WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Leroy Sané v. Duro Arezina
Case No. D2016-0308
1. The Parties
The Complainant is Leroy Sané of Bochum, Germany, represented by Klinkert Rechtsanwälte PartGmbB, Germany.
The Respondent is Duro Arezina of Novo Cice, Croatia, self-represented.
2. The Domain Name and Registrar
The disputed domain name <leroysane.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 16, 2016. On February 16, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 16, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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").
The Respondent filed email communications with the Center on February 16, 2016 and February 17, 2016, inter alia indicating that it was willing to transfer the disputed domain name to the Complainant. On February 22, 2016, the Complainant informed the Center that it did not want to suspend the proceedings for the purpose of settlement negotiations.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 13, 2016.
On February 22, 2016 and February 23, 2016, the Respondent filed email communications with the Center reiterating its earlier statements and confirming that the previous communications may be regarded as its complete Response. Accordingly, the Center notified the parties of the commencement of the Panel appointment process on February 24, 2016.
The Center appointed Steven A. Maier as the sole panelist in this matter on March 2, 2016. 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.
4. Respondent's Consent to Transfer
Paragraph 4.13 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") states that:
"Where the parties to a UDRP dispute have not succeeded in settling a case between themselves prior to the rendering of a panel decision, but the respondent has given its unilateral and unambiguous consent on the record to the remedy sought by the complainant, a panel may at its discretion order transfer (or cancellation) of the domain name on that basis alone."
In this case, the Respondent has provided a unilateral and ambiguous consent on the record to a transfer of the disputed domain name, both upon commencement of the administrative proceeding and by way of his formal Response. Specifically the Respondent has stated:
"Yes, I do consent to the remedy requested by the Complainant and agree to transfer the disputed domain name."
However, despite this consent, the Complainant has requested that this proceeding continue. The Complainant provides evidence that it sent a "cease and desist" communication to the Respondent on February 9, 2016, but that on February 10, 2016 the Respondent responded otherwise than in full compliance with the Complainant's demands. The Complainant states that in these circumstances it "does not desire to enter into settlement discussions with the Respondent" and wishes the proceeding to continue. The Complainant having been made aware of the Respondent's unilateral and ambiguous consent to transfer, the Panel interprets the Complainant's position as a request for a reasoned Decision in the proceeding, notwithstanding the Respondent's consent. In the circumstances, the Panel declines to order a transfer of the disputed domain name by consent and will proceed to a reasoned Decision.
5. Factual Background
The Complainant is a professional football player who plays for the German Bundesliga club Schalke 04 and has played for the German national team.
The disputed domain name was registered on October 4, 2014.
According to evidence submitted by the Complainant, the disputed domain name has been used to resolve to a website at "www.leroysane.com". As of February 11, 2016, the site appeared to offer for sale several hundreds of ".com" domain names corresponding to the names of professional football players at prices ranging from USD 499 to USD 7,999.
6. Parties' Contentions
A. Complainant
The Complainant submits that he is a successful and popular football player who is regarded as a rising talent and is being monitored by a number of Europe's top football clubs. He states that, owing to his popularity with fans and with the media, products relating to the Complainant have been among the top sellers at his club's official fan shop. The Complainant states that the shop offers numerous products directly or indirectly connected with him and provides by way of an example a promotion for a "Sané Bundle", priced at EUR 25, comprising a scarf and a mug both bearing the name "Leroy Sané" and a wig intended to represent the Complainant's hair.
The Complainant submits that, while personal names of individuals are not protectable under the Policy per se, they can give rise to common law or unregistered trademark rights in circumstances where they have been used commercially to offer goods or services: the Complainant cites paragraph 1.6 of the WIPO Overview 2.0 and a number of the decisions there referred to. The Complainant asserts that his own commercial use of his name as described above is sufficient for these purposes.
The Complainant submits that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant relies on unregistered or common law rights derived from his commercial use of his name and submits that the disputed domain name is identical to his name.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. He states that the Respondent has not commonly been known by the disputed domain name and is not making any legitimate noncommercial or fair use of it. On the contrary, he is using it illegitimately to generate profits by offering the names of numerous famous professional football players for sale.
The Complainant submits that the disputed domain name has been registered and is being used in bad faith. He relies in particular on paragraph 4(b)(i) of the Policy and asserts that the Respondent acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant for valuable consideration in excess of his out-of-pocket costs directly related to the domain name. He provides evidence that the Respondent offered the disputed domain name for sale at USD 3,699 and that, in response to the "cease and desist" communication referred to above, the Respondent offered to accept a "fair offer" from the Complainant for the name.
The Complainant requests a transfer of the disputed domain name.
B. Respondent
As stated above, the Respondent has indicated his unilateral and unambiguous consent to the transfer of the disputed domain name to the Complainant. He has confirmed that this constitutes his full Response in the administrative proceeding and he does not reply to the Complainant's specific contentions.
7. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established to the satisfaction of the Panel that he is a professional football player with a significant reputation who has used his name commercially in connection with the sale of products and services. The Panel finds that the Complainant's name is distinctive and that such commercial activity gives rise to rights in the Complainant's name in the nature of common law or unregistered trademark rights. The disputed domain name is effectively identical to the Complainant's name, save that the "e" in his surname is not accented. In the circumstances, the Panel finds that that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent has not responded directly to the Complainant's contentions and has put forward no basis upon which he claims to have rights or legitimate interests in respect of the disputed domain name. The Panel finds that the Respondent has used the disputed domain name to target the Complainant's name and to attempt to profit from the goodwill that attaches to the Complainant's name by offering the disputed domain name and other domain names for sale. The Panel finds that such activity does not give rise to rights or legitimate interests in the disputed domain name and concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Panel finds that the Respondent has offered the disputed domain name for sale for USD 3,699 and that he offered to consider a "fair offer" from the Complainant to purchase the disputed domain name. In the circumstances, the Panel accepts the Complainant's submission that the Respondent registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant or to a competitor of the Complainant for valuable consideration in excess of his out-of-pocket costs directly related to the domain name (paragraph 4(b)(i) of the Policy). Particularly in the case of a personal name, the Panel is satisfied that the term "competitor" should be interpreted widely enough to include anyone who may wish to purchase the name for commercial purposes. The Panel considers that the Respondent's inventory of hundreds of other ".com" domain names based on the names of professional football players is a further indicator of bad faith. In the circumstances, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
8. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <leroysane.com> be transferred to the Complainant.
Steven A. Maier
Sole Panelist
Date: March 9, 2016
