Rooney 1; Procter & Gamble 1; Walmart 0

No, not the result of some bizarre three-way charity football match, but a tally of which well-known names have recently been successful or otherwise in domain name disputes before WIPO. The Rooney and P&G cases give a useful insight into how a Respondent’s activity after registering a domain name can be construed against him, and the Walmart case gives a detailed breakdown of how to decide whether a trade mark and a domain name are confusingly similar.

P&G took action to request the transfer of the domain name ariel.ch from Mr Ariel Hauser. P&G filed evidence of its rights in the mark ARIEL in Switzerland to prove that it was the proprietor of a “distinctive right” in that territory, and then had to prove that the domain name registration would infringe those rights. Under Swiss law, the mere registration of a domain name can infringe a trade mark, provided the trade mark is well known. P&G was able to prove that its mark was well known and that infringement would be found, and the two criteria for transfer of a domain name were therefore fulfilled.

The question of a domain name being the same as an individual’s name was also considered. Under Swiss law, the names of individuals are protected to a certain extent. However, the courts have found that the interest of a company’s well known mark in being easily found on the Internet is of greater importance than the right of an individual to use his last name as an internet address. The Panel therefore found that P&G had a higher interest than the respondent in using the ARIEL trade mark as a domain name. This was particularly the case here as the respondent had registered his first name as a domain name, but had then done nothing with the domain name for a period of five years.

The activities of the Respondent since he registered the domain name waynerooney.com were also found to be of vital importance. In this case, the Respondent had registered the domain name in 2002 when the well known footballer had started playing for Everton. According to the Respondent’s defence, he had bought the domain name with a view to setting up a non-commercial fan site dedicated to Wayne Rooney. However, he claimed to have changed his mind when Mr Rooney “defected” to Manchester United.

The criteria to be fulfilled when deciding a .com domain name dispute are as follows: (a) that the mark is identical or confusingly similar to a trade mark or unregistered right owned by the Complainant; (b) that the Respondent has no rights or legitimate interest in respect of the trade mark, and that (c) the domain name was registered and is being used in bad faith.

Mr Rooney clearly owned WAYNE ROONEY trade marks. However, these were not applied for until after the date of the domain name registration. The Panel found this to be immaterial, as the UDRP makes no reference to the date on which trade mark rights are acquired.

As to whether the Respondent had any right or legitimate interest in the domain name, the Respondent argued that his motivation to register the domain name for the purpose of setting up a fan site gave him a legitimate interest in it. The Panel was unconvinced, and found that as the Respondent took no action to set up the website after registration in April 2002, no legitimate interest had been demonstrated. The Panel drew attention to the section of the Policy which gives a non-exhaustive list of examples of how a Respondent can demonstrate legitimate interest in a domain name, one of which is to show that demonstrable preparations to use the domain name had been made.

With regard to the domain name having been registered and used in bad faith, the Panel revisited the question of the date upon which the trade mark was registered and common law rights acquired. In the normal course of events, a registration of a domain name cannot be in bad faith if it pre-dates the registration of a trade mark. However, this will NOT be the case if the respondent is clearly aware of the complainant. In that the Respondent had admitted seeing Mr Rooney play football for Everton and then proceeded to register two domain names incorporating his name, registration in bad faith was found.

The Panel also found, with regard to unregistered rights, that, at the time of registration, English courts would have found in favour of Mr Rooney in a passing off action.

As regards use in bad faith, the Panel found in favour of the Complainant. This was on the basis that it found the Respondent’s story to be a complete fabrication, and that it was therefore a short step to find that the Respondent’s purpose all along was abusive, and that his intent was to divert legitimate internet traffic from the Complainant to himself. Such an intent constitutes bad faith registration and use. The Panel found that the fact that the Respondent never got round to using the domain name was irrelevant.

This is an interesting concept and could indicate the possibility for trade mark owners to use a form of “pincer movement” against domain name owners. If a site is being used then such use will divert traffic and therefore constitute bad faith use. Conversely, if the site is not being used, then there may still be an ongoing intention to use, which would divert traffic, and as such be in bad faith.

The Walmart case did not consider the activities of the Respondent after the registration of the domain name boycottwalmart.com. The Panel was able to dismiss the claim on the basis that the Complainant’s trade marks and the domain name were not confusingly similar.

The Complainant argued that the addition of a derogatory phrase to a trade mark would always result in a domain name being found confusingly similar. The Panel disagreed with this view, stating that this was not always the case, but that the question to consider was whether consumers trying to access a website would be confused as to the owner and operator of the site, considering ONLY the domain name and the trade mark. The Panel reiterated the point that the content of the website was only relevant when considering other points, such as use in bad faith.

The Panel found that there was no confusing similarity between the domain name and the trade marks. Firstly, Walmart had not provided any evidence that its customers do not speak English, and they would therefore understand the word “boycott”, which is an ordinary English word and its understanding (unlike with the word “sucks”) is not dependent on understanding American slang. Secondly, the word “boycott” is used in this domain name as a suffix, rather than a prefix, and will therefore stick in consumers’ minds.

The Panel did indicate that the use of a derogatory prefix could be found confusingly similar if a Complainant could prove that its consumers would not understand the word, and would instead focus on its trade mark.

This case gives a clear discussion on the requirements for a finding of confusing similarity, and reminds us how not to be confused between the various sections of the UDRP when considering a request for transfer of a domain name.