Indian national cricket team captain Mahendra Singh Dhoni and his trademark management firm Rhiti Sports Management secured the domain name www.msdhoni.com in a favourable trademark and personality rights infringement order against David Hanley of New York, who was squatting on the domain name.

Scriboard managing partner Rodney D Ryder acted for Dhoni and Rhiti before the World Intellectual Property Organisation’s arbitration and mediation centre.

US Firm Revision Legal PLLC acted for Hanley.

Dhoni complained, on 19 August, to the WIPO that Hanley owned a website by a domain name which was identical to the “MS Dhoni” trademark, in order to raise advertising revenue through the use of sponsored or “click through” links. Hanley did not file a formal response to this complaint.

WIPO’s panelist Nick J Gardner noted in his order that the respondent has no rights or legitimate interest in the disputed domain name and is using it in bad faith. Hanley had earned $27m ad-generated revenue through this website last year.

Gardner noted:

“[Dhoni] 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 23 December, 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 [Dhoni] 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.”

On Hanley, Gardner added: >“The Respondent has registered other domain names corresponding to the names of well known individuals - corresponding to Naima Mora who is an American fashion model; corresponding to Roland Emmerich who is a film director; corresponding to Peter Nagy who is an American artist and 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.”

Ryder told Legally India that Scriboard manages Dhoni’s entire trademark portfolio. Scriboard, which was set to focus exclusively on legal education in the field of intellectual property after merging with ANM Global in 2010, now exists as a separate law firm. Ryder confirmed that the merger with ANM Global did not formally conclude.