Palmer Management Limited v Eric Smith-Hutchon

WIPO Case No. D2025-0689

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Palmer Management Limited v. Eric Smith-Hutchon

Case No. D2025-0689

1. The Parties

1.1 The Complainant is Palmer Management Limited, United Kingdom (“U.K.”), represented by Mills &

Reeve LLP, U.K.

1.2 The Respondent is Eric Smith-Hutchon, U.K.

2. The Domain Name and Registrar

2.1 The disputed domain name <coldpalmer.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2025. At that time, publicly available WhoIs details did not identify the registrant of the Domain Name and the respondent was identified in the Complaint as Coldpalmer Limited.

3.2 On the same day, the Center transmitted by email to the Registrar a request for registrar verification in

connection with the Domain Name. Also on February 20, 2025, the Registrar transmitted by email to the
Center its verification response disclosing underlying registrant and contact information for the Domain
Name.

3.3 The Center sent an email to the Complainant on February 24, 2025, providing the registrant and

contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the
Complaint. The Complainant filed an amended Complaint later that day.

3.4 The Center verified that the amended 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”).

3.5 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 5, 2025. In accordance with the Rules, paragraph 5,

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the due date for Response was March 25, 2025. The Response was filed with the Center on March 25,
2025.

3.6 The Center appointed Matthew S. Harris as the sole panelist in this matter on April 2, 2025. 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.

3.7 On April 3, 2024, the Respondent forwarded to the Center a copy of an undated letter to the

Complainant, and asked that this be brought to the Panel’s attention.

4. Factual Background

4.1 Cole Palmer is an internationally renowned professional footballer in the English Premier League. He

played for Manchester City Football Club’s senior team from 2020 to 2023 and has played for Chelsea
Football Club’s senior team, since his debut match on September 2, 2023. Mr. Palmer also plays for the
England national men’s senior team, having made his debut on November 17, 2023, during England’s UEFA
Euro 2024 qualifying match against Malta at Wembley Stadium in London.

4.2 The Complainant is a company incorporated in England and Wales. It is the management company of

Mr. Palmer, and Mr. Palmer is its sole director. It holds the rights to commercially exploit the name, image, signature, and other characteristics of Mr. Palmer pursuant to an agreement between the Complainant and Mr. Palmer dated October 14, 2021.

4.3 On December 30, 2023, during Chelsea FC’s 3-2 win over Luton Town Football Club, Mr. Palmer debuted his “goal celebration” which is characterised by a shivering motion whereby Mr. Palmer rubs his hands along his crossed arms. His use of this “goal celebration” at that match and subsequent matches has

resulted in him being referred to and known by the nickname “Cold Palmer”. That nickname has been
extensively used to refer to Mr. Palmer in the media and on social media, including on Chelsea FC’s official

YouTube channel (which has 4.9 million subscribers).

4.4 Mr. Palmer’s name has been used to promote various goods and services, through various

endorsement deals and campaigns undertaken or authorised by Mr. Palmer. These include an endorsement
deal with global sportswear brand, Nike, between 2021 and 2024 and an endorsement deal with fashion
brand, boohooMAN.

4.5 The Domain Name was registered on April 9, 2024, by a Mr. Smith-Hutchon. Mr. Smith-Hutchon is the

sole director and the sole person with significant control of Coldpalmer Limited, a company registered in
England and Wales on April 14, 2024. Since the incorporation of Coldpalmer Limited, the Domain Name has
been used by that company for a website used to sell hats and clothing on which is displayed the name
“coldpalmer” and/or the following logo:

4.6 “Cold Palmer Limited”[1] has also applied for and/or obtained various UK registered trade marks that include this logo and the “coldpalmer” name. For example, “Cold Palmer Limited” applied for a registered trade mark on July 1, 2024 and that this mark proceeded to registration (registration no, UK00004070331) on

[1] There is no company with this exact name (i.e. with a space between the words “Cold” and “Palmer”) recorded on the UK company

September 27, 2024 in respect of goods and services in classes 9, 14, 16, 18, 21, 24, 25, 26, 35, 42 and 45.

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This particular mark takes the following form:

4.7 On May 29, 2024, “Cold Palmer Limited” also applied for and obtained a similar UK trade mark

registration, but with the text of the mark reading “coldpalmer.com” (registration no. UK00004057249).[2]

[2]These trade marks are not expressly referred to in the Complaint, but they were mentioned in the letter that the Complainant sent to

4.8 The Complainant sent a letter to Coldpalmer Limited, on December 9, 2024 in which it demanded,

inter alia that the company change its name, stop selling products on the website operating from the Domain

Name, stop selling products using the “Coldpalmer” name, and that it surrender its trade mark registrations.

4.9 Mr. Smith-Hutchon responded to that letter in an email dated December 11, 2024. That email

contained the following statements:

“Before we take the next steps, it is only right and courteous that we offer our trademarks [sic] & web-names

for sale to you”;

“You can make this logo along with others worth tens of millions of pounds if not a lot more and in our

opinion, you understand that and want to steal a [sic] this for free well that’s not going to happen.”; and

“I must remind you that Didier Drogba used to do the celebration in question long before Cole Palmer. It’s

known as the cold celebration.”

4.10 According to information available on the United Kingdom Intellectual Property Office (“UKIPO”)

website, the Complainant has filed cancellation proceedings at the UKIPO in respect of Coldpalmer Limited’s

registered trade marks.

5. Parties’ Contentions

A. Complainant

5.1 The Complainant contends that it has satisfied each of the elements required under the Policy for a

transfer of the Domain Name.

5.2 Notably, the Complainant contends that by reason of the use made of Mr. Palmer’s name the “Cold Palmer” nickname, the Complainant holds rights in that name and nickname for the purposes of the Policy, citing a number of UDRP decision in this respect, including Julia Roberts v. Russell Boyd, WIPO Case No. D2000-0210. It contends that the Domain Name is identical to Mr. Palmer’s name and confusingly similar to

Mr. Palmer’s nickname.

5.3 The Complainant further contends that the use made by the Respondent of the Domain Name does

not amount to a bona fide offering of goods or services, citing in this respect the decision in Madonna
Ciccone, p/k/a Madonna v. Dan Parisi, WIPO Case No. D2000-0847.

5.4 Finally, the Complainant maintains that the Domain Name was registered in order to trade upon the

fame of Mr. Palmer for commercial gain. This is said to amount to bad faith registration and use.

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B. Respondent

5.5 The Respondent filed a Response, but it is short. In the circumstances, it is convenient simply to set out the substantive element of this in full. It reads as follows:

“Mr Cole Jeramine Palmer was born 06/05202 [sic] in our opinion his birth name is not as close to
coldpalmer.com as his legal team are on record of stating. Why does Mr Palmer not own the domain name
colepalmer.com[.] Why did Mr Palmer not try and purchase the domain name coldpalmer.com back in 2023
if that was his nickname close to his birth name. We feel this is bullying of the highest order to demand the
surrender of a domain name just because Mr Cole Jeramine Palmer did not have to foresight to purchase the
name is totally unacceptable. Mr Palmer’s nickname was Ice Cold Palmer back in 2023 or Ice Palmer and
cold palmer.”

5.6 On April 3, 2024, the Respondent forwarded to the Center a copy of an undated letter to the Complainant, and asked that this be brought to the Panel’s attention. The letter did not contain any submissions in these proceedings, but included an alternate settlement proposal in respect of the same.

6. Discussion and Findings

A. Identical or Confusingly Similar

6.1 It is generally accepted that the first element functions primarily as a standing requirement. The

standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward
comparison between the complainant’s trade mark and the disputed domain name. WIPO Overview of
WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

6.2 The Complainant does not rely upon any registered trade mark right, but it has long been established

that unregistered trade mark rights are sufficient in this respect. Further, it has also long been established
that rights under the English law of passing off can provide unregistered rights for the purposes of the Policy
(see, for example, Margaret Drabble v. Old Barn Studios Limited, WIPO Case No. D2001-0209).

6.3 The Panel is satisfied that the Complainant does have such rights both in the name “Cole Palmer” and

WIPO Overview 3.0, section 1.3.

the nickname “Cold Palmer”. Mr. Palmer is a footballer of considerable international renown and has the Complainant has provided evidence of extensive use of the nickname not just by the press, but also in connection with the activities of the Premier League football team for which he plays. The Complainant has also demonstrated that it has rights in those marks pursuant to an agreement between it and Mr. Palmer. The Complainant has therefore established unregistered trade mark or service mark rights for the purposes of the Policy.
successfully sought to commercialise his name beyond the field of football. In the Response, the

6.4 The entirety of the term “Cold Palmer” is reproduced within the Domain Name (particularly when one

takes into account the fact that spaces cannot form part of a domain name). Further, the name “Cole
Palmer”, is only one letter different from that term. Accordingly, the Panel also finds that the marks in which
the Complainant has rights are both recognisable within the Domain Name, and that accordingly the Domain
Name is confusingly similar to that mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

6.5 The Panel, accordingly, finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

6.6 It is clear to the Panel that the Respondent has registered the Domain Name with the intention of

using the fact that Mr. Palmer is known by the nickname Cold Palmer, in order to sell through a company
under the Respondent’s control, clothing using that name and a logo that is intended to be understood as a

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reference to Mr. Palmer’s “goal celebration”. It is the only sensible interpretation of that name and logo on not sought to deny that this is the case. The deliberate use of and taking advantage of another’s name or trade mark in order to sell one’s own products, does not amount to a bona fide offering of products for the purposes of the Policy.

6.7 The Respondent has not advanced a case that he has relevant rights for the purposes of the Policy on

the basis that Cold Palmer Limited has successfully obtained trade mark registrations that incorporate the
term “coldpalmer”. However, even had he done so, the Panel is not persuaded that this would make a
difference to the analysis. The existence of trade mark rights is something that a panel will often consider to
be highly relevant to the assessment of whether a respondent has rights or legitimate interests and will
ordinarily support a finding of the existence of such rights. But it does not automatically grant such rights
(see section 2.12 of the WIPO Overview 3.0). Where, as here, a panel is satisfied that a respondent has
deliberately adopted a name and domain name that seeks to take advantage of a complainant’s pre-existing
rights, the fact that a respondent can also point to a mark that it has subsequently obtained that incorporates
terms used in the domain name (together with other elements such as a logo), is unlikely to provide it with a
relevant right for the purposes of the Policy. This is particularly so where, as is again the case here, those
marks have only been registered for a short period of time and are subject to active challenge by the
Complainant.

C. Registered and Used in Bad Faith

6.8 For similar reasons set out above in the context of the assessment of rights or legitimate interests, the Panel is satisfied that the Domain Name has been registered and has been used in bad faith. The Panel is persuaded that the Respondent registered the Domain Name in order to make a deliberate reference to Mr. Palmer’s name and nickname and his unregistered rights in the same. Further, the Panel is satisfied that

WIPO Overview 3.0). The Respondent’s activities also fall within the scope of the example of circumstances indicating bad faith set out in paragraph 4(b)(iv) of the Policy.
this was done by the Respondent in order to gain a commercial advantage by using that name’s association faith registration and use (see section 3.1 of the

with Mr. Palmer to sell clothing through a company that the Respondent controlled. In so doing, the

6.9 It is no answer to this to say, as the Respondent appears to contend, that the Complainant could have complainant might or could have done, but what the respondent did and for what purpose the domain name was registered. registered the Domain Name first if it wanted to. It is a contention that fundamentally misunderstands how	the UDRP operates. It involves the regurgitation of an old argument, frequently recited by respondents in the early days of the UDRP that a registration could not be in bad faith, because a complainant could have registered the domain name itself and that the domain name was available on a first come first served basis.
6.10 For sake of completeness, it also makes no difference to the analysis if some other footballer than Mr. Palmer first engaged in the “cold celebration”. The Panel is prepared to accept for present purposes that this is right.[3] But even if it is, what is said to be registration and use in bad faith is the adoption of a domain
name that deliberately incorporates or refers to Mr. Palmer name and nickname, and thereby the shoulder logo, is not a matter for the Panel, but the Respondent’s use of the logo is relevant to the assessment of the Respondent’s motivation in registering and using the Domain Name.

[3]The Respondent refers to Didier Drogba, and the Panel notes that the Wikipedia page for Cole Palmer suggests that Mr. Palmer has

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7. Decision

7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <coldpalmer.com> be transferred to the Complainant.

/Matthew S. Harris/
Matthew S. Harris
Sole Panelist
Date: April 9, 2025

register, but it would appear that this is just a misspelling of Coldpalmer Limited’s name.

Coldpalmer Limited, on December 9, 2024, and this letter was provided with the Complaint.

attributed this move to his his former Manchester City teammate Morgan Rogers.