Rodney D. Ryder, cyber law expert and managing partner of Scriboard®, a full service law firm based in New Delhi, India, represented Mahendra Singh Dhoni and Rhiti Sports Management Private Limited (the company responsible for managing Mahendra Singh Dhoni’s trademark portofolio) to secure the domain name – www.msdhoni.com through UDRP (Uniform Domain Name Dispute Resolution Policy) with WIPO (World Intellectual Property Organization).
Brief intro about Mahendra Singh Dhoni:
Commonly known as M. S. Dhoni (born 7 July 1981), he is an Indian cricketer, one of the most successful captain’s and the present captain of the Indian national cricket team in limited-overs formats. An attacking right-handed middle-order batsman and wicket-keeper, he is widely regarded as one of the greatest finishers in limited-overs cricket. He made his One Day International (ODI) debut in December 2004 against Bangladesh, and played his first Test a year later against Sri Lanka. Source: Wikipedia
Scriboard®, on behalf of its clients, contended that the mark ‘MS DHONI’ was a well-known and famous mark throughout the world and that the use of the domain name www.msdhoni.com by the Respondent amounted to trademark and personality rights infringement and may also lead to public confusion and mistrust as members of the public may assume that the domain name as well as the content available on it was being made available by Mahendra Singh Dhoni or Rhiti Sports.
It was also contended that the term ‘MS DHONI’ was generally referable to Mahendra Singh Dhoni and that there was no evidence of anyone else known by that combination of initials and name as being famous or having any commercial activity. Moreover, the fact that the domain name had pay-per-click advertisements and was being offered for sale was also brought to the attention of the UDRP Panelist, Nick J. Gardner.
Interestingly, subsequent to the filing of the domain name complaint, the Respondent wrote to Scriboard® offering to sell the domain name for 1500 US Dollars. This in itself proved the malafide and bad faith intention of the Respondent.
The Panelist held that the even though the Complainants had trademark registrations for the mark ‘MS DHONI’, they had also established unregistered trademark rights in the mark ‘MS DHONI’ due to its active use in trade and commerce. The Panelist further noted that the Respondent had no legitimate rights or interests in the domain name, had registered and was using the domain name in bad faith.
The fact that the Respondent had registered several other domain names corresponding to other celebrities and the past two UDRP proceedings where the Respondent was found to have registered the domain name in bad faith, as well as the offer to sell the domain name www.msdhoni.com to the Complainants were all taken on record and considered by the Panelist. The Panelist thus ordered the domain name to be transferred to the Complainants.
Not surprisingly, there are many unauthorised domain name registrations identical to personal names of Indian celebrities and politicians such as Virat Kohli, Rahul Gandhi, the Hon’ble President Pranab Mukherjee, etc. Such unauthorised registrations of domain names are a serious issue and it is thus extremely important that celebrities and other well-known personalities take control of domain names identical to their names – just as John Cusack who recently recovered the domain name www.johncusack.com through UDRP.
Moreover, such unauthorised domain names are a threat as they can be involved in illegal and damaging activities such as phishing, cyber fraud, identity theft, etc. In many cases, deceptively similar websites have lured users in paying money or divulging their sensitive personal information – including financial information to fraudsters. For instance, in the case of www.gmirecruitment.in domain name, members of the general public were misled by mails being sent from the said domain name and were cheated of their money on the pretext of paying registration fees for recruitment at General Motors.
The financial impact of such brand abuse is substantial and pervasive, resulting in revenue loss, increased customer service costs and exposure to legal liability. Other impacts of abusive domain name registrations are more dangerous, leading to significant erosion of margins, brand reputation and customer trust.
It is also to be noted that with the 2008 amendments to the Information Technology Act, 2000, it has become important and urgent for a brand owner not to delay in securing its brand on the internet. Section 43A of the Act puts the onus on the right holders [brand owners] to ensure that ‘reasonable security procedures’ are in place at their organisation. Organisations including their employees that are negligent in protecting their brand can face huge penalties under Section 43A read with Section 85 of the Act.
Thus, taking control of such unauthorised domain names prevents any harm or unwarranted attention that may arise from these domain names and also protects celebrities and brand owners from potential legal liability.
According to Rodney D. Ryder, who represented Mahendra Singh Dhoni and Rhiti Sports, it was ‘imperative to secure this important and valuable digital asset’. He added, ‘the securing of the domain name is an important part of the overall brand strategy. There is a serious potential of misuse. This case, from the WIPO Arbitration and Mediation Center, Geneva, is an important global trademark precedent for the already famous and well-known brand, MS Dhoni’.
Rodney D. Ryder is a well-known intellectual property lawyer, legal consultant and a prominent speaker at India’s most popular domain name conference; DomainX Events.
Full UDRP Case Decision by WIPO Panelist:
ADMINISTRATIVE PANEL DECISION
Mahendra Singh Dhoni and Rhiti Sports Management Private Limited v. David Hanley
Case No. D2016-1692
1. The Parties
The Complainants are Mahendra Singh Dhoni of Ranchi, India and Rhiti Sports Management Private Limited of Delhi, India, represented by Scriboard Advocates & Legal Consultants, India.
The Respondent is David Hanley of New York, New York, United States of America (“US”), represented by Revision Legal, PLLC, US.
- The Domain Name and Registrar
The disputed domain name <msdhoni.com> (the “Disputed Domain Name”) is registered with Wild West Domains, LLC (the “Registrar”).
- Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 19, 2016. On August 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 22, 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”).
On August 22, 2016, the law firm Revision Legal, PLLC contacted the Complainants’ legal representative and indicated it had been retained by the Respondent. The Respondent subsequently confirmed to the Center that this firm represented him. Accordingly, this firm was copied in all subsequent party related communications sent by the Center.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 30, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 19, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 21, 2016.
The Complainants submitted by email a supplemental filing to the Center on September 22, 2016 (the Complainants’ “Supplemental Filing”).
The Center appointed Nick J. Gardner as the sole panelist in this matter on October 3, 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.
- Factual Background
The First Complainant is an individual who is a very well known cricketer. He is Captain of the Indian National Cricket Team in the “limited overs” and “T20” formats and is popularly known and referred to as MS Dhoni. Mr. Dhoni made his One Day International (“ODI”) debut as a playing member of the Indian National Cricket Team on December 23, 2004. Since his debut in international cricket, Mr. Dhoni has played in 278 ODI Matches, as well as numerous other international matches. Under his captaincy, India has won numerous awards including the 2007 International Cricket Council (“ICC”) World Twenty20, the 2010 Asia Cup, the 2011 ICC Cricket World Cup and the 2013 ICC Champions Trophy. In 2013, Mr. Dhoni became the first captain to win all three ICC limited-over trophies namely, World Cup, Champions Trophy and the World Twenty20.
The filed evidence establishes that the First Complainant is extremely famous and well known. It also establishes that the term MS Dhoni is generally referable to the First Complainant and there is no evidence of anyone else known by that combination of initials and name as being famous or having any commercial activity by reference to that term.
The Second Complainant is a company which manages the First Complainant’s affairs and which is licensed by him to exploit his rights in his name. The filed evidence establishes that the First and Second Complainants have widely exploited the First Complainant’s rights in his name, for example by establishing a chain of sports clubs in India named “SportsFit by MS Dhoni”. The filed evidence also establishes the Complainants have been very successful in exploiting the First Complainant’s reputation – for example they earned USD 27 million in the year 2015 alone in brand endorsement revenues.
The Complainants have filed various trademark applications for the term MS DHONI.
The Disputed Domain Name was originally registered on October 31, 2005. According to the information provided by the Registrar the Respondent has been the registrant of the Disputed Domain Name “since at least 2/26/2014”. At the date of this decision the Disputed Domain Name does not resolve to any website but the filed evidence indicates it previously (as at August 19, 2016) resolved to a website containing automatically generated “click through” links.
The Respondent has registered other domain names corresponding to the names of well known individuals – <naimamora.com> corresponding to Naima Mora who is an American fashion model; <rolandemmerich.com> corresponding to Roland Emmerich who is a film director; <peternagy.com> corresponding to Peter Nagy who is an American artist and <salvadortorres.com> corresponding to Salvador Torres who is an American artist and muralist.
The Respondent has been subjected to two NAF UDRP proceedings in the past and the Respondent’s conduct was found to be in bad faith in both these proceedings. See The Royal Bank of Scotland Group plc v. David, Hanley, Claim Number: FA0912001300076 and AOL LLC v. David Hanley, Claim Number: FA0912001297790.
Subsequent to the filing of this Complaint, the Respondent contacted the Complainants’ legal representative via emails dated August 20, 2016 and August 22, 2016 each offering to sell the Disputed Domain Name to the Complainants for USD 1,500.
- Parties’ Contentions
The Complainant’s case can be summarized as follows.
- a) The Disputed Domain Name is identical to the MS DHONI trademark.
- b) The Respondent does not have any rights or legitimate interests in the Disputed Domain Name.
- c) The Respondent uses the Disputed Domain Name in bad faith as the website to which the Disputed Domain Name resolved made use of the Complainants’ MS DHONI trademark in order to raise advertising revenue through the use of sponsored or “click through” links.
The Respondent did not file a formal Response to the Complainant’s contentions.
- Discussion and Findings
The Panel finds that for the purposes of this dispute, the interests of the Complainants are co-extensive, and their grievance against the Respondent arises from common legal interests and that it is appropriate for them to proceed as joint Complainants. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.16 and panel decisions cited therein.
The Panel notes that no formal Response has been filed. The Respondent has been properly served with notice of these proceedings and is clearly aware of the proceedings (see procedural history above). Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any formal Response. While the Respondent’s failure to file a formal Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see e.g. Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements:
i. the Disputed Domain Name is identical to or confusingly similar to a trademark or service mark in which the Complainant has rights;
ii. the Respondent has no rights or legitimate interests in the Disputed Domain Name;
iii. the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
So far as registered trademark rights are concerned the filed evidence at the date the Complaint was filed establishes that the Complainants have filed various applications for trademarks in respect of the term MS DHONI. The Complainants’ Supplemental Filing introduces evidence that, subsequent to filing the Complaint, three of these trademarks have been granted. The Panel does not need to consider whether to admit the Complainants’ Supplemental Filing as in any event the Panel has no hesitation in concluding that as at the date the Complaint was filed the Complainants have established they had rights as required by the Policy in the form of unregistered rights in the name MS Dhoni. In this regard the Panel adopts the approach set out in WIPO Overview 2.0 as follows:
“1.6 Can a complainant show UDRP-relevant rights in a personal name?
Consensus view: Personal names that have been registered as trademarks are generally protected under the UDRP. While the UDRP does not specifically protect personal names as such, in situations where a personal name unregistered as a trademark is being used for trade or commerce, the complainant may be able to establish common law or unregistered trademark rights in that name. In order to do so, proof of use of the person’s name as a distinctive identifier of goods or services offered under that name would normally be required [see also paragraph 1.7 below]. A trademark-equivalent basis has been found in the common law action of passing-off, which is generally intended to prevent the making of misrepresentations to the public in the context of trade, and which if established may provide grounds for reliance on a personal name for the purpose of the UDRP.”
Given the relevant facts (see above) the Panel finds that the Complainants have clearly established unregistered trademark rights in the name MS Dhoni (the “MS DHONI trademark”).
The Panel holds that the Disputed Domain Name is identical to the MS DHONI trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled. It is well established that the specific top level of the domain name (in this case “.com”) does not generally affect the domain name for the purpose of determining whether it is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that demonstrate a right or legitimate interest in the domain name:
- before any notice to you 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 fide offering of goods or services; or
- you (as an individual, business or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
iii. you 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.
None of these apply in the present circumstances. The Complainants have not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the MS DHONI trademark. Moreover, the Panel finds that the Complainants have established they have prior rights in the MS DHONI trademark which precede the Respondent’s registration of the Disputed Domain Name. The Complainants have therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish any rights or legitimate interests in the Disputed Domain Name. Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
In the present circumstances, the distinctive nature of the MS DHONI trademark, and the evidence as to the extent of the reputation the Complainants enjoy in the MS DHONI trademark, and the identical nature of the Disputed Domain Name to the MS DHONI trademark, and the lack of any explanation from the Respondent as to why he registered the Disputed Domain Name leads the Panel to conclude the registration and use was in bad faith. In the present case, the Panel concludes that it is highly unlikely that the Respondent acquired the Disputed Domain Name independently and without knowledge of the First Complainant. The website which was linked to the Disputed Domain Name comprised a series of “click through” links to other third party websites. The Panel infers that some consumers, once at the Respondent’s website would follow the provided links and “click through” to other sites. The Respondent presumably earned “click through” linking revenue as a result. The Panel infers the Respondent’s website was automatically generated. This does not however matter. It is well established that where a domain name is used to generate revenue in respect of “click through” traffic, and that traffic has been attracted because of the name’s association with the complainant, such use amounts to use in bad faith, see for example Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315; Owens Corning v. NA, WIPO Case No. D2007-1143; McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353; Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912; Rolex Watch U.S.A., Inc. v. Vadim Krivitsky, WIPO Case No. D2008-0396.
Further the Panel notes the Respondent has not filed a formal Response and hence has not availed himself
of the opportunity to present any case of legitimate use that he might have. The Panel infers that none
The Panel also finds that the Respondent has engaged in a pattern of registering domain names corresponding to the names of famous persons which provides further evidence of bad faith as do the two previous NAF proceedings where the Respondent was found to have registered and used the domain names in bad faith. Finally the Panel also notes the Respondent’s offer to sell the Disputed Domain Name to the Complainants for USD 1,500 which is further evidence of bad faith (see Policy paragraph 4(b)(i))
As a result, and applying the principles in the above noted UDRP decisions, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 <msdhoni.com> be transferred to the Complainants.
Nick J. Gardner
Date: October 27, 2016