WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aston Merrygold v. Martyn O’Brien
Case No. D2014-1462
1. The Parties
1.1 The Complainant is Aston Merrygold, care of Messrs Lee & Thompson of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Demys Limited, UK.
1.2 The Respondent is Martyn O’Brien of London, UK.
2. The Domain Name and Registrar
2.1 The disputed domain name <astonmerrygold.com> (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2014. On August 26, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. Also on August 26, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing contact details.
3.2 The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 September 5, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 25, 2014. The Respondent submitted an informal response in a form of an email to the Center on September 17, 2014.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on October 1, 2014. 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 the Rules, paragraph 7.
4. Factual Background
4.1 The Complainant is a British singer, dancer and television personality. His first paid appearance on British television was in 2002 when he appeared in “Stars in Their Eyes Kids”. In 2004 he appeared as the character “Cookie” in CITV’s “Fun Song Factory”. However, he most prominently came to public notice in 2008 as a member of the boy band JLS, which participated in the fifth series of the UK television series “The X Factor”. JLS went on to sell 6 million records in the UK and more than 10 million records worldwide. The band performed for the last time in December 2013. Since that date the Complainant has engaged in various solo show business activities
4.2 The Respondent would appear to be an individual based in the United Kingdom.
4.3 The Domain Name was registered on December 14, 2008, just a few hours after JLS were named the runners-up in “The X Factor”. At about the same time the Respondent registered the domain names <oritsewilliams.co.uk>, <oritsewilliams.com>, <marvinhumes.co.uk> and <marvinhumes.com>, which correspond to the names of other members of the band.
4.4 At the time of registration of the Domain Name, the Respondent was a director of RSite Limited, a company, registered in England and Wales with registration number 06002773. At some point subsequent to registration, the Domain Name was used to redirect Internet users to the url “www.geniefashion.co.uk”.
4.5 <geniefashion.co.uk> is a domain name that was (and despite the fact that RSite Limited was dissolved in September 2009, remains) registered in the name of RSite Limited. The website operating from the domain name <geniefashion.co.uk> in April 2009 offered t-shirts and other apparel for sale.
5. Parties’ Contentions
5.1 The Complainant contends that he has unregistered trade mark rights in the name “Aston Merrygold” and relies in this respect upon paragraph 1.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). The Complainant gives details of his show business activities since 2002 and both before and after his appearance as part of JLS on “The X-Factor”. He claims that by reason of those activities he has rights in his name under the English law of passing off which are recognised as trade mark rights under the Policy. He also claims that as it is “customary in cases under the Policy to disregard the generic top level of a domain name, in this case “.com” when comparing a trade mark and a domain name. In light of this he claims that the Domain Name is identical to his alleged trade mark rights.
5.2 So far as rights or legitimate interests are concerned, the Complainant refers to paragraph 2.1 of the WIPO Overview 2.0, which is said to record the fact that under the Policy if a complainant can make out a prima facie case that the respondent lacks rights or legitimate interests, the evidential burden on that issue is then said to shift to the respondent. The Complainant then goes on to contend that none of the examples of circumstances demonstrating rights or legitimate interests set out in paragraph 4(c) of the Policy apply.
5.3 So far as bad faith registration and use are concerned, the Complainant contends that the circumstances of registration are such that it is “undeniable that the Respondent had the Complainant’s rights in his ASTON MERRYGOLD mark in mind when the disputed domain name was registered”. Further, it is claimed that the Respondent’s subsequent use of the Domain Name, falls within the scope of paragraph 4(b)(iv) of the Policy.
5.4 No formal Response was filed but on September 17, 2014 the Respondent sent an email to the Center. It is convenient to reproduce the substance of that email in full below:
“I have looked through the solicitors extensive claims and see a lot of references that suggest that their client is a celebrity and has been so for many years. They go on to list a range of his activities and achievements.
If this is the case, then clearly their client had every opportunity to purchase this domain name for many years before it was registered and he or his representatives chose not to purchase it. Which was their decision.
The domain was originally registered in 2008, so if this was such an important domain name for them, then why is it that the only contact that they have made about this happened within the last few months?
They could have registered this domain name prior to 2008 and could have contacted me or previous owners at anytime in the last 6 years. So on balance there has been well over 10 years where they have shown absolutely no interest in the domain name.
Based on their own submissions, Mr Merrygold has had a very good and stable career without any issues from this domain name.
I would also like to point out that these solicitors contacted me only a short while ago in an aggressive and threatening manner, so much so that I was initially shocked by their emails and demands. It took me completely by surprise as I have never been contacted by anyone in this manner before.
However, I have tried to work with them, and have offered to meet with their client to discuss this issue but this was not replied to. I feel that their client has just decided to launch a solo career and as part of this he wants the domain name. This decision by him or his representatives should not (in my opinion) mean that they can claim a domain name that was freely available at the time of purchase some 6 years before this [so] called solo career has even begun.
If rich companies can form businesses and brands and then retrospectively claim a domain name that was purchased legally before they existed as an entity would be unfair as it would mean that anybody who owns a domain name would be put at risk and this would undermine the rights of the owners.
I hope that the WIPO agrees with me and finds that I have done nothing wrong and that this new solo career does not entitle the claimant to demand and take possession of a pre-existing domain name.”
6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the present dispute based upon the Complaint, notwithstanding the failure of any person to lodge a formal Response.
6.2 Notwithstanding this default, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (Policy, paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (Policy, paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
6.3 However, 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”.
A. Identical or Confusingly Similar
6.4 The Panel accepts the Complainant’s contention that the Complainant has unregistered trade mark rights at least in the form of rights under the English law of passing off in respect of the name “Aston Merrygold”. As paragraph 1.6 of the WIPO Overview 2.0, records:
“Personal names that have been registered as trademarks are generally protected under the UDRP. While the UDRP does not specifically protect personal names as such, in situations where a personal name unregistered as a trademark is being used for trade or commerce, the complainant may be able to establish common law or unregistered trademark rights in that name. In order to do so, proof of use of the person’s name as a distinctive identifier of goods or services offered under that name would normally be required [see also paragraph 1.7 below]. A trademark-equivalent basis has been found in the common law action of passing-off, which is generally intended to prevent the making of misrepresentations to the public in the context of trade, and which if established may provide grounds for reliance on a personal name for the purpose of the UDRP.”
6.5 Here the Complainant has clearly used his name as a distinctive identifier of his services inter alia as a performer since 2002. The date of assessment of whether a domain name is identical or confusingly similar to a trade mark in which a complainant has rights is the date of the commencement of proceedings (see WIPO Overview 2.0, paragraph 1.4). Further, insofar as the Respondent is claiming that the Complainant is somehow relying upon rights that did not exist at the date the Domain Name was registered, that claim is rejected. It is clear that the Complainant’s show business activities as an artist prior to that date were sufficient for the Complainant to have rights under the English law of passing off at that time. Further, the Complainant may well have had rights under the law of passing off by reason of his appearance as part of JLS on X-Factor alone. Although this activity was under the JLS banner, the Complainant was nevertheless publically participating in the band’s activities under his own name.
6.6 When it comes to comparing the trade mark relied upon and the domain name in dispute, the Panel accepts that many other panels disregard the generic Top-Level Domain. This Panel is not sure that this is the correct approach (see for example, Philip Morris USA Inc. v. Marlboro Beverages / Vivek Singh WIPO Case No. D2014-1398). However, whether this is the right approach (as is usually the case) makes no practical difference so far as the Domain Name is concerned. The most sensible reading of the Domain Name is as the name “Aston Merrygold” in combination with the “.com” generic top level domain. In the circumstances, the Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights. The Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.7 The Complainant claims that none of the examples of circumstances demonstrating rights or legitimate interests set out in paragraph 4(c) of the Policy apply and that it has therefore made out a prima facie case of no rights or legitimate interests and the evidential burden on this issue shifts to the Respondent. He rightly points out that this is an approach that is described as a consensus view of panelists at paragraph 2.1 of the WIPO Overview 2.0.
6.8 The Panel could decide the issue of rights or legitimate interest on this basis, but prefers to adopt a somewhat more direct approach. It is clear that in essence the Complainant is alleging that the Domain Name was registered and continues to be held by the Respondent so as to trade off the reputation of the Complainant in some manner either to the Respondent’s or some other entity’s commercial advantage. For the reasons that are set out under the heading “Registered and Used in Bad Faith” below the Panel accepts that this is correct. There is no legitimate interest in holding a domain name for such a purpose and there is no suggestion (and it is inherently improbable) that the Respondent holds any right in the name “Aston Merrygold” (or any other term that might be said to be incorporated into the Domain Name). In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.9 It is clear beyond any doubt from the timing of the registration of the Domain Name, the fact that the Respondent at the same time registered domain names that corresponded to other members of JLS and the fact that Aston Merrygold is of itself a relatively distinctive name, that the Domain Name was registered because of the Complainant’s appearance as part of JLS on the X-Factor television show.
6.10 Further the Panel accepts that the reason for doing this was to gain some form of commercial advantage for the Respondent or some other commercial entity with which he was involved. The Complainant contends that this advantage took the form or redirecting Internet users to a website of a company of which the Respondent was a director. The evidence here is somewhat patchy. The records provided from the Internet Archive show that there was redirection to the url “www.geniefashion.co.uk” as at April 8, 2010 and although a website appears to have operated from that url to promote the commercial activities of that company in April 2009, the company was dissolved a few months later in September 2009. Nevertheless, the Panel accepts that the obvious inference in these circumstances is that the redirection was also in place when the company was active. Further, the Respondent does not deny (either in his email or any formal Response) the Complainant’s claims that the Respondent intended to commercially exploit the name of the Complainant at the time of registration and that the Domain Name was subsequently used for that purpose.
6.11 Instead, the Respondent appears to maintain (although this is not entirely clear) that such registration and use was in some way legitimate, because at the time of registration the Complainant had no trade mark rights in his name because he had yet to pursue a solo career and, therefore, these proceedings constitute an attempt to “retrospectively claim a domain name that was purchased legally” prior to the existence of the rights relied upon. For the reasons that the Panel has set out under the heading “Identical or Confusingly Similar” above, the Panel does not accept this. The Complainant had “unregistered trade mark rights” in his name under the Policy at the time the Domain Name was registered.
6.12 Further, even if that conclusion as to the existence of unregistered trade mark rights at the time of registration is wrong, this would be unlikely to change the outcome in this case. As paragraph 3.1 of the WIPO Overview 2.0 records:
“In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This has been found to occur: shortly before or after a publicized merger between companies, but before any new trademark rights in the combined entity have arisen; or when the respondent (e.g., as a former employee or business partner, or other informed source) seeks to take advantage of any rights that may arise from the complainant's enterprises; or where the potential mark in question is the subject of substantial media attention (e.g., in connection with a widely anticipated product or service launch) of which the respondent is aware, and before the complainant is able to obtain registration of an applied-for trademark, the respondent registers the domain name in order to take advantage of the complainant's likely rights in that mark”
6.13 Here, if no trade mark rights existed at the time of registration, the Panel would hold that the Domain Name was registered with the specific intention of taking advantage of trade mark rights that would come into existence thereafter by reason of the Complainant’s involvement with JLS and other show business activities.
6.14 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <astonmerrygold.com> be transferred to the Complainant.
Matthew S. Harris
Date: October 7, 2014