Nominet UK Dispute Resolution Service

 


Nominet UK Dispute Resolution Service

DRS Number 03411

B E T W E E N:

MICHAEL JAMES OWEN

and

OWEN PROMOTIONS LIMITED

Complainants

- and -

ALLIANCE OF ENFIELD

Respondent

Decision of Independent Expert

1. Parties

Complainants: Michael James Owen and

Country: Great Britain

Respondent: Alliance of Enfield

Country: Great Britain

2. Domain Name

michaelowen.co.uk

3. Procedural Background

3.1.1 The Complaint, which is a complaint of Abusive Registration under the Dispute Resolution Procedure ("the DRS") of Nominet UK ("Nominet"), and is dated 3 February 2006, was posted by Nominet to the Respondent under cover of a letter dated 7 February 2006. The covering letter included the following paragraphs:-

"A copy of the complaint is attached to this letter, which is deemed to have been received by you on 8 February 2006 (please refer to paragraphs 2(a) and 2(e) of the Procedure).

In accordance with the Procedure, you have 15 working days, ie until 1 March 2006 to respond to the complaint. In order to be valid, your response must comply with the Procedure, and must be received by Nominet in both hard copy and electronic form."

3.1.2 The Respondent did not respond by 1 March 2006 or at all. In a letter dated 2 March 2006 Nominet wrote again to the Respondent, referring to the letter dated 7 February 2006 and to the failure of the Respondent to submit a response within the deadline, and communicating that in the circumstances, this dispute would not go through the Informal Mediation stage of the Dispute Resolution Service, but would be referred to an independent expert for a decision if Owens Promotions Ltd paid the appropriate fees by 16 March 2006 - a condition which was fulfilled.

3.1.3 Attempts by Nominet to communicate with the Respondent at postmaster@michaelowen.co.uk, and mick@windownet.co.uk resulted in Delivery Failure Reports.

3.1.4 By letter dated 15 March 2006 I was appointed, with effect on 22 March 2006, to provide a Decision under Nominet UK's Dispute Resolution Policy ("the Policy"). I am required to send my decision to Nominet no later than 5 April 2006.

3.1.5 I have been provided with the following materials:-

Dispute History

Complaint

Standard correspondence between Nominet and the parties

Non standard correspondence between Nominet and the parties.

Register entry for michaelowen.co.uk.

Nominet WHOIS query result for michaelowen.co.uk

Printout of website at www.michaelowen.co.uk

Copy of Nominet UK's Policy and Procedures.

4. Outstanding Formal Procedural Issues

4.1 There are no outstanding formal or procedural issues.

5. The Facts

5.1 The domain name was registered by the Respondent on 26 June 1998.

6. The Parties' Contentions

Complainant

6.1 The Complaint of Abusive Registration, which includes a statement of truth and is signed, is to the following effect:-

Introduction

6.1.1 Michael James Owen ("Michael Owen") is an internationally renowned English footballer. He currently plays for Newcastle United FC and has also famously played for Liverpool FC and Real Madrid. He has to date enjoyed a hugely successful and high profile career on both club and international level and was the European Footballer of the Year in 2001. Michael Owen's successful career and profile have led to his image rights becoming a valuable commodity in terms of advertising, endorsements and merchandising.

6.1.2 Owen Promotions Limited ("Owen Promotions") are responsible for the administration of Michael Owen's affairs. Michael Owen has assigned his rights to exploit his image, name, likeness and appearance to Owen Promotions. A copy of the assignment agreement is attached at Annex A.

The Respondent/Domain Name

6.1.3 According to the Nominet UK WHOIS database, the domain name www.michaelowen.co.uk ("the Domain Name") was registered to the Respondent on 26 June 1998, was last updated on 15 April 2005 and the current registration expired on 26 June 2006. A copy of the WHOIS query result is attached at Annex B.

6.1.4 The Complainants cannot find any record of the Respondent being an active limited company. The Complainants' solicitors have written to the Respondent at the postal address obtained from the WHOIS query and have received no response to this letter. A copy of the Complainants' solicitors' letter is attached at Annex C.

Rights in the Name and Mark

6.1.5 The Domain Name is identical to a name and mark in which the Complainants have rights. The Domain Name is Michael Owen's personal name and has been since birth. A copy of Michael Owen's passport is attached at Annex D.

Unregistered Rights

6.1.6 Michael Owen made his senior debut with Liverpool FC in May 1997. During his first full season with Liverpool (August 1997 - May 1998), Michael Owen was the Premier League's joint top scorer and was awarded the PFA Young Player of the Year Award.

6.1.7 Following his first full session Michael Owen began to use his name to generate income through contracts for the endorsement and advertisement of products. On 1 May 1998, Michael Owen entered into contract with Umbro and Tissot.

6.1.8 Owen Promotions was incorporated on 1 April 1998. Its first financial year was 30 April 1998 to 30 April 1999. During this first year Owen Promotions generated income of £1,088,142.00 from the exploitation of Michael Owen's image rights, whether by endorsements or otherwise.

6.1.9 Michael Owen's senior international career commenced on his debut in February 1998. Following good performances he was picked for the World Cup in France which commenced on 10 June 1998.

6.1.10 The 1998 World Cup tournament was Michael Owen's first major competition with the senior England team. Following an excellent performance at the World Cup, the goodwill attached to the Michael Owen name was significantly enhanced and its earnings potential greatly increased. In July 1998 Michael Owen signed a lucrative agreement with the 'News of the World' newspaper.

6.1.11 Over the course of Michael Owen's career, the goodwill attached to his name has increased as his status as a footballer has grown. This can be seen in the increase in the income earned by Owen Promotions in the exploitation of his image rights. In the year ended April 2004 Owen Promotions earned income of £2,453,669.00, this increased to £4,273,589.00 in the year ended April 2005.

6.1.12 Michael Owen now has a number of commercial partners and can command significant fees for offering the use of his image rights in endorsing products. The Complainants would expect a typical one year endorsement agreement to generate income of around £400,000. The name is used to endorse a number of products, including Umbro sports clothes and equipment, Tissot watches, Intel technology, Northern Rock Building Society, Jaguar Cars and MSN Internet Portals. Michael Owen has also developed a clothing range entitled 'Ten by Michael Owen', which is sold in Burton in the UK. The range will launch in Japan in 2006. The hard copy of a presentation prepared by Owen Promotions summarising the detail of Michael Owen's main endorsement arrangements is attached at Annex E.

Registered Rights

6.1.13 Michael Owen's significant profile and the goodwill attached to the name has been used to produce income since his first season in top flight football. In doing so the name has been used to produce income since his first season in top flight football. In doing so the name has developed rights as an unregistered trade mark protected in England and Wales by the law of passing-off, and in other territories by similar causes of action, Registered Rights.

6.1.14 Michael Owen is the proprietor of the trade mark UK No. 0916182528 - MICHAEL OWEN registered as of 22 August 2001 for a broad range of goods in classes 9, 16, 18, 25 and 28 (referred to in this complaint as "the Mark"). The application for the Mark was prepared and filed with the Patent Office on 20 August 1998. A copy of the results of a search of the Patent Office register is attached at Annex F. The search results evidence the Complainants' registered rights in the Mark.

6.1.15 The Domain Name is identical to the Mark in which the Complainants have established both registered and unregistered rights.

Abusive Registration

6.1.16 The Complainants submit the registration and continued use of the Domain Name by the Respondent is abusive and will rely on the following in support of their submission:-

Confusion of On-line Users

(a) Online users have been and will continue to be confused into believing the Domain Name is registered to, owned, operated, or authorised by, or otherwise connected to Michael Owen when this is not the case. The likelihood of confusion by online users of the Respondent's website is unavoidable due to the fact that the Domain Name is identical to the Mark.

(b) The Respondent's website contains five main links to websites which are stated to be "sponsored listings". There is a strong likelihood that online users will be confused into believing that the links are to websites endorsed by the Complainants. This is obviously wrong. In willingly creating this confusion the Respondent seeks to gain an unfair advantage by using the name and Mark, in which the Respondent has no rights, to the detriment of the goodwill which the Complainants have established in that name and Mark. The Complainants attach at Annex G copies of screen grabs from the Respondent's website.

Blocking Registration

(c) The Complainants are in the process of designing an official website to further promote the Michael Owen brand and the Mark. The registration by the Respondent prevents the Complainants from registering the Mark as a .co.uk ccTLD. The Complainants submit that the registration of the Domain Name constitutes a blocking registration against the Mark in which the Complainants have demonstrated they have rights.

Pattern of registrations

(d) In addition to the Domain Name the Respondent is also the registrant of the following domain names: www.alanshearer.co.uk; www.davidbeckham.co.uk; www.davidginola.co.uk; www.davidseaman.co.uk; and www.paulince.co.uk.

(e) All of these domain names are identical to the names of high profile international premier league and former premier league football players. The Respondent has no apparent rights in these names. The Complainants submit that the Respondent is engaged in a pattern of registrations which correspond to the names of well known football players and the Domain Name is part of that pattern.

(f) The Complainants attach at Annex H copies of the WHOIS query results in respect of the above named domain names.

Previous Complaints

(g) The Respondent has previously been the subject of a complaint to the Nominet Dispute Resolution Service where it was found that it had made an abusive registration (see English Heritage -v- Alliance of Enfield (case number DRS01879)).

6.2 The Complainant requests the transfer of the Domain Name.

Respondent

6.3 As stated above, the Respondent has not submitted any Response.

7. Discussion and Findings:

General

7.1 Under paragraph 2a of the Policy the Respondent is required to submit to proceedings if a Complainant asserts to Nominet in accordance with the DRS Procedure that

"i. The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

ii. The Domain Name, in the hands of the Respondent, is an Abusive Registration."

7.2 Under paragraph 2b of the Policy a Complainant is required to prove both these elements on the balance of probabilities.

7.3 Paragraph 1 of the Policy defines "Rights" as including but not being "limited to, rights enforceable under English law". This definition is subject to a qualification which is not material.

Complainant's Rights

7.4 The Complaint (which, as already stated, is signed and includes a statement of truth, and to which there is no challenge) and the documentation provided with it, in my opinion:-

7.4.1 shows that on the balance of probabilities the Complainant Michael James Owen had acquired goodwill and common law rights in his name by 1 May 1998, when he entered into his first promotional contracts - and that on 22 August 2001 he acquired registered rights in that name;

7.4.2 by an assignment dated 28 April 2001 the Complainant Owen Productions Limited acquired exclusive rights for the period of 15 years to exploit the name and image of Mr Owen.

7.5 Therefore I am satisfied and find as a fact that both Complainants have rights in the name Michael Owen.

7.6 I consider and find as a fact that the name in which the Complainants have rights, i.e. Michael Owen, is identical to the Domain Name. Accordingly, I am satisfied that the conditions of paragraph 2a of the Policy are satisfied.

Abusive Registration

7.9 Paragraph 1 of the Policy defines "Abusive Registration" as:

"a Domain Name which either

i. was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights: or

ii. has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights."

7.10 The Policy provides:

"3 Evidence of Abusive Registration

a A non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration is as follows:

i Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:

A for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name;

B as a blocking registration against a name or mark in which the Complainant has Rights; or

C for the purpose of unfairly disrupting the business of the Complainant;

ii Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant;

iii The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern;

iv It is independently verified that the Respondent has given false contact details to us; or

v The domain name was registered as a result of a relationship between the Complainant and the Respondent, and the Complainant:

A has been using the domain name registration exclusively; and

B paid for the registration and/or renewal of the domain name registration.

b Failure on the Respondent's part to use the Domain Name for the purposes of e-mail or a website is not in itself evidence that the Domain Name is an Abusive Registration.

c There shall be a presumption of Abusive Registration if the Complainant proves that Respondent has been found to have made an Abusive Registration in three (3) or more Dispute Resolution Service cases in the two (2) years before the Complaint was filed. This presumption can be rebutted (see paragraph 4 (c)).

4. How the Respondent may demonstrate in its response that the Domain Name is not an Abusive Registration

a A non-exhaustive list of factors which may be evidence that the Domain Name is not an Abusive Registration is as follows:

i Before being aware of the Complainant's cause for complaint (not necessarily the 'complaint' under the DRS), the Respondent has

A used or made demonstrable preparations to use the Domain Name or a Domain Name which is similar to the Domain Name in connection with a genuine offering of goods or services;

B been commonly known by the name or legitimately connected with a mark which is identical or similar to the Domain Name; or

C made legitimate non-commercial or fair use of the Domain Name; or

ii The Domain Name is generic or descriptive and the Respondent is making fair use of it.

iii In relation to paragraph 3(a)(v); that the Registrant's holding of the Domain Name is consistent with an express term of a written agreement entered into by the Parties; or

iv In relation to paragraphs 3(a)(iii) and/or 3(c); that the Domain Name is not part of a wider pattern or series of registrations because the Domain Name is of a significantly different type or character to the other domain names registered by the Respondent.

b Fair use may include sites operated solely in tribute to or criticism of a person or business.

c If paragraph 3(c) applies to succeed the Respondent must rebut the presumption by proving in the Response that the registration of the Domain Name is not an Abusive Registration.

7.11      The facts asserted in paragraphs 1 to 14 of the Complaint are supported by the exhibits referred to and are not challenged. There is no reason to doubt the accuracy of those assertions, and accordingly I accept them as being factually correct.
7.12      It is apparent from the terms of the Complaint that the Complainant seeks to rely upon paragraph 3(a)1B, 3(a)(ii) and 3(a)(iii) and 3(c) of the Policy.

Blocking Registration

7.13      The Complainants' themselves assert that the Respondent has been exploiting the Domain Name. This is inconsistent with the contention that the registration was effected as a block. I therefore reject this contention.

Confusion of On-Line Users

7.14      The Complainants have asserted that Online users have been confused into believing that the Domain Name is registered by etc. the Complainant Michael Owen. No example has been provided. Nevertheless the Complaint is verified by a statement of truth and signed, and it is not challenged. Further the assertion is inherently plausible. Therefore I am satisfied on the balance of probabilities, and find as a fact, that the Respondent has used and is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant Michael Owen. Even in the absence of actual confusion, there is a likelihood of confusion and that in my judgment is sufficient to constitute an Abusive Registration - the list of factors set out in paragraph 3 of the Policy is expressly stated to be non-exhaustive.

Pattern of Registration

7.15      The unchallenged evidence of the Complainants does support this contention. I am satisfied, on the balance of probabilities, and find as a fact that the Respondent is engaged in a pattern of registrations as the registrant of domain names which correspond to well known names in which the Respondent has no apparent rights, and that the Domain Name is a part of that pattern.

Previous Complaints

7.16      Paragraph 3c of the Policy applies where a Complainant proves that a Respondent has been found to have made three Abusive Registrations in the two years before the Complaint was filed. The Complainants refer to only one such finding, and accordingly the conditions of paragraph 3c of the Policy have not been satisfied.

Conclusion

7.17      In the terms of paragraph 1 of the Policy I am satisfied and find as a fact that the Domain Name:-

7.12.1 was registered in a manner which at the time when the registration took place was unfairly detrimental to the Rights of the Complainant Michael Owen, who, as I found, had acquired such rights by the date of the registration.

7.12.2 has been used in a manner which took unfair advantage of and was unfairly detrimental to the Rights of both of the Complainants.

8. Decision

8.1      For the reasons given above, I find that the Complainants have Rights in a name and mark which is identical to the Domain Name and that the Domain Name in the hands of the Respondent, is an Abusive Registration.
8.2      The Complainants have requested the transfer of the Domain Name. On the basis of the material before me I consider that that is an appropriate remedy and accordingly that the Domain Name should now be transferred to the Complainants as they request.

Signed ………………………………

David Blunt QC

23 March 2006