World Intellectual Property Organization

Cybersquatter or Innocent Fan? - The Wayne Rooney Domain Name Dispute

November 2006

Footballer Wayne Rooney (Photo Wikipedia)
Footballer Wayne Rooney (Photo Wikipedia)

In just seven years of operation, WIPO’s Arbitration and Mediation Center has dealt with 25,000 domain name disputes, and the cybersquatting phenomenon shows no sign of abating. So what happens in a typical case? In this article, WIPO Magazine takes a look at the decision in a case issued in October 2006, which was brought by England football star Wayne Rooney.1

The line-up

The respondent, a Welsh television actor who described himself as an ardent fan of Everton football club, had registered the domain name waynerooney.com together with waynerooney.co.uk in April 2002. At the time, Wayne Rooney was a promising but little known 16-year old player. Six months later, he scored a spectacular goal against Arsenal, making headlines as the youngest goal-scorer in the history of the Premiership.

The case was filed under the WIPO-initiated Uniform Domain Name Dispute Resolution Policy (UDRP) by Wayne Rooney and his management company, which owns a trademark for the words Wayne Rooney published in August 2004. The disputed domain name was being used to connect to a directory run by the service provider, from whom the complainants assumed the respondent was deriving income.

The defense

The respondent denied the allegations. He argued that his domain name pre-dated Rooney’s trademark, and that no unregistered rights existed in 2002 when Rooney was only known locally. He stated that he had registered the name in good faith after watching Rooney play, with the intention of setting up a non-commercial fan site. But, said he, he had never got around to doing so, because he lacked the necessary know-how and was busy with his acting career. After Rooney "betrayed" Everton by moving to Manchester United in August 2004, the respondent explained that he had lost interest. He said that he had not known that the domain name had been linked to a commercial directory until he received the complaint, at which point he had requested that the link be removed.

Referee

WIPO appointed Mr. Tony Willoughby, a London based IP practitioner, to decide the case.

How did the panel decide? First, on the claim that the domain name pre-dated Rooney’s registered trademark, the panel referred to the Overview of WIPO Panel Views on Selected UDRP Questions,2 which states that registering a domain name before a complainant acquires rights does not preclude the finding of trademark rights in a UDRP case.

Had Rooney acquired sufficient reputation, or "goodwill," by April 2002 to amount to unregistered trademark rights in his name? Yes, concluded the panel, noting that, while not yet having acquired national fame, Rooney was already well-known in the Liverpool area, featuring regularly, for example, in Liverpool Echo headlines such as "No Rest for Blues Hotshot Rooney."

Had the respondent registered the domain name in bad faith for commercial gain? The panel deemed the respondent’s account of his "legitimate rights" in the domain name as an ardent fan "difficult to swallow." Without any knowledge of web design, the panel noted, he claimed to have developed an urge to register two domain names in order to create a fan site for a little known 16-year old footballer, but then had done nothing to further this intention. The panel visited the two fan sites that the respondent had cited as examples of what he had intended to do with his Rooney domain. Both were commercial sites.

The panel concluded that the respondent had anticipated that Wayne Rooney would become hot property and had registered the domain names in the hope of extracting commercial benefit. This constituted a registration in bad faith, regardless of the fact that he had never got around to using the domain name. The panel ordered that the domain name be transferred to Wayne Rooney and his management company.

 
By Sylvie Castonguay and Elizabeth March, WIPO Editorial Staff; Acknowledgements: Erik Wilbers, WIPO Arbitration and Mediation Center
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