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Arbitration and Mediation Center
Joe Cole v. Dave Skipper
Case No. D2003-0843
1. The Parties
The Complainant is Joe Cole of Gidea Park, Essex, United Kingdom of Great Britain and Northern Ireland, represented by Mishcon de Reya, solicitors.
The Respondent is Dave Skipper of Latton Bush Business Centre, Southern Way, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <joecole.com> (the "Domain Name") is registered with Network Solutions, Inc. (the "Registrar").
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 24, 2003. On October 24, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name at issue. On October 28, 2003, the Registrar transmitted by email to the Center its verification response confirming that the Respondent was listed as the registrant and providing the contact details for the administrative, billing, and technical contacts.
3.2 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").
3.3 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 October 29, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was November 18, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of his default on November 19, 2003.
3.4 The Center appointed Matthew S. Harris as the Sole Panelist in this matter on December 8, 2003, (the "Panel"). 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 paragraph 7 of the Rules.
3.5 On December 22, 2003, the Panel issued a procedural order in this matter (Procedural Order No. 1). Procedural Order No.1 recorded the fact that the Panel had reached the preliminary view that the facts identified in the Complaint were sufficient to constitute a prima facie case to the effect that the Respondent has registered and used the Domain Name primarily for the purpose identified within the scope of paragraph 4(b)(i) of the UDRP Policy and/or with the intention of selling the domain name to a person for use in a manner described in paragraph 4(b)(iv) of the UDRP Policy. Given that no allegation to this effect was recorded in the Complaint, Procedural Order No. 1 invited both parties to submit such further statements, documents or evidence as they might consider appropriate in relation to this issue by no later than January 5, 2004. The Panel also postponed issuing a decision in this proceeding until January 15, 2004.
3.6 On December 30, 2003, Mishcon de Reya, the Complainant’s legal advisers, sought an extension of time in which to submit further material. By email of the same date the Panel granted an extension until 5:30pm GMT on January 7, 2004.
3.7 On January 6, 2004, the Complainant submitted a further submission in accordance with Procedural Order No. 1. No submission or document was submitted by the Respondent.
4. Factual Background
4.1 The Complainant is a well-known English football player and English national currently residing in the United Kingdom.
4.2 The Complainant began his career at the London Premiership Football Club West Ham United, and made his debut on January 2, 1999. The Complainant has provided several online newspaper articles evidencing the media attention surrounding this debut.
4.3 The Respondent registered <joecole.com> on January 19, 1999.
4.4 The Complainant is the owner of a United Kingdom trademark registration (No. 2271980) dated June 6, 2001, in various classes for the JOE COLE mark, as a device only mark in the form of the Complainant’s signature.
4.5 Legal advisers to the Complainant wrote to Valentine & Co., liquidators for a company named Chocolate Technology Limited, which was listed in the WHOIS database as the Respondent’s "care of" contact, on May 7, 2003. The Complainant ascertained from this correspondence that the Respondent was the owner of the Domain Name.
4.6 The Complainant’s lawyers wrote to the Respondent on June 10, 2003, and requested that the Respondent transfer the Domain Name to the Complainant.
4.7 The Respondent’s lawyers replied on June 18, 2003, stating that their "clients" acquired domain names to develop them into active websites, and were not prepared to transfer the Domain Name to the Complainant in exchange for administrative costs.
4.8 The Complainant’s legal advisers wrote to the Respondent’s solicitors again on July 9, 2003, and requested the transfer of the Domain Name. The Complainant received no response to that letter.
4.9 As at the date of this decision, the Domain Name, when accessed, resolves to a "Page Not Found" message and a statement that the page is "Powered by Zeus Web Server."
5. Parties’ Contentions
5.1 The Complainant asserted in its Complaint as follows:
(a) The Domain Name is virtually identical or confusingly similar to the JOE COLE mark, save for the fact that the trademark is in the stylised form of Joe Cole’s signature.
(b) The Complainant has become famous throughout the United Kingdom and as a result the name "Joe Cole" has acquired a secondary meaning such that the public associates the Complainant’s services as a footballer with the name Joe Cole. The Complainant has therefore acquired common-law rights in his name.
(c) The Respondent has not received a licence or consent to use the JOE COLE trademark or common law rights in any manner, and accordingly has no legitimate interest in respect of the Domain Name.
(d) The Respondent asserts that the Domain Name is intended to be used as a Joe Cole website but has not made any use of the Domain Name since it was registered on January 19, 1999.
(e) The Respondent has no rights or legitimate interests in respect of the Domain Name and at the time the Respondent registered the Domain Name the Complainant was very well known throughout the UK as a talented footballer.
(f) Accordingly, the Respondent has registered and used the Domain Name in bad faith.
5.2 In support of its assertion of bad faith, the Complainant relied upon the
decision in Helen Fielding v. Anthony Corbert aka Anthony Corbett, WIPO
Case No. D2000-1000.
5.3 The Complainant subsequently asserted that in its submission dated January 6, 2004, that:
(a) "the Respondent registered the Domain Name because he knew at the date of registration that the Complainant was a rising star in British football. He never had any intention of using the Domain Name as a fan site or otherwise, but intended to sell it to the Complainant for a financial profit." and that therefore paragraph 4(b)(i) of the UDRP Policy applied; and
(b) "if [the Respondent] intends to create a website there is a strong likelihood that he will seek to attract internet users for commercial gain, by creating a likelihood of confusion with the complainant’s mark" which is contrary to paragraph 4(b)(iv) of the UDRP Policy.
5.4 The Complainant requests that the Panel issue a decision that the Domain Name be transferred to the Complainant.
5.5 The Respondent has made no formal substantive reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 The Panel has reviewed the Complaint together with its annexures. In the light of this material, the Panel finds as set out below.
6.2 This Panel does not find there are any exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel determining the Complaint. Details of these proceedings have been served in accordance with the relevant requirements set out in the Rules.
6.3 It is incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. However, under paragraph 5(e) if the Respondent does not submit a response and in the absence of exceptional circumstances, "the Panel shall decide the dispute based upon the Complaint." Further, under paragraph 14 of the Rules where a party does not comply with any provision of the Rules, the panel "shall draw such inferences therefrom as it considers appropriate."
Identical or Confusingly Similar
6.4 Under paragraph 4(a)(i) of the Policy, the
Complainant must show that the Domain Name is identical or confusingly similar
to a trademark in which it has rights.
6.5 The Complainant relies upon a United Kingdom registered device only trademark
for JOE COLE (No. 2271980). The priority date for this mark is June 6, 2001,
which post-dates the date of the registration of the Domain Name.
6.6 There are a large number of decisions in which a complaint that relied
upon a trade mark that post-dated registration of the relevant domain name has
failed. These include Mr. Severiano Ballesteros Sota, Fairway, S.A. and Amen
Corner S.A. v. Patrick Waldron, WIPO Case
No. D2001-0351. Where in the Policy is the rationale for this approach to
be found? One possibility is that the words "at the time of registration"
are to be implied at the end of paragraph 4(a)(i); i.e. to say that the relevant
trade mark rights must exist at the time that the domain name is registered.
Another approach is to accept that there is no such time restraint in paragraph
4(a)(i), but to say that the fact that a trade mark did not exist at the time
of the domain name’s registration is a factor to be taken into account on the
issue of bad faith. The latter approach is one that has been followed in a number
of UDRP cases including, for example, the recent decision of MADRID 2012,
S.A v Scott Martin-MadridMan Websites, WIPO Case
6.7 In many (if not most) cases, this difference in approach will make no difference to the outcome of a decision. But in some cases it may be vital. Take for example, the following hypothetical situation. A business announces to the world that it intends to use some new name in connection with its business or one of its products but has not yet obtained a registered trade mark in respect of that new name and has no other rights that constitute a trade mark for the purposes of paragraph 4(a)(i) of the Policy. A registrant, because he heard that announcement, decides to register that name (or something confusingly similar to that name) as a domain name. In such a case, if the existence of rights at the time of registration is a requirement, the business has no recourse under the Policy. If this is merely a factor to be taken into account on the question of bad faith, a remedy may still be available.
6.8 However, it is not necessary to consider these issues further in this case since the Complainant does not just rely on a registered trademark. He also relies upon "common law rights" in the name "Joe Cole".
6.9 It is now clear under the Policy that "common law rights" suffice
for the purposes of establishing the relevant trademark rights of the Complainant
pursuant to paragraph 4(a)(i) of the Policy. The Panel refers in this respect
to the decision in Louis de Bernieres v. Old Barn Studios Limited, WIPO
Case No. D2001-0122 and the decision of this Panel in Sibyl Avery
Jackson v. Jan Teluch, WIPO Case No. D2002-1180.
6.10 Has the Complainant in this case brought sufficient evidence before the Panel to establish such rights as at the date of registration of the Domain Name? While the evidence submitted by the Complainant is brief, amounting to 6 articles from the online archive of The Sun newspaper (a UK national newspaper), it is nevertheless sufficient to show that even at the time of the Complainant’s debut in early January 1999, he already had a reputation as a "sensation" and a "rising star."
6.11 There have been a number of WIPO decisions involving professional footballers
made by the panel (including Francesco Totti v. Jello Master, WIPO
Case No. D2002-0134 and Pierre van Hooijdonk v. S.B. Tait, WIPO
Case No. D2000-1068) in which sufficient common law rights were held to
exist. These cases have concerned complainants with arguably more established
reputations in the footballing arena than the Complainant had at the time of
the registration of the Domain Name. However, the Panel is satisfied that the
Complainant has in this case put forward a prima facie case that at the
time of registration he had common law rights in his name that are recognised
under the UDRP.
6.12 The Panel also finds that the Domain Name is identical to the Complainant’s
common law rights. The existence of the ".com" suffix, the absence
of a space between the two words "Joe" and "Cole," and the
use of lower case characters in the Domain Name do not in this case serve to
alter this finding.
6.13 Accordingly, the Panel concludes that the Complainant has proved the relevant
elements of paragraph 4(a)(i) of the Policy.
Rights or Legitimate Interests
6.14 Under Paragraph 4(a)(ii) of the Policy, the Complainant must show that
the Respondent has no rights or legitimate interests in the Domain Name.
6.15 It appears clear that the Complainant has not licensed or otherwise authorised
the Respondent to use the JOE COLE mark.
6.16 However, whilst the Respondent has not submitted a response to the Complaint,
his legal advisors indicated in a letter to the solicitors to the Complainant
dated June 18, 2003, that his clients were:
"businessmen who acquire domains to develop them into active websites.
They are presently in the process of developing this domain [i.e. <joecole.com>]
into a fan site for Joe Cole."
and that arbitration panels have consistently held that fan sites are a legitimate
use of a domain and of a person’s name.
6.17 Paragraph 4(c) of the Policy sets out certain circumstances in which a
respondent may demonstrate rights or legitimate interests in the Domain Name.
(i) use of, or demonstrable preparation to use, the domain name or a name corresponding
to the domain name with a bona fide offering of goods or services (paragraph 4(c)(i));
(ii) the respondent has been commonly known by the domain name, even if the
respondent has required no trademark or service mark rights (paragraph 4(c)(ii));
(iii) a legitimate non commercial or fair use of the domain name, without intent
for commercial gain to misleadingly divert consumers or to tarnish the trademark
or service mark issues (paragraph 4(c)(iii)).
6.18 Only paragraphs 4(c)(i) or 4(c)(iii) are potentially of relevance
to this case. Paragraph 4(c)(i) can be easily dismissed in this instance.
Paragraph 4(c)(i) requires either use or "demonstrable preparation
to use." A mere ascertain in a letter of an intention to develop a fan
site for commercial purposes without further explanation or evidence, is not
6.19 What about paragraph 4(c)(iii)? In Helen Fielding v. Anthony Corbert
aka Anthony Corbett, WIPO Case No. D2000-1000,
the panel accepted that use of a domain name to establish a fan site might
fall under heading 4(c)(iii) of the Policy. However, the panel went on
to hold that heading 4(c)(iii) did not apply where a respondent had stated
this was his intention and yet had not so used the domain name in the two years
that had passed since registration. The reasoning behind that decision was that
the words "making a legitimate non commercial or fair use"
were to be interpreted narrowly so as not to include the holding of the domain
name over for two years even if there was a genuine intention to subsequently
use the domain name for the purposes of a fan site.
6.20 If this reasoning is applied to the current case, heading 4(c)(iii)
would not be satisfied. The Respondent has had over 3 Ѕ years in which to develop
the alleged website and has not done so. However, the Panel does not need to
decide this issue in this way. Heading 4(c)(iii) can be discounted for
somewhat simpler reasons. The Respondent’s lawyers claim that the Respondent
is a business man who has registered that domain name to develop the domain
name into a fan site. For reasons that are explained in greater detail later
in this decision in the context of the question of bad faith, the Panel does
not accept that the real reason for the registration of the Domain Name was
for use in connection with a fan site. However, even if this were the Respondent’s
intention, the clear and obvious inference from this statement is that any use
of the Domain Name by the Respondent would be for commercial gain. Therefore,
the Panel holds that 4(c)(iii) does not apply.
6.21 In the circumstances, the Panel is satisfied that the Complainant has
established a prima facie case that the Respondent has no rights
or legitimate interest in the Domain Name. In the absence of any evidence to
the contrary, the Panel is entitled to find, and does so, that the Respondent
does not have any rights to or legitimate interest in the Domain Name.
Registered and Used in Bad Faith
6.22 Paragraph 4(a)(iii) of the Policy requires that the Domain Name was
registered by the Respondent, and has been used, in bad faith.
6.23 A non-exclusive list of circumstances constituting evidence of bad faith
for the purposes of paragraph 4(a)(iii) are set out in paragraph 4(b)
of the Policy. Initially, the Complainant did not rely on any of these circumstances
in this case. Of course, since the list in paragraph 4(b) is non-exclusive,
this is not necessarily fatal to the Complainant’s case. What then were the
Complainant’s grounds for alleging bad faith in this case?
6.24 Firstly, he asserted that UDRP panels have found the non-use of a domain
name amounts to bad faith use and cited the decision in Helen Fielding v.
Anthony Corbert aka Anthony Corbett, WIPO
Case No. D2000-1000. Next, he claimed as follows:
"holding of a domain name in these circumstances amounts to bad faith
use due to the fact that the Complainant’s registered and unregistered marks
have a strong reputation and are well known. The fact that the Respondent has
failed to provide credible evidence of any actual or contemplated good faith
use is further evidence that the domain was registered in bad faith."
6.25 For the Complainant to present its case in this fashion is, to say the
least, somewhat unhelpful. Firstly, the decision in Helen Fielding v. Anthony
Corbert aka Anthony Corbett, WIPO Case
No. D2000-1000, is of limited relevance to the question of when bad
faith exists notwithstanding the fact that the factors set out in paragraph
4(b) are not alleged. In Helen Fielding v. Anthony Corbert aka Anthony Corbett,
WIPO Case No. D2000-1000, the respondent
had offered to sell the domain name to the complainant and the circumstance
of the case were such that the panel were able to infer that the domain name
had been registered with the intention of selling it to the complainant for
valuable consideration in excess of his out of pocket expenses. As such Helen
Fielding v. Anthony Corbert aka Anthony Corbett, WIPO
Case No. D2000-1000, is a case where paragraph 4(b)(i) of the Policy
had been made out.
6.26 Secondly, whilst the Panel fully accepts the proposition that the fact
that a domain name has been passively held does not prevent a finding of bad
faith use, in a case where bad faith is alleged for reasons other than that
out in paragraphs 4(b) of the Policy, the Panel would expect the Complainant
to set out its reasoning in this respect and/or to cite any relevant WIPO Decisions
that support this reasoning. The Panel of course recognises that the UDRP has
been designed so that it is not an overly legalistic procedure, is not bound
by concepts of precedent, and is accessible to persons who are not legally advised.
However, this is not an excuse for a complainant not to properly argue his case;
particularly where, as here, the complainant is legally advised.
6.27 However, subsequent to the Procedural Order No.1 in this case, the Claimant
now alleges that paragraph 4(b)(i) applies. Paragraph 4(b)(i) states
that the following is evidence of registration and use in bad faith:
"circumstances indicating that you have registered or you have acquired
the domain name primarily for the purpose of selling, renting, or otherwise
transferring the domain name registration to the complainant who is the owner
of the trademark or service mark or to a competitor of that complainant, for
valuable consideration in excess of your documented out-of-pocket costs directly
related to the domain name."
6.28 Further or alternatively the Complainant also contends that there is bad
faith in this case because if the Respondent were to create a website there
is a strong likelihood "that he will seek to attract internet users for
commercial gain, by creating a likelihood of confusion in the complainant’s
mark" contrary to paragraph 4(b)(iv).
6.29 The way that the Complainant formulates his argument in relation to paragraph
4(b)(iv) appears to the Panel to be somewhat confused. There is no credible
evidence before the Panel that the Respondent has any intention of using the
Domain Name in the manner contemplated by paragraph 4(b)(iv). Indeed, 3Ѕ years’
non-use suggests that the Respondent has never had this intention. In such circumstances,
to assert that if the Respondent used the Domain Name it would be activity
that falls within paragraph 4(b)(iv) constitutes little more than hypothetical
speculation of what the Respondent might do in future. This is not sufficient.
6.30 In the Panel’s opinion the most realistic interpretation of the actions
of the Respondent is that he registered the Domain Name in the hope that he
might be able to sell it at a significant profit to the Complainant or alternatively
to someone who could use the Domain Name to his commercial advantage by engaging
in the activity contemplated by paragraph 4(b)(iv) of the Policy.
6.31 The facts and circumstances that suggest this are as follows :
(a) The contents of the letter from the Respondent’s legal advisors dated June 18, 2003,
which suggest that the Respondent’s interest in the Domain Name is as a businessman
who wishes in some form to use the Domain Name commercially.
(b) The various circumstances of this case that suggest that the Domain Name
was registered by the Respondent in the knowledge of the Complainant and with
a view to registering a domain name that corresponded to the name of the Complainant.
(i) the registration of the Domain Name only 17 days after the Complainant’s
debut at West Ham United;
(ii) the uncontested assertion in the Complaint that at the time of registration
the Complainant was "very well known throughout the UK";
(iii) the fact that the address given by the Respondent is an address in the
United Kingdom; and
(iv) the reason given for registration set out in the letter from the Respondent’s
legal advisors dated June 18, 2003, which at the very least seems
to imply such knowledge.
(c) The fact that the Respondent has not provided any evidence of its intention
to use the Domain Name for a fan site as alleged in the said letter of June 18, 2003.
(d) The fact that the Respondent has not put the Domain Name to use in the
3Ѕ years it has been in his possession.
(e) The Respondent has not denied the Complainant’s allegation (albeit implicit
rather than explicit) in paragraph 12.9 of the Complaint that the Respondent’s
claimed intention to use the Domain Name for a fan site was false.
(f) The Respondent’s refusal to transfer the Domain Name "in exchange
for administrative costs" to be found in the said letter of June 18, 2003.
(g) The Respondent has not denied this characterisation of his intention in
registering the Domain Name, even though he was expressly given an opportunity
to do so by Procedural Order No. 1.
6.32 Accordingly, the Panel finds that the Complainant has made out a credible
and uncontradicted case to the effect that the Respondent has registered and
used the Domain Name for the reasons identified within the scope of paragraph 4(b)(i)
of the UDRP Policy and/or with the intention of selling the Domain Name to a
person for use in a manner described in paragraph 4(b)(iv) of the UDRP
6.33 In light of these conclusions, the Panel finds that bad faith registration
and use is made out in this case.
7.1 For all of the foregoing reasons, the Panel finds that the Complainant
has sufficiently proved that:
7.1.1 the Domain Name is confusingly similar a trademark in which to the Complainant
7.1.2 the Respondent does not have any rights to or legitimate interest in
the Domain Name; and
7.1.3 the Domain Name was registered and has been used in bad faith.
7.2 Therefore, in accordance with Paragraphs 4(i) of the Policy and 15 of
the Rules, the Panel orders that the Domain Name <joecole.com> be transferred
to the Complainant.
Matthew S. Harris
Dated: January 12, 2004