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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Russell Coutts v. Massimo Gallotta

Case No. D2006-0008

 

1. The Parties

The Complainant is Russell Coutts, Geneva, Switzerland, represented by Breon Gravatt, Baldwins, Auckland, New Zealand.

The Respondent is Massimo Gallotta, Napoli, Italy.

 

2. The Domain Name and Registrar

The disputed domain name <russellcoutts.com> is registered with Register.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 5, 2006. On the same day, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On January 6, 2006, Register.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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”).

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 January 17, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 6, 2006.

On January 27, 2006, the Respondent asked the Center whether he could respond to the Complaint in Italian, instead of English. The Center answered on January 30, 2006, and indicated that in accordance with the Rules, the language of the administrative proceedings shall be the language of the Registration Agreement, which was English, as confirmed by Register.com. The Center, however, mentioned that the Panel retains final authority as to the language of the proceedings.

The Response was filed with the Center on February 2, 2006. It was drafted partially in English and partially in Italian.

The Center appointed Fabrizio La Spada as the sole panelist in this matter on February 17, 2006. 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.

The language of the proceedings is English, in accordance with paragraph 11(a) of the Rules. The Panel finds that there are no particular circumstances that would justify that Italian be the language of the proceedings. The Panel notes that the Respondent entered into the Registration Agreement in English and corresponded with the Complainant in English before the Complaint was filed.

 

4. Factual Background

The Complainant is an individual, a New Zealand citizen residing in Switzerland. He is an internationally renowned yachtsman, who has won several major international competitions, including an Olympic gold medal, several World Championships in match racing and the America’s Cup in 1995, 2000 and 2003.

The Complainant has licensed his personal name to several companies, including Omega, Quantum, Slam and Sunsail.

The Complainant is also the owner of several trademarks consisting of the words “Russell Coutts” or representing his signature. In particular, the Complainant is the owner of the following trademarks:

- Word mark RUSSELL COUTTS, no. 519529, registered in Switzerland on April 2, 2004, (filing date: December 12, 2003), in international classes 3, 9, 12, 14, 16, 25, 28, 29, 30 and 41.

- Word mark RUSSELL COUTTS, no. 3262102, registered as community trademark on March 7, 2005 (filing date: 7 July 2003), in international classes 3, 9, 12, 14, 16, 25, 28, 29, 30 and 41.

- Several word marks RUSSELL COUTTS, registered on February 9, 2004 (filing date: June 25, 2003), in New Zealand, respectively in international classes 3, 9, 12, 14, 16, 25, 28, 29, 30 and 41.

The Respondent registered the domain name on February 29, 2000.

On June 10, 2005, the Complainant sent a letter by e-mail to the Respondent, requesting the transfer of the domain name. The Respondent answered by e-mail on June 15, 2005. In his answer, the Respondent stated that his company, Jr. Junior Srl did not register the domain name but bought it from a New Zealand individual. It also mentioned that his aim was “to project and realize a wide free web site dedicated to all the sailing fans”. The Respondent indicated that he had a “big passion for this sport and above all for [the Complainant]”. In his e-mail, the Respondent offered to sell the domain name for an amount of USD 25,000, which he claimed corresponded to the cost of project development, purchase of the domain name, and eight years of maintenance of the registration and web space.

 

5. Parties’ Contentions

A. Complainant

Concerning the first ground under the Policy, the Complainant submits that the domain name is identical or confusingly similar to a trademark in which he has rights.

In this respect, the Complainant claims that unregistered personal names are sufficient to establish ground 4(a)(i) of the Policy where they have been used for trade and commerce, if they constitute common law trademarks or sufficient grounds for an action in passing off. In particular, the unregistered personal names of sports stars which have been licensed for commercial purposes can be common law trademarks sufficient under the Policy, providing they have been used commercially and have acquired a secondary meaning as the source of goods and/or services.

The Complainant further alleges that he is an international sports star and has licensed his personal name for commercial purposes, using his name as a trademark in relation to commercial activities since at least 1992. In particular, the Complainant licensed his name, between 1995 and 2000, to Vuarnet, a French sunglasses manufacturer, to IBM and to Logan clothing. The Complainant also mentions that he has co-authored three books, starred in two films about the America’s Cup campaign in 2003, and is currently sponsored by several brands, including Omega, Quantum, Slam and Sunsail.

Therefore, according to the Complainant, prior to the registration of the domain name by the Respondent, the Complainant had used Russell Coutts not simply as a name but as a trademark, and had developed a considerable reputation and goodwill in the Russell Coutts trademark. The Complainant contends that there can be no doubt that the Respondent must have been aware of the repute of the Complainant when he purchased the domain name.

The Complainant further bases his rights in the Russell Coutts trademark on New Zealand law, which he submits is applicable because of the fact that the Complainant was a New Zealand resident when the domain name was registered.

In addition, the Complainant states that he is the owner of 60 registered trademarks, which comprise either the words “Russell Coutts” or the Complainant’s signature. These trademarks are registered in New Zealand, the European Community and Switzerland. The first filing date is June 25, 2003. According to the Complainant, the Policy makes no specific reference to the date on which the Complainant must have acquired rights to the trademark relied on for purposes of ground 4(a)(i). Trademarks satisfy this ground even where registered after the date of registration of the domain name. Finally, the Complainant submits that the domain name is identical, or at least confusingly similar to the trademark Russell Coutts owned by the Complainant.

Concerning the second ground under the Policy, the Complainant submits that the Respondent has no rights or legitimate interests in the domain name. In particular:

- The Respondent is not known, and has never been known, by the name Russell Coutts.

- The Respondent has no obvious link to the name Russell Coutts.

- The names “Russell” and “Coutts” are not common names in Italy and are not Italian words.

- The Respondent is not known to the Complainant and does not have, and has never had, the Complainant’s permission to use the mark “Russell Coutts”.

- The Respondent has not used the domain name in relation to goods or services related to the Complainant.

- The Respondent has not alleged in its correspondence with the Complainant that he has any association with the name Russell Coutts other than registering the domain name.

In addition, the Complainant states that Internet users entering the domain name into their web browsers are automatically diverted to a web site hosted in association with the domain name <junior.it>, registered to the Respondent. On this web site, the Respondent operates a retail site offering street and skateboard related shoes, clothing and related merchandise. This site and merchandise are not affiliated with, associated with or endorsed by the Complainant in any way. Such forwarding of Internet traffic does not constitute legitimate, non-commercial or fair use of a domain name.

Finally, the Complainant points out that nearly six years have passed since registration of the domain name without any active use for a legitimate purpose. According to the Complainant, this clearly demonstrate a lack of rights or legitimate interests in the domain name.

Concerning the third ground under the Policy, the Complainant submits that the domain name was registered and is being used in bad faith. This contention is in particular based on the following elements:

- In his e-mail dated June 15, 2005, the Respondent confirmed that he was aware of the Complainant when he registered the domain name. He also offered to sell the domain name for an amount of USD 25,000, which is in excess of his costs.

- In May 2001, the domain name was being offered for sale, with two others, for USD 150,000. The two other domains that were offered for sale were <francescodeangelis.com> and <torbengrael.com>. Francesco de Angelis and Torben Grael are both well-known sailors. Therefore, the Respondent has engaged in a pattern of conduct whereby he has attempted to prevent the legitimate owners from reflecting their trademarks in corresponding domain names.

- Internet users attempting to access the web site hosted on the domain name are automatically diverted to “www.junior.it”, where the Respondent sells casual shoes, caps and belts, including brands such as Adidas, New Balance, Nike, etc. This could confuse the public into thinking that the Complainant endorses these brands when he does not.

On these grounds, the Complainant requests the transfer of the domain name.

B. Respondent

The Respondent mentioned that he registered the domain name on February 29, 2000, i.e. before registration of the Russell Coutts trademarks, which were first filed on June 25, 2003. The Respondent points out that in February 2000, domain name registration was based on the “first come, first served” principle, which allowed the first applicant to obtain registration of any domain name.

In addition, the Respondent disputed the evidence produced by the Complainant and submitted that the domain name was never related to the web site “www.junior.it”.

The Respondent states that he has been the sole owner of the domain name since February 2000, and has never had the intent to sell it.

 

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must prove that each of the three following elements are satisfied:

1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section A), and

2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section B), and

3. The domain name has been registered and is being used in bad faith (see below, section C).

Paragraph 4(a) in fine of the Policy states that the burden of proof with regard to these elements lies with the Complainant.

A. Identical or Confusingly Similar

This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.

As regards the first issue, the Complainant acknowledges that he did not own any trademark consisting of or containing the words “Russell Coutts” or similar words at the time the domain name was registered. However, he submits that he owned common law trademark rights in his name “Russell Coutts”.

In light of the Second WIPO Domain Name Process, it is clear that the Policy is not intended to apply to personal names that have not been used commercially and acquired secondary meaning as the source of goods and/or services, i.e. common law trademark rights (See Dr. Michael Crichton v. In Stealth Mode, WIPO Case No. D2002-0874; The Reverend Dr. Jerry Falwell and The Liberty Alliance v. Gary Cohn, Prolife.net and God.info, WIPO Case No. D2002-0184; Israel Harold Asper v. Communication X Inc., WIPO Case No. D2001-0540; Kathleen Kennedy Townsend v. B. G. Birt, WIPO Case No. 2002-0030; R.E.’Ted’ Turner and Ted Turner Film Properties, LLC v. Mazen Fahmi, WIPO Case No. D2002-0251).

However, previous decisions have recognised that a complainant may own common law rights in a personal name, if he can show use of that name as an indication of the source of goods or services supplied in trade or commerce and that, as a result of such use, the name has become distinctive of that source (see Dr. Michael Crichton v. In Stealth Mode, WIPO Case No. D2002-0874). Upon such proof, a celebrity’s name can serve as a trademark when used to identify the celebrity’s performance services (Kevin Spacey v. Alberta Hot Rods, NAF Case No. FA0205000114437). In addition, extensive use of and reputation in a name can confer upon a complainant common law rights over a given name (see Janine Turner v. Mercedita Kyamko, WIPO Case No. D2004-1036).

Previous panels have also held that a complainant may be successful if he either used his personal name as a marketable commodity, allowing his name or image to be used for a fee, to promote someone else’s goods or services, or for direct commercial purposes in the marketing of his own goods or services (see Ronaldo de Assis Moreira v. Goldmark – CdWebb, WIPO Case No. D2004-0827; Freddy Adu v. Frank Fushille, WIPO Case No. D2004-0682; Israel Harold Asper v. Communication X Inc., WIPO Case No. D2001-0540 and cases cited; Chinmoy Kumar Ghose v. ICDSoft.com and Maria Sliwa, WIPO Case No. D2003-0248).

The Complainant has produced ample evidence showing that his name is famous, and has been used as a marketable commodity. In particular:

- The Complainant is one of the most well-known international sailors. He has won several major international competitions, including a gold medal at the Olympic Games, the World Championships in Match Racing in 1992, 1993 and 1996, as well as the prestigious America’s Cup in 1995, 2000 and 2003.

- The Complainant co-authored three books on sailing and the America’s Cup, that were published in 1996 and 1999.

- The Complainant starred in two films about the America’s Cup campaign in 2003.

- The Complainant licensed his name and image to several companies, including Omega, a Swiss watch manufacturer, Quantum, a sail design company, Slam, an Italian-based designer and manufacturer of sailing clothing, and Sunsail, a provider of yacht charter and watersports oriented sailing holidays.

The Complainant also alleged that, between 1995 and 2000, he licensed his name and image to Vuarnet, a French sunglasses manufacturer, had endorsement contracts with IBM and Logan Clothing, and had other activities whereby he used his name commercially. However, the Complainant did not provide evidence supporting these allegations.

Nevertheless, based on the record and a careful review of the evidence produced by the Complainant, the Panel is satisfied that the Complainant is, and already was at the time the domain name was registered, a sports celebrity whose name is associated with his performance services and which is used as a marketable commodity in the commerce, in particular to promote other people’s goods and services.

For the sake of completeness, the Panel notes that the Complainant is the owner of registered trademarks consisting of the words “Russell Coutts”. These trademarks were registered after the domain name. However, several prior panels have ruled that this does not prevent a finding that the condition of paragraph 4(a)(i) of the Policy is met (although it can have an incidence on the issue of whether the domain name was registered in bad faith – see paragraph 4(a)(iii)) (see, e.g., AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527; Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827; MADRID 2012 S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598).

Therefore, the Panel finds that the Complainant has common law rights in the name “Russell Coutts” satisfying the first test of paragraph 4(a)(i) of the policy.

The Panel also finds that the domain name, <russellcoutts.com> is confusingly similar, if not identical, to the Complainant’s trademarks.

B. Rights or Legitimate Interests

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name.

It is difficult for a complainant to prove such a negative fact. Therefore, panels have required complainants to establish at least a prima facie case under this heading. If that is made out, the evidentiary onus then shifts to the respondent to rebut the presumption of absence of rights or legitimate interests (See, e.g., Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070).

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fides offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

On the basis of the statements and documents submitted, the Panel is satisfied that the Respondent has no rights or legitimate interests in respect of the domain name, for the following reasons.

The Complainant has not licensed or otherwise permitted the Respondent to use his name or any of its trademarks or to apply for any domain name incorporating his name or trademarks.

The Respondent has not been commonly known by the domain name and there is no relationship between the Respondent and the name “Russell Coutts”.

There is no evidence indicating that the Respondent was commonly known by the domain name or that he is making a legitimate non commercial use of the domain name. In this respect, the Respondent stated in an e-mail to the Complainant that when he registered the domain name in 2000, he had the intention to set up a free web site dedicated to all sailing fans. However, the Respondent provided no evidence that, as of early 2006, he had actually used the domain name for such a free web site, or that he had made any preparation to use the domain name for this purpose, or for any other non profit purpose. On the contrary, the evidence on record shows that the domain name directed Internet users to another web site, “www.junior.it”, also owned by the Respondent, where the latter sold sports goods, including shoes and clothing. Such forwarding of Internet traffic to a commercial web site does not constitute a legitimate non commercial or fair use under the Policy (Robert Downey Jr. v. Mercedita Kyamko, WIPO Case No. D2004-0895).

In addition, in accordance with prior decisions, this Panel considers that use which intentionally trades on the fame of another cannot constitute a bona fide offering of goods or services (Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847).

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

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the domain name was registered and is being used in bad faith by the Respondent. Paragraph 4(b) of the Policy sets out four circumstances which shall be evidence of the registration and use of a domain name in bad faith. These four criteria are nonexclusive (BolognaFiere S.p.A. v. Bonopera Daniele, WIPO Case No. D2003-0295).

Paragraph 4(b) provides the following instances of registration and use in bad faith:

“(i) circumstances indicating that you [Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you [Respondent] have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you [Respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

In addition, a finding of bad faith may be made where the Respondent knew or should have known of the registration and use of the trade mark prior to registering the domain name (see Maori Television Service v. Damien Sampat, WIPO Case No. D2005-0524; Staples, Inc., Staples The Office Superstore, Inc., Staples Contract and & Commercial, Inc. v. John Morgan, WIPO Case No. D2004-0537).

On the basis of the statements and documents submitted, the Panel is satisfied that the domain name was registered and used in bad faith, for the following reasons.

After registering the domain name, the Respondent set up a web page displaying a sailing boat, as well as the mention “3 Domain Names on Sale at 150.000 US Dollars”. The three domain names on sale were the domain name, <russellcoutts.com>, as well as <francescodeangelis.com> and <torbengrael.com>. All three domains correspond to the names of famous sailors. There is no doubt that the amount of USD 150,000 is in excess of documented out-of-pocket costs related to the domain name. In the panel’s view, these circumstances fulfill the condition of paragraph 4(b)(i) of the Policy.

In an e-mail to the Complainant dated June 15, 2005, the Respondent offered to sell the domain name for an amount of USD 25,000. The Respondent claimed that this amount corresponded to the cost of project development, purchase of the domain name, and eight years of maintenance of the registration and web space. However, these costs are not documented and the Panel considers that the amount of USD 25,000 is in excess of the Respondent’s out-of-pocket costs related to the domain name. In this respect, the Panel notes that there is no evidence that the Respondent has incurred any development costs in relation to the domain name. In addition, concerning registration and maintenance of the domain name, the Complainant has produced evidence indicating that the cost of registering and maintaining a domain name with Register.com is USD 35 per year, and the cost of URL forwarding through Register.com is USD 49 per year. This evidence has not been disputed or rebutted by the Respondent.

The Complainant has produced evidence that Internet users seeking to connect to the domain name were redirected to the web site “www.junior.it”, owned by the Respondent, on which sports items were offered for sale. The Panel considers that this conduct fulfills the condition of paragraph 4(b)(iv) of the Policy, as the Respondent is intentionally attempting to attract, for commercial gain, Internet users to his web site, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of this web site. The Panel notes in this respect that when the Respondent registered the domain name, he was aware of the existence and fame of the Complainant, as he acknowledged in his e-mail of June 15, 2005.

There is evidence that the Respondent registered not only the domain name, but also two other domain names consisting of the names of famous sailors: <francescodeangelis.com> and <torbengrael.com>. The issue therefore arises whether the Respondent has engaged into a pattern of conduct seeking to prevent the owner of a trademark or service mark from reflecting the mark in a corresponding domain name. Based on the record, the Panel is not in a position to determine whether “Francesco de Angelis” and/or “Torben Grael” are registered or common law trademarks owned by these persons. However, the issue does not need to be settled in this decision, since there is other evidence of the Respondent’s bad faith in registering and using the domain name.

Finally, the Panel has taken into account the Respondent’s allegation that the evidence produced by the Complainant was false, that the domain name was never linked to the “www.junior.it” web site, and that the domain name was never offered for sale. However, the Respondent’s unsubstantiated denial of the evidence does not stand in the view of the clear evidence produced, as well as independent verifications made by the Panel.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <russellcoutts.com> be transferred to the Complainant.

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Fabrizio La Spada
Sole Panelist

Dated: March 23, 2006