These facts are clear indications that the Respondent selected the disputed domain names because of Michael�Owens’s fame and not because of other persons with the same name.
Moreover, a review of factors noted by prior cases and the Policy as indicative of a Respondent’s rights and legitimate interests show the Respondent’s lack of other rights or interests in the disputed domain names. The Respondent has not used or shown any “demonstrable preparations to use the domain name[s] or a name corresponding to the domain name[s] in connection with a bona fide offering of goods or services”, cf the Policy 4(c)(i). Nothing about the content of the websites maintained at disputed domain names suggests otherwise, neither the Survey which the Respondent is proposing to conduct regarding common names.
Similarly, the Respondent has not shown that the Respondent or its business “has been commonly known by” the disputed domain names, cf the Policy 4(c)(ii).
The Complainants did not grant permission to the Respondent to register the disputed domain names, nor did the Complainants and the Respondent have any sort of pre-dispute commercial or other relationship, cf Julia Fiona Roberts, WIPO Case No. D2000-0210, section 6.
On this background, the Panel finds that the Respondent has not demonstrated any of the circumstances that constitute rights to or legitimate interests in the domain names at issue pursuant to the Policy. Further, the Panel finds that the Respondent has in no other way demonstrated rights to or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
The Panel does not find it proven that the Respondent has engaged in a pattern of registering domain names in order to prevent the owner of the trade mark from reflecting the mark in corresponding domain names.
However, as a result of the worldwide fame of Michael Owen, the Panel finds it inconceivable that Respondent should not have been aware of Michael Owen when registering the domain names at issue and therefore the Respondent could not have been unaware that the registration of the disputed domain names would infringe upon the Complainants’ rights.
The website resolving to the domain names at issue has redirected to a website entitled “The Michael Owen Football Page” which advertised a number of sports related websites offering products for sale. The registration and use of the disputed domain names thus appears to be an attempt to attract for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with the Complainants’ mark. This is evidence of bad faith registration and use pursuant to the Policy, paragraph 4(b)(iii).
Accordingly, the Panel finds that the Respondent has registered and used the Domain Names in bad faith.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, and be transferred to the Complainants.
Peter G. Nitter
Sole Panelist
Dated: March 21, 2006
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