England and Man United footballer Wayne Rooney has won his domain namessake WayneRooney.com at WIPO, although the decision is yet another dodgy one in terms of the domain name rules.

Welsh actor and Everton fan Huw Marshall registered the name back in April 2002 when he saw Rooney in the youth team but never got around to building a website. When Rooney then did the unforgiveable and moved from Everton to archrivals Manchester United in August 2004, Marshall decided the treachery was such that he would sit on the domain and do nothing with it.

This left Rooney’s management with a bit of a problem. They sent Marshall a letter but he said he wasn’t interested. And then they called him up and he said no. This gave them the option of either trying to buy it off him for a big sum – and let’s be honest, a spurned Everton fan is not going to be cheap – or go to WIPO and hope the panelist finds some roundabout route to ignore all the UDRP rules and chose in the famous person’s favour. And guess what?

What is interesting though is that Rooney’s agent – through his company Stoneygate 48 – has no less than six trademarks on the boy. You can search for them here, including one for his signature and an obviously aborted attempted at branding Wayne as a “street striker”, complete with dodgy graphic. The trademark at play here was 002989051 – covering his name in just about ever media that exists.

Except of course he didn’t have the trademark when Marshall registered WayneRooney.com. Sole panelist Tony Willoughby managed to overlook that fact, deciding in his own mind that Marshall had only decided to register the name for profit – overlooking the fact that Marshall has never made a penny from the domain, or sought to. Willoughby then castigates Marshall for *not* putting up a website and then, just as a final flourush, uses his psychic abilities again to decide that if Marshall *had* put up a website, he doesn’t believe it would have been a non-commercial one.

It’s a classic UDRP stitch-up. I reckon Marshall could have the last laugh though by putting up an anti-Rooney site on WayneRooney.co.uk – which he also owns. Following Our Wayne’s poor form again this week in a friendly against Croatia, he could find he has quite a following.

I’ve done a story for The Register on it. Now I will sit back and watch every other media outlet take the story with no credit. Although of course, I myself have to credit George Kirikos who yet again made me aware of the judgement and beat me to it again. Although I beat him on TomCruise.com :-). Cheers George.

Tom Cruise has, unsurprisingly, won TomCruise.com from WIPO. And, unsurprisingly, he won it off Jeff Burgar who is notorious for having registered hundreds of celebrities names back in 1996 and used them to redirect to his Celebrity1000.com website.

Jeff sometimes fights these cases, sometimes not. This time he did and he exposed, yet again, how flawed the UDRP system is and why, with domain names again worth millions of dollars, this is an extremely important system to sort out.

ICANN has, for one reason of another, delayed a review of UDRP for at least five years, despite dozens of people arguing – and pointing out in clear terms – why it has to be done. It is vital that that review is now carried out as soon as possible.

I have written an article for The Reg on this, taking the TomCruise.com decision as the framework, and briefly outlined the problems with UDRP and how far too often the panellists appear to try to find a way of coming to the pre-decided outcome as opposed to following the rules and coming to a conclusion.

For some reason, The Reg cut out a single sentence in my piece which is at the heart of the problem. It was this: “Since the panellists and WIPO itself make money from the cases brought, there is a strong financial incentive for the individuals and the organisation itself to choose in favour of the complainant.”

This is entirely true. WIPO makes more money by deciding in Complainants’ favour – usually big companies since you have to have (or at least you are supposed to have) a trademark before bringing a case under UDRP. I have outlined in countless articles over the years how the decisions reached under UDRP are incoherent, incorrect, biased, bent or just plain wrong. And the only thing that connected every single bad decision is that the trademark holder is handed the domain.

UDRP has to be reviewed as a matter of urgency. There are no excuses anymore for putting off a review. ICANN should start the process now and it should open the consultation up to the public, because this is one of the areas of the Internet in which you don’t need technical knowledge to be able to argue accurately and effectively.

First published in The Register, 26 November 2001

Movie star unable to sue in US

Movie actor Kevin Spacey has lost a landmark court battle over ownership of www.kevinspacey.com.

Judge Gary A Feess, of the United States District Court of the Central District of California, ruled on 14 November that if Mr Spacey wished to take ownership of the domain to court he would have to file in a Canadian court, where its current owner – the notorious “cybersquatter” Jeffrey Burgar resides.

The decision, in which Mr Burgar and his lawyer Mr EC Grimm “raise a novel threshold question regarding the exercise of personal jurisdiction where the Defendants’ ‘contact’ with the forum have taken place in cyberspace”, should at least allow a more level playing field in relation to future domain disputes. From now, complainants are unlikely to be able to chose where a case is heard, removing any incentive for law courts in certain areas to advertise their stronger approach to large companies and rich individuals.

This decision (case CV-3848) effectively ruins any hopes Mr Spacey had of taking over the domain, without buying it.

In the Anticybersquatting Consumer Protection Act 1999, US Congress accepted that as long as there is no attempt to sell on a “personal name” Web site for profit, then it is an example of “fair use” and permission is not needed from the individual in question.

This decision was roundly attacked by Californian senators at the time, who stood up for the Hollywood film industry. The California legal system could be considered the most sympathetic jurisdiction to anti-cybersquatter manoeuvres conducted by celebrities.
Arbitraitor

Why didn’t Spacey’s lawyers just go to domain arbitrators the World Intellectual Property Organisation (WIPO) or the National Arbitration Forum (NAF), like every the lawyers of every other celebrity and use their domain resolution system (Uniform Dispute Resolution Policy, more commonly known as UDRP)?

This is something that Mr Spacey did in April this year, winning the domain www.kevinspacy.com in August. UDRP has been heavily criticised in the past for showing bias towards famous or influential people, but… Mr Burgar won a previous WIPO case in almost identical circumstances over the domain www.brucespringsteen.com.

In that case (D2000-1532), the three-person panel made damning criticisms of how WIPO and UDRP operated, although recent decisions have not fully taken these into account.

Mr Spacey filed his case against Mr Burgar on 4 May this year, saying that Mr Burgar was “an infamous cybersquatter” who was using the actor’s name to promote a commercial celebrity Web site. The suit claimed Mr Spacey and his production company M. Profitt Productions (named after the incestuous junkie crime lord Mel Profitt he played in TV show Wiseguy) owned the rights to Spacey’s name, voice, and image. They wanted the domain transferred over and monetary damages paid.

That Mr Burgar is “an infamous cybersquatter” is not under question. He has had celebrity run-ins with Celine Dion, Jodie Foster, Mariah Carey, and others. But he is a rare example of someone willing to argue his case for domain name ownership and has helped more than almost anyone else in exposing contradictory and unjustifiable decisions made by the domain ruling bodies.

The KevinSpacey.com court decision [pdf]

The NAF decision on KevinSpacy.com