Huw Marshall saw Wayne Rooney play for Everton FC youth team and then registered wayne.rooney.co.uk in April 2002. Huw said it was for a non commercial fan site, but Wayne disagreed.
Topic: Domain Names
Who: WIPO Arbitration and Mediation Centre and Nominet UK Resolution Service
When: October 2006
Huw Marshall, an actor, registered the following domain names: www.waynerooney.com and www.waynerooney.co.uk back in April 2002. Following complaints by Wayne Rooney and Stoneygate 48 Limited, Wayne Rooney's wholly owned company to which he has assigned his imaging rights, both the World Intellectual Property Organisation and Nominet have come to the decision that Marshall must transfer the domain name to Rooney and Stoneygate.
Marshall, an ardent Everton supporter, registered the domain names at the time when Wayne Rooney was still playing for Everton FC Youth Football team. In January 2003, he signed up as a professional player for Everton Football Club. His fate, as a household name, was sealed when he was scooped up by Manchester United in August 2004. While all of this was happening, Rooney had made an application to register "Wayne Rooney" as a Community Trade Mark (CTM). The application was made in December 2002 and the CTM was granted in 2004.
In July of this year, Rooney and his company lodged complaints against Marshall with a) Nominet, in respect of the .co.uk domain name; and b) WIPO, in respect of the .com domain name.
.co.uk – Nominet
Nominet provides a dispute resolution service, which is codified in its dispute resolution policy ("Nominet Policy"). As Marshall has a contractual relationship with Nominet, he is contractually bound to accept its decision. The matter was decided by an independent expert.
To successfully bring a claim, Rooney and Stoneygate would have to prove the following:
(1) they have rights in "wayne rooney" or other mark that is similar to it. For these purposes, "rights" include "rights enforceable under English law" but are not limited to such enforceable rights (2(a)(i) of the Nominet Policy); and
(2) Marshall's ownership of the domain name www.waynerooney.co.uk was as a result of an abusive registration (2(a)(ii) of the Nominet Policy).
The Nominet Policy contains a non-exhaustive list of factors that could lead to the conclusion that the registration is "abusive". One such factor is evidence that the domain name was registered in order to "block" Rooney and his company registering the same domain name.
Paragraph 4 of the Nominet Policy lists a number of ways in which Marshall could have demonstrated that the registration was not abusive. For example, if legitimate, non-commercial, or fair use of the domain name can be demonstrated.
In relation to point 1, Marshall argued that neither Rooney nor Stoneygate had rights in the name "Wayne Rooney" at the time when he made the registration. The CTM registration and even the CTM application post-date Marshall's registration of the domain name. Additionally, he argued that, at the time of the registration, Rooney's reputation was not extensive and, therefore, he would not have accrued sufficient goodwill to establish unregistered rights in the name. As a related point, he argued that Rooney was not a trader but an employee at the time of the domain name registration and, as such, would not have fulfilled the fourth element of passing-off, which requires the complainant to show that there was damage to her/his business.
The independent expert in this case appeared to sidestep all these issues and deemed them all irrelevant. As the Nominet Policy provides that "rights" are not limited to rights that are enforceable in the English courts, he found that, as this was Rooney's personal name, which he had been using since birth, Rooney had "rights" in the name for these purposes.
The independent expert came to the conclusion that the following two factors created a prima facie case that Marshall was guilty of registering the domain name for blocking purposes and, therefore, an abusive registration.
(a) Marshall registered the domain name after watching Rooney play, which shows that he had Rooney in mind when making the registration;
(b) Marshall failed to take any measures to develop the fan site and, yet, decided to retain the domain name even when, as a result of Rooney leaving Everton for Manchester, he decided to abandon the fan site project.
Marshall could have rebutted this finding by establishing that he had made legitimate non-commercial or fair use of the domain name. However, the independent expert found that Marshall failed to satisfy this claim because there has never been any site operating at the domain name.
.com – WIPO
WIPO also ordered Marshall to transfer the domain name, this time, www.waynerooney.com, to Rooney and Stoneygate. This matter was decided by WIPO's administrative panel. Under WIPO's Uniform Domain Name Dispute Resolution Policy ("WIPO Policy"), in order for Rooney's complain to succeed, he and Stoneygate would have to prove that:
(1) the domain name is identical or confusingly similar to a trademark or service mark in which Rooney and Stoneygate have rights;
(2) Marshall has no rights or legitimate interests in respect of the domain name; and
(3) Marshall had registered and was using the domain name in bad faith.
In relation to 1, there was no dispute that Rooney and Stoneygate have trade mark rights in the name "Wayne Rooney". Marshall once again argued that these trade mark rights should be ignored, as they did not exist at the time that Marshall registered the domain name. The panel, like the independent expert, dismissed this argument, but by using different reasoning. Instead, the panel quoted the following extract from the "WIPO Overview of WIPO Panel Views on Selected UDRP Questions".
"Registration of a domain name before a complainant acquired trademark rights in a name does not prevent a finding of identity or confusing similarity…However it can be difficult to prove that the domain name was registered in bad faith as it is difficult to show that the domain name was registered with a future trademark in mind".
Additionally, the panel was satisfied that at the date of the domain name registration, an English court would have "entertained a passing off action" based on Rooney's goodwill at the time. The panel stated that, for these purposes, goodwill need not have a national reach.
In respect of 2, Marshall argued that he had a legitimate interest in the domain name, as he was an ardent Everton fan and acquired the site in order to set up a fan site devoted to Rooney. The panel was not convinced by this argument. As Marshall could produce no evidence to support his assertion, the panel concluded that Marshall had no rights or legitimate interests in respect of the domain name.
This brings us to the question of whether or not Marshall registered the domain name in bad faith. Did Marshall register the domain name, a) knowing it to be Rooney's name and the name under which he was known in the profession; and b) intending to exploit it for commercial purposes?
Marshall explained that he had intended to create a "non-commercial" fan site, but the fan sites that he listed as examples were, in the panel's opinion, commercial sites. Consequently, the panel found that Marshall registered the domain name knowing Rooney's potential and the commercial benefit that could be derived from a site with the domain name "wayne rooney".
Accordingly the panel found for Rooney and Stoneygate.
Why this matters:
Both these bodies reached the same conclusion and both indicated that they found Marshall's story hard to swallow.
Would the decision have been any different if Marshall had developed a fan site? Would this have shown that he had legitimate interest in the domain name, or at least sufficient interest to rebut the "bad faith" argument? From these two decisions it appears that, if Marshall had derived any revenue from such sites, he would have faced the same fate.
Tom Cruise, the artist Bridget Riley and now Wayne Rooney have all successfully asserted their rights in domain names registered by third parties. These decisions act as a valuable reminder that, in registering the actual name of such individuals, even the savviest and most forward thinking cybersquatter could get caught out.