WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pierre van Hooijdonk v. S.B. Tait
Case No. D 2000 - 1068
1. The Parties
The Complainant in this administrative proceeding is Pierre van Hooijdonk a Dutch citizen, residing in Breda, The Netherlands having a postal address c/o Sport-Promotion B.V., Oosthaven, 39, 2801 PE Gouda, The Netherlands.
The Respondent is S.B. Tait of 403 Greengrairs Road, Airdrie, North Lanarkshire, M16 7 TE, United Kingdom.
2. The Domain Name and Registrar
The domain name in issue in these Administrative Proceedings is <pierrevanhooijdonk.com>. The Registrar with which the said domain name is registered is Easyspace Limited.
3. Procedural History
On August 15, 2000 the Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") in digital form and the hard copy was received on August 24, 2000.
On August 18, 2000 the Center sent an Acknowledgement of Receipt of Complaint to the authorized representative of the Complainant by e-mail.
On August 22, 2000 the Center sent a request for Registrar Verification to the Registrar by e-mail. On August 27, 2000 the Registrar responded to the Center by e-mail and stated that it was in receipt of the Complaint sent by the Complainant, confirmed that it is the registrar of the said domain name <pierrevanhooijdonk.com>, confirmed that the Respondent was at that time the registrant of the said domain name, provided details of the registrant, the administrative contact, the billing contact and the technical contact, confirmed that the Uniform Domain Name Dispute Resolution Policy ("the Policy") applied to the said registration, and that the said domain name is in "active" status but had "no services associated with it (no website, no email)"
The Center reviewed the said Complaint and noted that paragraph 15 of the Complaint did not comply with the requirements of paragraph one of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules").
On September 6, 2000 following an exchange of e-mails, copies of which were furnished to the Respondent, the Complainant filed an amendment to said paragraph 15 of the said Complaint in digital form. A hard copy of the said amendment was received by the Center on September 11, 2000. The Center acknowledged receipt of same by e-mail on September 11, 2000.
On September 25, 2000 the Center finalised its review and was satisfied that the amended Complaint complied with the Rules and the WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("the Supplemental Rules") and that the appropriate fees had been paid by the Complainant.
On September 25, 2000 the Center sent a Notification of Complaint and Commencement of Administrative Proceeding relating to the said domain name <pierrevanhooijdonk.com> to the Respondent by post/courier (with enclosures), by facsimile (Complaint without attachments and Amendment) and by e-mail (Complaint without attachments and Amendment). A copy of said Notification was sent to the authorised representative of the Complainant by e-mail. Further copies of said Notification were sent to the Internet Corporation for Assigned Names and Numbers ("ICANN") and to Easyspace Ltd., the Registrar of the <pierrevanhooijdonk.com> domain name (Complaint without attachments).
Said Notification of Complaint and Commencement of Administrative Proceeding inter alia advised the Respondent that the Administrative Proceedings had commenced on September 25, 2000 and that the Respondent was required to submit a Response to the Center on or before October 14, 2000.
The Respondent failed to submit a Response and on October 18, 2000 the Center sent a Notification of Respondent Default to the Respondent advising the Respondent that the consequences of said default included inter alia that the Center would proceed to appoint a single member Administrative Panel.
On October 19, 2000 the Center invited James Bridgeman to act as Administrative Panel in these proceedings.
On October 20, 2000, the Respondent sent a brief e-mail to the Center stating that he could not afford the costs of defending these Administrative Proceedings. (Further details of this submission is set out below).
On October 26, 2000, having received a Statement of Acceptance and Declaration of Impartiality from the said James Bridgeman the Center proceeded to appoint this Administrative Panel consisting of a single member. On the same date, the case file was transferred to the Administrative Panel.
In the view of the Administrative Panel, the proper procedures were followed and the panel was properly constituted.
4. Factual Background
The Complainant is a professional international soccer player and the proprietor of the Benelux trademark and service mark <PIERRE VAN HOOIJDONK> which he has registered on August 11, 2000 in classes 25, 28 and 35.
The Complainant has been a professional football player for many years and plays for the Benfica team in the highest division in Portugal. He has also played for the Dutch national team for many years. He has become well known internationally inter alia through his performances during the World Championships in France 1998, the European Championships in Belgium and The Netherlands 2000 ("Euro 2000").
There is little information about the Respondent, save that according to the Registrar's Whois database the Respondent has an address in North Lanarkshire, United Kingdom. According to the Complaint the said domain name was registered by the Respondent on April 23, 2000.
5. Parties’ Contentions
The Complainant submits that he has an established reputation as a world renowned Dutch soccer player for many years and that he is the proprietor of the trademark and/or service mark of the word <PIERRE VAN HOOIJDONK>. The Complainant has registered said trademark and service mark in the Benelux registry in classes 25, 28 and 35 in respect of goods and services being inter alia, articles of sports clothing, games and playthings, publicity services and recreational services. In support of this submission the Complainant has submitted a copy of the said trademark registration.
The Complainant further submits that he has built up a substantial reputation as a professional football player having played for the Dutch national team and the Benfica team of Portugal for many years. He claims that his reputation has grown further through his participation in the World Championships in France 1998, the European Championships in Belgium and The Netherlands 2000 ("Euro 2000") and many Champions League matches. The Complainant submits that these tournaments have been watched by hundreds of millions of people from all over the world. The Complainant has been the subject of much media attention and international recognition due to the success of the Dutch team in these tournaments and in Euro 2000, the Dutch team reached the final four.
The Complainant submits that the general public recognizes his trademark and proper name as being those of the world renowned Dutch soccer player and that a considerable goodwill is attached to his proper name and that he has acquired rights at common law. He further submits that ownership of an unregistered, or common law trademark is sufficient to establish his rights for the purposes of paragraph 4(a) (i) of the Policy. In support of this submission the Complainant submits that this principle has been established and accepted by the decisions of the administrative panels in
Steven Rattner v. BuyThisDomainName (John Pepin) WIPO Case No. D2000-0402;
Monty and Pat Roberts, INC v. Bill Keith, WIPO Case No. D2000-0299;
Jeannette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235;
Julia Fiona Roberts v. Russell Boyd WIPO Case No. D2000-0210.
The Complainant submits that his rights to the goodwill in his name is protected by the laws of the United Kingdom, the laws of the United States of America and Dutch law. In support of this submission the Complainant refers to the recent decision of the President of the Amsterdam District Court in Albert Heijn and 159 other plaintiffs v. Name Space, July 13, 2000. According to the Complainant this decision is not yet published but the Complainant has submitted an English language translation of the judgment of the Court, from which it appears that the Court decided in favour of the plaintiffs claim in summary proceedings and directed the transfer of approximately 300 domain names registered by Name Space. The Complainant submits that in that case the President of the District Court sustained the request to transfer all domain names that consisted of the trademarks, trade names and/or proper names of the plaintiffs to the plaintiffs concerned and quoted from the said judgment as follows:
"the contested use of the proper names of various plaintiffs must, in respect of these plaintiffs, be considered to be unlawful as they are now unable to register their proper names (or have their proper names registered) as domain names and are therefore unable to exploit these, causing them to suffer losses".
The Complainant submits that it is important for a world famous soccer player such as the Complainant to have presence on the Internet. It is submitted that if successful, the Complainant would intend to use said domain name as the address of a www site, in order, inter alia, to provide international visitors from all over the world with detailed information about the Complainant himself, his present club Benfica, the Dutch national team and upcoming tournaments such as the Champions League and the World Championships for national teams ("World Cup").
The Complainant submits that the <pierrevanhooijdonk> element of the said domain name <pierrevanhooijdonk.com> is identical to and/or confusingly similar with the Complainant’s registered trademark and/or service mark, common law trademark rights and his proper name. Therefore, the Respondent is infringing these rights.
As regards any rights or legitimate interest the Respondent may have in the said domain name, the Complainant submits that the Respondent has not in any way been commonly known by the domain name <pierrevanhooijdonk.com>. The Respondent does not use the domain name <pierrevanhooijdonk.com> as part of his legal name, corporate name or any commonly known means of identification and the Respondent has no trademark or service mark rights in the name. The Complainant has not licensed or otherwise permitted the Respondent to use his said trademark and/or said service mark, nor has the Complainant licensed or otherwise permitted the Respondent to apply for or use any domain name incorporating his trade mark and/or service mark. The Complainant states that the Respondent has no relationship with Complainant, neither did the Complainant give his permission to the Respondent to use his proper name in any way.
The Complainant further submits that the Respondent is not making a legitimate non-commercial or fair use of the said domain name. Instead, the Complainant submits that it clearly is the Respondent’s intention to prevent Complainant from registering the said domain name.
Furthermore, the Complainant states that the said domain name was registered by the Respondent with the Registrar on April 23, 2000 and by this time the Complainant was already a famous and well known soccer player. The Respondent should have known the proper name of the Complainant and the rights of the Complainant at the time he registered the said domain name <pierrevanhooijdonk.com>. The Complainant submits that the Respondent has no rights or legitimate interest in the said domain name <pierrevanhooijdonk.com>.
The Complainant submits that the said domain name <pierrevanhooijdonk.com> has been registered and is being used by the Respondent in bad faith.
The Complainant alleges that the Respondent has registered the said domain name <pierrevanhooijdonk.com> in order to prevent the Complainant, the owner of the said trademark and service mark, from reflecting the mark, being the Complainant's proper name, in a corresponding domain name. The Complainant alleges that this is especially damaging, since the Complainant has invested much time, effort and money in establishing his name as a trademark, which has resulted in the fact that a lot of goodwill is attached to this name and trademark.
The Complainant alleges that by using the said domain name, the Respondent creates a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the said domain name. It is further alleged that the public will be misled as to the origin and owner of the said domain name. People in search of the domain name of the Complainant, or people otherwise encountering said the domain name <pierrevanhooijdonk.com>, will believe it emanates from, is endorsed by, licensed by, approved by or otherwise associated with Complainant. The Complainanat therefore submits that the Respondent falsely suggests to the general public – including people working in or interested in soccer - that the entity owning the said domain name <pierrevanhooijdonk.com> is the Complainant or that the said domain name is in some way associated or connected with Complainant.
The Complainant submits that according to the administrative panel decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 circumstances of inaction (passive holding) other than those identified in paragraphs 4(b)(i), (ii) and (iii) may constitute a domain name being used in bad faith.
The Complainant submits that the Respondent is not actively using the said domain name as the address of a www site. On the web site www.pierrevanhooijdonk.com it is merely indicated that the said domain name is parked by the Registrar on behalf of the Respondent. The Complainant has submitted a print-out of the said posting in support of this allegation.
The Complainant argues, (unconvincingly it should be stated as there is no evidence of any steps having been taken by the Complainant himself in this regard), that due to the inaction on the part of the Respondent, people in search of the www site of the Complainant will not reach a www site of the Complainant and will blame the Complainant.
The Complainant further submits that the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the said domain name. The Respondent has not ceased his wrongful behavior despite Complainant’s repeated requests to cease and desist.
The Complainant further submits that any realistic use of the said domain name will misrepresent an association with the Complainant and his goodwill. It is not possible to conceive of any plausible actual or contemplated active use of the said domain name by the Respondent that would not be illegitimate, resulting in infringements of the trademark and/or service mark and/or common law trademark or service mark of the Complainant.
The Respondent did not file any Response as such, but did submit the following statement by e-mail to the Center on October 20, 2000: "I do not have the money to pay to defend. I think it is totally out of order that someone with lots of money can come along and take the domain name that that I paid for. All I have asked for is that if the other party pay my cost to date (payment for web design) then I would be willing to transfer the domain name to their client. They say that their client is world famous, I would dispute that very much. I may not be going about this in the proper manner but as I said before I can not afford to contact a lawyer and pay for his/her advice. Yours Sam B Tait."
6. Discussion and Findings
Paragraph 4(a) of the Policy places on the Complainant the onus of proving that:-
(i) the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the said domain name; and
(iii) the said domain name has been registered and is being used in bad faith.
The Complainant has established that he is the owner of the Benelux registered trademark and service mark, details of which are set out above. It is noted that this would appear to be a very recent registration. Furthermore the Complainant has submitted that he is a world renowned footballer with common law rights in the name <Pierre Van Hooijdonk>, although he has not submitted any evidence in support of this submission. The said domain name is clearly identical to the said registered trademark and servicemark save for the ".com" element in the domain name. This Administrative Panel is therefore satisfied that the said domain name is identical or confusingly similar to the said registered trademark and service mark in which the Complainant has rights.
Furthermore the Complainant has established a prima facie case that the Respondent has no rights or legitimate interest in the said domain name. It is clearly not the Respondent's name and the Respondent has not provided any information to suggest otherwise.
As regards the question of registration and use in bad faith, this Administrative Panel is satisfied that the Complainant has made out a prima facie case that the Respondent would have been aware of the Complainant and his reputation as an international football player at the time when the Respondent registered the said domain name.
The effect of the Respondent's registration is to deprive the Complainant of the ability to register his trademark and service mark as a domain name in the ".com" domain.
Furthermore the Respondent's non-use of the said domain, without any explanation, permits this Administrative Panel to infer that the Respondent has registered and is using said domain in bad faith.
In the circumstances outlined above and in the absence of any Response from the Respondent this Administrative Panel accepts the Complainants submissions that the Respondent has registered and is using said domain name in bad faith.
With specific reference to paragraphs 4(i) of the Policy and paragraph 15 of the Rules this Administrative Panel decides that the Respondent has registered the domain name <pierrevanhooijdonk.com> identical or confusingly similar to the Complainant's trademark and service mark, that the Respondent has no rights or legitimate interest in respect of that domain name and that the Respondent has registered and is using that domain name in bad faith. Accordingly, this Administrative Panel decides that said domain name <pierrevanhooijdonk.com> should be transferred to the Complainant.
Dated: November 4, 2000