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Wednesday, 18 October 2006

ROONEY DOMAIN NAME OFFSIDE


The IPKat is grateful to Niamh Hall and Michael Hicks, who both tipped him off about Wayne Rooney’s successful bid to have the waynerooney.com domain name transferred to him.

The registrant claimed that he obtained the domain name in 2002, after seeing the then sixteen-year old Rooney playing for Everton, being convinced of his potential, and then being motivated to obtain the domain name to set up a fan site which never eventuated.

The Administrative Pannel of the WIPO Mediation and Arbitration Centre ordered that the mark be transferred.

The domain name was found to be identical or confusingly similar to a trade mark, even though Wayne Rooney only registered his trade mark after the domain name was registered, since trade marks registered after domain names can result in a finding of identical or confusing similarity under the UDRP (though it’s harder to find bad faith where the domain name predates the trade mark).

Mr Rooney (right) celebrates another successful domain name decision

The registrant’s supposed desire to set up a fan site did not give him a legitimate interest because this intention was not particularly believable. The panellist in particular highlights that the registrant had no programming experience at the time of registration and did nothing subsequently in order to acquire such skills.

The domain name had been registered or used in bad faith, even though it pre-dated the trade mark registration since, at the time, Rooney had goodwill in the Liverpool area.

The IPKat has some sympathy with the end result here, since he can’t think why the registrant would want Rooney’s name as a domain name, except to extract money from him in the future. However, there’s a strong degree of artificiality about the first step of minding the domain name to be similar to a mark that hadn’t been registered at the time of registration. Domain name applicants can’t be expected to be fortune tellers who work out what their domain names might eventually conflict with. He can’t see though why passing off wasn’t raised as the ‘earlier mark’ at this first point though, which would have avoided the difficulty.

1 comment:

Dev Gangjee said...

You may find the reasoning in the WayneRooney.co.uk decision a little more in allignment with passing off logic.
See Andrew Murray's expert opinion at : http://www.nominet.org.uk/digitalAssets/9378_waynerooney.pdf

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