American soccer prodigy scores in domain name case
In Adu v Fushille, a World Intellectual Property Organization (WIPO) panellist has ordered the transfer of 'FreddyAdu.com' to 15-year-old US soccer prodigy Freddy Adu. The panellist held, among other things, that the registrant lacked legitimate interests in the domain name, noting that he had not made any "demonstrable preparations" to use it as a legitimate non-commercial fan website.
Adu recently completed his first professional season in US Major League Soccer (MLS) with DC United - a team based in Washington DC. In November 2003 he signed a multi-year contract with MLS and a $1 million endorsement deal with Nike.
Adu's representatives filed a Uniform Domain Name Dispute Resolution Policy (UDRP) complaint against California-resident Frank Fushille following his registration of 'FreddyAdu.com'. Fushille had initiated contact one year prior to the filing of the complaint with Adu's marketing agency offering to manage 'FreddyAdu.com' as "an official website" for the young soccer star. Between June 2003 and March 2004, Fushille traded correspondence with Adu's agent, offering the website in exchange for:
"majority ownership of the website, participation in all corporate advertising negotiations, special admission to all matches, charity events and all other opportunities that promote goodwill in which [Adu] takes part."
Adu's representatives rejected this offer and placed Fushille on notice that they would commence a UDRP proceeding against him unless the domain name was transferred to Adu.
WIPO panellist Richard Lyon issued a decision granting transfer of the 'FreddyAdu.com' domain name to Adu, finding that he had established trademark rights in his name prior to Fushille's registration of the domain name. In addition, Lyon found that Fushille lacked rights and legitimate interests in the domain name and that there were "no demonstrable preparations" for use of the domain name as a legitimate non-commercial fan website.
Fushille claimed that he could not be found guilty of bad faith registration of the domain name since Adu did not sign his first professional contract until over one year after Fushille's registration of 'FreddyAdu.com' and Adu's name "had not yet achieved the fame and commercial connection necessary to make it a trademark". This argument was rejected by Lyon.
Lyon used "an objective standard based upon the proof submitted by the parties" to determine whether the domain name had been registered and used in bad faith. He noted that:
"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 behaviour. The panel here has no reason to doubt [Fushille's] devotion to the game of soccer or his admiration for [Adu]. Since his conduct plainly constitutes bad faith under the policy, those facts are irrelevant."
James L Bikoff and Patrick L Jones, Silverberg Goldman & Bikoff, Washington DC
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