The latest domain name dispute in the sporting arena to come before the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center (the Center), a UN specialized agency based in Geneva, Switzerland, involved the Manchester United and England footballer, Wayne Rooney, who was born in Liverpool in 1985. The domain name (internet address) in contention was waynerooney.com which was registered by the respondent in the case, a busy actor and ardent fan of Everton Football Club, with whom Rooney started his career as a fifteen year old in 2000, turning professional with them in 2003 and then moving on to 'ManU' the following year.
In order to win, Rooney had to prove that, under the provisions of the ICANNI Uniform Domain Name Dispute Resolution Policy (UDRP) (the Policy),Z approved on October 24, 1999 and administered by the Center, this was a case of so-called 'cybersquatting'.
Under the Policy, cybersquatting involves the abusive registration of a domain name and the complainant, in order to obtain the transfer or cancellation of the offending domain name, must establish that the domain name concerned is:
* identical or confusingly similar to a trademark of another;
* registered by a party who has no rights or legitimate interest in that domain name; and
* registered and used in bad faith (3).
For the complainant to succeed, all three of these conditions must be satisfied.
But, what, one may ask, is meant by the expression 'bad faith'? The Policy provides the following examples of acts, which prima facie may constitute evidence of bad faith:
* an intention to sell the domain name to the trademark owner or its competitor;
* an attempt to attract for financial gain internet users by creating confusion with the trademark of another;
* an intention to prevent the trademark owner from reflecting his trademark in a corresponding domain name; and
* an intention to disrupt the business of a competitor (4).
It should be noted that this list is not exhaustive, but merely illustrative of the kinds of situations that may fall within the concept of bad faith.
In practice, many of the disputes are not defended by the respondent to the complaint, and this fact, along with a failure to respond to any 'cease and desist' letter from the complainant issued before the WIPO proceedings were commenced, may constitute further evidence of bad faith on the part of the respondent. Likewise, the respondent may have been previously involved in registering disputed domain names that have been the subject of previous WIPO cases, in which those names have been found to be without legal justification and ordered to be transferred to the complainants. Again, this would constitute evidence of bad faith.
As also would registering a fanciful or bizarre name, which happened in the so-called Pepsi case (5). In that case, an Italian Company, with the name of "Partite Emozionanti Per Sportivi Italian", which, in translation, stands for "Leave the Histrionics for Italian Sports Fans", and known for short as "P.E.P.S.I.", registered 70 domain names incorporating the famous soft drink trademark PEPSI in relation to an extensive range of sports, including 'pepsicricket.com', 'pepsigolf.com', 'pepsisoccer.com', 'pepsirugby.net', 'pepsisuperbike. net' and 'pepsivolleyball.net'. The sole panelist in this case held that there was "opportunistic bad faith" because the domain names were so obviously connected with such a well-known product with which the respondent had no connection (6).
In the Rooney case, the domain name in contention had been registered before Rooney's trade mark rights in his name had 'matured' and this was one of the legal issues to be determined by the sole panelist appointed by the Center to decide the case. Likewise, in such circumstances, could the respondent be held to be acting in bad faith in registering and using the domain name? …