Both Nominet and WIPO have recently upheld complaints by footballer Wayne Rooney and Stoneygate 48 Limited, a company wholly owned by him, against the registration of the domain names waynerooney.co.uk and waynerooney.com (respectively), and ordered the transfer of the domain names to Stoneygate (which owns all the intellectual property rights in the Wayne Rooney name and image).
The respondent registered the domain names in April 2002, having recognised the potential of the then Everton Football Club youth team player. He intended to establish a non-commercial fan site under the domain name. The site was never established and the domain name led to an independent directory of sponsored links.
While Stoneygate owns a registered Community Trade Mark for the word mark WAYNE ROONEY covering various promotional goods, the application was not filed until December 2002 - after the sites were registered.
The two bodies each took a different approach to establishing the rights on which the action was based:
- The Nominet expert (adjudicating under the Nominet Dispute Resolution Service Policy) took a broad view of the complainants’ rights in the name and concluded that they had enforceable rights given that Wayne Rooney had been known by that name since birth, and that Stoneygate had been assigned the rights in the name. He followed previous Nominet expert decisions that took the view that the threshold to establish rights was not particularly high, and stated that the Policy contemplated rights in a name that were not enforceable under English law.
- The WIPO panel (adjudicating under the Universal Dispute Resolution Policy) concluded that the registration of a domain name before the complainant acquired trade mark rights in that name did not prevent a finding of identity or confusing similarity. In any event, it found that an English court would have been likely to consider that Mr Rooney had passing off rights in his name in the Liverpool area at the time of registration.
Each body found that the domain name should be transferred under their respective policies:
- The Nominet expert found that the respondent’s admissions that he registered the domain name with Mr Rooney in mind, the failure to take steps to develop the fan club and his decision to retain the registration regardless (which they considered to constitute "blocking"), were sufficient to create a prima facie case of an abusive registration.
- The WIPO Panel found that the respondent had not shown any rights or legitimate interest in the domain name. Further, as the respondent had registered the name in anticipation of the potential benefit that could be derived from a commercial website devoted to Mr Rooney (not accepting the claim that any use would be non-commercial, particularly as the fan sites he referred to in his evidence were commercial sites), this amounted to bad faith.
These two decisions provide an interesting comparison of the approaches of Nominet and WIPO. In particular, the Nominet expert took a wide approach to the issue of the complainants’ rights, and was willing to extend these beyond rights protected by passing off and trade mark law, while WIPO identified specific passing off rights in the name. Nevertheless, overall, both the Nominet expert and the Panel took a broad approach to each case in terms of both the identified rights and the conduct of the respondent.
As a result of these decisions, the ability of individuals to prevent others from maintaining unauthorised registrations of their name has been strengthened. However, such use may still be permitted if the website contains legitimate, non-commercial material, such as material criticising or praising the subject.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.