Decision for dispute CAC-UDRP-106769

In addition to the above factual assertions, the Complainant also contends the following:

1. The Complainant asserts that the disputed domain name is identical or confusingly similar to his personal name. Although the Complainant does not have registered trademark for this personal name, the Complainant believes that in situations where an unregistered personal name is being used for trade or commerce, the Complainant can establish common law trademark rights in the name. At the time of registration of the disputed domain name, the Complainant was already a famous football player known worldwide and his reputation has only become greater since then. Referring to WIPO cases No. D2000-0210 <juliaroberts.com> and D2022-0036 <emmanuel-macron.com> the Complainant believes that given his reputation as worldwide known football player, similar protection should be awarded to his personal name.

2. The Complainant has not authorized the Respondent to register his name as domain name or trademark or to make other use of such name in any manner whatsoever. Complainant is not in possession of, nor aware of, the existence of, any evidence tending to demonstrate that the Respondent is commonly known by the disputed domain name, as individual, business name or other organization name. The Respondent has not provided the Complainant with any evidence of the use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services before any notice of the dispute. Therefore, the Respondent does not have any rights or legitimate interests in respect of the disputed domain name.

3. The disputed domain name is identical to the personal name of the Complainant, a famous professional football player of Juventus Football Club and Serbian national team. The Complainant believes that the Respondent is not in position to claim that it was unaware of the Complainant and his reputation at the time of registration of the disputed domain name. Moreover, the disputed domain name was offered for sale on several occasions for the price as high as EUR 20,000 which clearly exceeds the costs of registration and maintenance of the disputed domain name. Consequently, the Complainant believes that the disputed domain name has been registered and is being used in bad faith.

For these reasons the Complainant believes that it satisfies all requirements under the Uniform Domain Name Dispute Resolution Policy ("UDRP" or "Policy") for transfer of the disputed domain name to the Complainant. 

THE RESPONDENT:

The Respondent did not provide any valid response to the complaint, despite being notified about the complaint in English as well as Chinese language. The Respondent only responded by “go to hell” message after being notified of the complaint.

(i) the disputed domain name 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 disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The Panel will now analyse whether the three elements of paragraph 4(a) of the Policy are satisfied in these proceedings.

IDENTITY / CONFUSING SIMILARITY

The disputed domain name is identical to the personal name of the Complainant. Personal names are not explicitly protected by UDRP. However, in the practice of domain name disputes a principle has evolved that personal name may be protected under UDRP as unregistered (common law) trademark in the event that it acquired significant level of distinctiveness in relation to goods or services of the Complainant. As WIPO Jurisprudential Overview 3.0 states:

"UDRP does not explicitly provide standing for personal names which are not registered or otherwise protected as trademarks. In situations, however, where a personal name is being used as a trademark-like identifier in trade or commerce, the complainant may be able to establish unregistered or common law rights in that name for purposes of standing to file a UDRP case where the name in question is used in commerce as a distinctive identifier of the complainant’s goods or services. Merely having a famous name (such as a businessperson or cultural leader who has not demonstrated use of their personal name in a trademark/source-identifying sense), or making broad unsupported assertions regarding the use of such name in trade or commerce, would not likely demonstrate unregistered or common law rights for purposes of standing to file a UDRP complaint." 

Furthermore, the Panel in WIPO case no. D2013-1255 <philippepierredauman.com> concluded that:

"An actor, author, performer, sports star, politician, or other person whose livelihood turns on personal recognition meets this criterion almost by definition.  The interested public buys a book because it’s written by Jeanette Winterson, admission to a movie because Julia Roberts or Isabelle Adjani is performing, or a football jersey because it bears Dan Marino’s number."

In the light of the above and considering facts and evidence presented by the Complainant the Panel believes it is reasonable to protect the personal name of the Complainant as well-known football player who uses his name not only for the purpose of promoting his football career but also for related marketing and sponsorship activities. 

In line with the long-established UDRP practice the Panel also concludes that the top-level suffix in the domain name (i.e. the ".com") must be disregarded under the identity / confusing similarity test as it is a necessary technical requirement of registration.

Therefore, the Panel finds that the Complainant satisfied the requirement under paragraph 4(a)(i) of the Policy.

NO RIGHTS OR LEGITIMATE INTERESTS

The Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (please see, for example, WIPO case No. D2003-0455, Croatia Airlines d.d. v. Modern Empire Internet Ltd. <croatiaairlines.com>).

As asserted by the Complainant (and unchallenged by the Respondent), the Respondent is not commonly known by the disputed domain name. Neither is the Respondent in any way related to the Complainant. No active website is operated under the disputed domain name. The Respondent failed to provide any information and evidence that it has relevant rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a) (ii) of the Policy).

Therefore, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

BAD FAITH

The Complainant has shown that the disputed domain name was offered for sale on several occasions by the Respondent, for the price as high as EUR 20,000 exceeding any plausible costs of registration and maintenance of the disputed domain name. This is one of the model examples of the so-called cybersquatting, i.e. bad faith registration and use of a domain name with intent to its subsequent sale to the legitimate holder of the trademark or name to which the domain name is identical or confusingly similar. And such practice also constitutes bad faith in registration and use of the disputed domain name under the Policy (paragraph 4(b) (i) of the Policy).

Therefore, the Panel holds that the disputed domain name has been registered and is being used in bad faith by the Respondent.