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Freddy Adu v. Frank Fushille [2004] GENDND 1349 (17 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Freddy Adu v. Frank Fushille

Case No. D2004-0682

1. The Parties

The Complainant is Freddy Adu, an individual residing in Los Angeles, California, United States of America, represented by Jared Saurer of the law firm Wyatt, Tarrant & Combs, Memphis, Tennessee, United States of America.

The Respondent is Frank Fushille, an individual residing in San Diego, California, United States of America, represented by Joel C. Golden, San Diego, California, United States of America.

2. The Domain Name and Registrar

The domain name at issue is <freddyadu.com> (“Disputed Domain Name”), and is registered with Register.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 27, 2004. On August 27, 2004, the Center transmitted by email to Register.com a request for registrar verification in connection with the Disputed Domain Name. On August 27, 2004, 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 August 31, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was September 20, 2004. The Response was filed with the Center on September 16, 2004.

The Center appointed Richard G. Lyon as the sole panelist in this matter on September 22, 2004. The Panelist 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 Panel finds that it was properly constituted and has jurisdiction over the dispute.

On September 22, 2004, Complainant, through his counsel, sent an email to the WIPO Arbitration and Mediation Center’s Case Manager, requesting permission to add certain information to the record in this proceeding. Complainant wished to add a statement of counsel that questioned the validity of Respondent’s assertion in the Response that Respondent had a registered copyright in the Disputed Domain Name. On September 25, 2004, the Respondent, through counsel, replied by a telefax to the Case Manager with evidence purporting to support the contention in the Response. In Procedural Order No. 1, issued September 27, 2004, the Panel denied these requests to supplement the record.

The Panel issued Procedural Order No. 2 on October 5, 2004, requesting that Complainant correct a discrepancy in its evidence, and requesting both parties to provide certain correspondence between them. Complainant submitted the material requested on October 8, 2004. Respondent submitted nothing further.

4. Factual Background

The pleadings indicate that the parties do not dispute the facts set out in this section of the opinion. Additional factual assertions made by each party, and factual inferences that each party wishes the Panel to draw, are set out in the section 5, “Parties’ Contentions.”¹

The Complainant, Freddie Adu, is a world famous soccer prodigy. In November 2003, at age 13, he signed a major contract with United States Major Soccer League (MSL).

Respondent, an individual residing in San Diego, California, United States of America, has described himself as proficient in multimedia communications, including web design, web maintenance, webcasting, and creating educational software. He is a lifelong soccer fan. He registered the Disputed Domain Name on October 14, 2002.

The Disputed Domain Name resolves to a single page with a soccer ball and goal netting, with praise and encouragement for Complainant and his MSL team, and the phrase “coming soon.” There is no evidence of any other use of the Disputed Domain Name.

Respondent has never been known, individually or in business, by the name Freddie Adu. Complainant has never authorized Respondent to use Complainant’s name in any manner.

In June 2003, Respondent initiated contact with the Complainant, by sending an email to Richard Motzkin of SportsNet, LLC, an agency that represents Complainant in marketing matters. Respondent said that “the original idea for my site was going to include articles, links, photos, and a bulletin board for fans to talk about their soccer interests . . .basically a fans’ site,” but inquiring if he could make that site an “official site.” Respondent also stated, “I’d like to manage this website.”

Mr. Motzkin replied promptly, asking for Respondent’s contact information and “whether you would be willing to sell the domain name to [Complainant] and, if so, for how much?” Email correspondence between Respondent and representatives of SportsNet continued through March 2004. Respondent several times proposed making the Disputed Domain Name the web address for Complainant’s official site.

Respondent sent his most detailed proposal on January 27, 2004. Elements of this proposal were his majority ownership of the site, participation in all corporate advertising negotiations, “open access to [Complainant] and his sponsors,” “first access to all web tracking information,” “special admission to all matches, charity events and all other opportunities that promote good will in which [Complainant] takes part,” all “for the sole purpose of generating positive public relations opportunities for [Complainant].” Respondent requested a “primary role” in photograph and video content promoting Complainant, in which Respondent “would retain all rights to all photographs, audio and video.”

Complainant’s counsel sent Respondent a cease and desist letter on May 24, 2004, demanding a cessation of Respondents use of Complainant’s name and transfer of ownership of the Disputed Domain Name to Complainant.

Respondent, through counsel, replied on July 16, 2004. He declined to transfer the Disputed Domain Name, and asserted his right to continued ownership and use of the Disputed Domain Name as a fan site, based upon many of the assertions that he now makes in the Response.

5. Parties’ Contentions

Complainant. The Complainant contends as follows:

Rights in a mark. Complainant uses his given name commercially in a variety of ways, such as product endorsements. His skill, renown, and the commercial value likely to follow from his skills were the subject of considerable publicity in the United States for several years before his contract signing. Complainant submits several newspaper and other media articles from 2001 – 2002, as evidence that his name and its commercial potential were well known since at least those dates. Under well-settled rules of decision under the Policy, a sports star, like any other person whose name is used as a commercial identifier, may claim his name as a mark, even if not formally registered, sufficient to permit institution of a dispute under the Policy.

Rights or Legitimate Interests. Complainant has never authorized Respondent to use his name in any manner. He has never made any “demonstrable preparations” to use the Disputed Domain Name as a fan site or indeed for any other purpose. Respondent was put on notice of “the dispute” before he made any use of the Disputed Domain Name in connection with the bona fide offering of goods and services; in fact, he has never made any use of the Disputed Domain Name. Respondent has never been commonly known by the Disputed Domain Name, nor operated any business under the Complainant’s name or anything similar. Respondent has used the Disputed Domain Name misleadingly to divert consumers seeking information about Complainant.

Bad faith. Respondent’s bad faith is illustrated by the following:

- His registration of the Disputed Domain Name when he knew of Complainant’s exclusive rights.

- His intention to attract fans and consumers who were seeking information about Complainant. Evidence of this is an email from Respondent, in which Respondent estimated the use of Complainant’s name would generate 10-20,000 hits per month (if not more).”

- Respondent’s non-use of the domain name for over two years demonstrates bad faith under the warehousing doctrine first set out in Telstra Corporation, Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

- Respondent’s unauthorized designation of his web site as the official site of Complainant. On February 9, 2004, Complainant conducted a Yahoo!® search for “Freddie Adu”. The first result was the Disputed Domain Name, advertised as “official site of the young soccer phenom.”

- Quoting from the Complaint, “it is difficult to conceive of any actual or contemplated or active use of the [Disputed Domain Name] that would not be illegitimate.”

- Respondent’s business proposal of financial participation in the official website for Complainant presents Hobson’s choice: “either intimate involvement with someone who Complainant has no desire to associate with” or giving up any right to use the prime domain name incorporating his valuable mark. This “undesirable choice is the antithesis of good faith.”

Respondent. Respondent contends as follows

Rights in a mark. Complainant was not well known at the time Respondent registered the Disputed Domain Name. Since Complainant did not sign a commercial contract until more than a year after Respondent registered the Disputed Domain Name, Complainant did not have enforceable rights under the Policy at that time. Respondent cites Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383, as authority for this argument.

Rights or Legitimate Interests. Respondent’s intention has always been to create a noncommercial fan site, an activity normally regarded as a bona fide non-commercial offering of services. Respondent, a lifelong soccer enthusiast, learned in October 2002, that an Italian soccer team was interested in signing Respondent to a professional contract. Respondent saw in Complainant not only a future star player but also an individual “who could make soccer more popular amongst American’s youths,” and an athlete who, by his character and dedication, “could be an excellent role model for American kids.” Respondent registered the Disputed Domain Name “not for profit” but as a “fan based informational news domain.” After spending some time searching for associates of Complainant to contact, in June 2003, he read that Complainant had signed with a sports agent, Richard Motzkin of SportsNet, whom Respondent immediately contacted by email. His initial email mentioned establishment of “a fan-based website to honor the future star.” He also raised the possibility of making his website Complainant’s official website.

Respondent has copyright ownership in <freddyadu.com>.

Respondent asserts that he has made use of the Disputed Domain Name, by posting his soccer-oriented wallpaper and including his email address on the website. Respondent met and had his picture taken with Complainant. Moreover, Respondent did not further develop the website for a number of reasons. There was little information available about Complainant, and at least until May 2004, he believed that negotiations with the Complainant’s agent would result in Respondent’s desired collaborative commercial website. Respondent has several times responded to emails from the public requesting information about Complainant. He has been “eager to develop the site for the last two years.” Respondent never proceeded with a fan site because he believed Complainant would be interested in helping provide information. Complainant’s May 2004 cease and desist letter “came as a surprise” as Respondent “believed Complainant supported Respondent’s website intentions.”

The term services in Paragraph 4(a)(i) of the Policy is not limited to commercial services and may include non commercial services. Respondent states succinctly that “it has never been [my] intention to use the domain name for commercial gain.” His purpose has been educational and informational, to promote soccer in America and develop an informational site about Complainant.

Respondent never intended to divert consumers; at the time he registered the Disputed Domain Name, “there was nothing to divert them from.” As one of Complainant’s biggest fans, he obviously has no intention of tarnishing Complainant’s image.

Bad Faith. Respondent’s purpose in establishing a fan site for Complainant is “benevolent” and “wholly lacking in bad faith.” Respondent had no intent to “coerce” a business venture; he was merely excited about the possibility of working with Complainant and led by Complainant’s communications to believe that he might have that opportunity. He “never asked for or took money” in return for transfer. Respondent presents his own Catch-22 for a sports fan: if he accepts money for the domain name it’s bad faith because he’s in it for profit, if he refuses, “that also demonstrates bad faith because it shows that [he is] holding on to the domain name against Complainant’s desires.”

Respondent did not register the Disputed Domain Name to prevent Complainant’s development of a commercial website; Complainant has done so at <freddyadu.net> and <freddyadu9.com>.²

Respondent has never registered any other domain name. He never indicated that the Disputed Domain Name was Complainant’s official website, and referred at least one commercial inquiry to Complainant’s agent. In sum, this is not the abusive registration the Policy was enacted to prevent.

6. Discussion and Findings

Policy Standards. The Complainant must prove the elements set out in paragraph 4(a) of the Policy. These elements are as follows:

(i) Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect to the Domain Name; and

(iii) Respondent’s Domain Name has been registered and is being used in bad faith.

Complainant bears the burden of proof on each of these elements.

Rights in a Mark. Since the Disputed Domain Name is identical to the mark in which the Complainant asserts rights, the Panel’s inquiry under Paragraph 4(a)(i) of the Policy is whether Complainant’s rights (if any) in the mark permit him to bring an action under the Policy.

As Respondent acknowledges, athletes and other celebrities who use their given names for commercial purposes have rights in that name sufficient to invoke the Policy. In the Brooke Hogan case cited by Respondent, this Panel held that determination of whether the requirements of Paragraph 4 (a)(i) of the Policy are established is based upon the complainant’s rights in the applicable mark when the complaint was filed. Clearly Complainant in this proceeding had such rights when the Complaint was filed. Complainant has established this element of the Policy. As in Brooke Hogan, the Panel addresses Respondent’s timing argument below under Paragraph 4(a)(iii) of the Policy. See also Swissvoice ag v. Chan chin sung, WIPO Case No. D2004-0672, in which the panel similarly considered the issue of trademark status at the date of registration as an issue of bad faith.

Rights or Legitimate Interest. Paragraph 4(a)(ii) of the Policy requires a complainant to prove a negative, that the Respondent lacks rights or legitimate interests in the domain name at issue. A complainant sets forth the facts within his knowledge to make a prima face case, which then shifts the burden of proof to the respondent to establish that he held rights or made a permitted use.³

Panelists in disputes under the Policy have consistently found that noncommercial fan sites qualified as legitimate use.⁴ In this proceeding, though, there is no fan site. There is no evidence of Respondent’s use of the Disputed Domain Name for this or indeed any other purpose, or of “demonstrable preparations” to do so. Respondent’s factual assertions, if true, demonstrate only that he intended to use the Disputed Domain Name for a fan site. Intentions are not “demonstrable preparations” to use a domain name. Under Paragraph 4(a)(ii), once Complainant has established his prima face case, “concrete evidence,” not intentions, is necessary to overcome that presentation. Kevin Garnett v. Trap Block Technologies, FA 128073 (NAF 2002). Respondent has presented no evidence at all of preparation to use the site for any purpose. Respondent’s placeholder format is inadequate evidence of preparation to use the site; like any other placeholder it merely reserves the web address for future use.

Respondent does assert that he took no action to develop a website in reliance upon the pendency of, or statements made to him during, his email negotiations with Complainant’s agent. In Procedural Order No. 2, the Panel requested from both parties all written correspondence between Respondent and SportsNet in February 2004, primarily to evaluate Respondent’s assertion that he was lulled into inaction by Complainant’s agent. Nothing in the written communications between Complainant’s agent and Respondent justifies any such reliance. In his reply to Respondent’s first inquiry, Complainant’s agent immediately inquired about transfer of the Disputed Domain Name. Later correspondence contains no statement by Complainant’s agent acceding to Respondent’s continued use of the Disputed Domain Name, much less active encouragement.

While Complainant did not send his cease and desist letter until three months after discovering Respondent’s alleged use of the Disputed Domain Name as an official site, his message to Respondent was consistent throughout: he wanted the right to the Disputed Domain Name, and was willing to consider paying for it. Respondent had eight months before his initial contact with Complainant and two months before receiving the cease and desist letter to make preparations for his fan site. During this time he did nothing. There is no basis for a finding of laches or estoppel.⁵

Registered and Used in Bad Faith.Paraphrasing Respondent’s timing argument in the context of bad faith, Respondent asserts that since Complainant did not sign his first professional contract until November 2003, more than one year after Respondent registered the Disputed Domain Name, his registration was could not have been in bad faith because Complainant’s name had not yet achieved the fame and commercial connection necessary to make it a trademark.

The complainant in Brooke Hogan alleged that her name had “become famous” at the time respondent registered it as a domain name, but “offer[ed] no evidence to support her allegation.” Here Complainant has submitted evidence that Complainant’s name had received trademark status (or equivalent stature under the Policy) on the date Respondent registered the Disputed Domain Name.⁶ Respondent not only does not contest this evidence,⁷ his own theory of the case depends upon Complainant’s fame and success. There is and could be little basis for a fan site for an unknown soccer player or unknown actress. Complainant’s evidentiary showing distinguishes this proceeding from the Brooke Hogan matter.

The undisputed evidence also establishes Respondent’s bad faith use of the Disputed Domain Name. The most offensive act of a cybersquatter is to hold another’s mark for ransom. Such conduct has earned its own subsection in Paragraph 4(b) of the Policy. The Policy was adopted specifically to provide an owner in these circumstances with a swift and inexpensive alternative to litigation to redeem his mark. Rather than a single payment for transfer of the Disputed Domain Name, Respondent’s asked for continuing participation in Complainant’s affairs and promotional activities, a majority interest in Complainant’s official website, and ownership of media images featuring Complainant. The financial consequences to Respondent of such an arrangement would surely have exceeded his out of pocket costs for registering the Disputed Domain Name. Although Complainant initiated the possibility of transfer for money, it was Respondent who consistently pressed the Complainant for official status and participation in Complainant’s marketing and financial activities. Paragraph 4(b)(i) specifically encompasses “other consideration.” And it would defy common sense as well as the language and intent of the Policy to limit the scope of that paragraph to one-off cash transactions.

That leaves the question of whether Respondent registered the Disputed Domain Name in bad faith. Paragraph 4(a)(iii) is conjunctive, requiring both registration and use in bad faith. A panel may infer bad faith registration from bad faith use, and the evidence in this proceeding amply justifies doing so. Respondent states that he sought out Complainant at his earliest opportunity. He approached not Complainant himself, but Complainant’s commercial agent. His only proposal, and the only details for any use of the website presented by Respondent, were commercial in nature and (whether intended or not) were obviously likely to yield Respondent substantial financial rewards and commercial recognition. Respondent has presented no evidence supporting his stated alternative of a fan site or any other non-commercial use. For over two years he has made no use of his website. This record establishes bad faith in registration as well as in use of the Disputed Domain Name.

Despite the connotations of the phrase bad faith, motive and intent should play at best a peripheral role in a panel’s decision. It would be all too easy for a cybersquatter to concoct a plausible excuse and swear to its veracity if subjectively honorable intentions alone overcame the bad faith requirement of Paragraph 4(a)(iii). As this Panelist stated in Reliant Energy, Inc. v. Brent Graeter, WIPO Case No. D2001-0246, another case in which the defense was based upon an intention to use the complainant’s mark for a fan site,

“Bad faith, as used in the Policy and the Rules, is intended to be judged by an objective standard, based upon the proof submitted by the parties, rather than a Panel’s subjective evaluation of a respondent’s intentions or state of mind. The Policy’s and the Rules’ general prohibition on live testimony and cross-examination make it virtually impossible for a Panel to evaluate the latter. Respondent’s unqualified offer to sell the Domain Names is an uncontested fact, and cannot be elided by a later self-serving statement in an adversary proceeding. To the extent possible a panel should base its decision upon objective evidence.”

This case illustrates a second reason for preferring objective standards for ascertaining bad faith. The Policy condemns conduct, not motives. A pure heart will not excuse tortious behavior. The Panel here has no reason to doubt Respondents’ devotion to the game of soccer or his admiration for Complainant. Since his conduct plainly constitutes bad faith under the Policy, those facts are irrelevant.

7. Decision

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

Richard G. Lyon
Sole Panelist

Dated: October 17, 2004

¹ The Panel commends both parties for well organized and well supported presentations of their respective cases. Each party has purported its factual allegations with an affidavit made on personal knowledge, and each has in its pleading carefully separated factual assertions from legal arguments and conclusions.

² Complainant wears the number 9 on his jersey.

³ Credit Suisse Group v. Milanes-Espinach, Fernando and Milanes-Espinach, SA , WIPO Case No. D2000-1376; Anti Flirt S.A. and Mr. Jaques Amsellem . v. WCVC, WIPO Case No. D2000-1553; Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467

⁴ E.g., RAI Radiotelevisione Italiana S.p.A. v. Alessandro Pescetelli, WIPO Case No. D2002-0716; Joe Cole v. Dave Skipper, WIPO Case No. D2003-0843.

⁵ Respondent's contention that his registering the disputed Domain Name as a copyright deserves at best a footnote. Copyright interests confer no trademark rights on their owner. Copyrights need not be registered; they accrue from creating a word, phrase, or other work. If copyright ownership established rights under Paragraph 4(a)(ii) of the Policy, every domain name owner could automatically defeat a UDRP proceeding.

⁶ Among the information submitted are articles from Sports Illustrated magazine, the Cleveland Plain Dealer, the Washington Post, USA Today, and a transcript of an interview carried on ABC. Some of these are dated in 2001.

⁷ In fact Respondent claims to have heard about Complainant in an article about the possibility of a professional team's signing Complainant as a twelve year old.