International Olympic Committee v. More
Virtual Agency
Claim Number: FA0204000112584
Complainant
is International Olympic Committee,
Lausanne, SWITZERLAND (“Complainant”) represented by James L. Bikoff, of Silverberg
Goldman & Bikoff, LLP.
Respondent is More Virtual Agency,
Bonn, GERMANY (“Respondent”).
The
domain name at issue is <olympic.biz>,
registered with Key-Systems Gmbh.
The
undersigned certifies that he has acted independently and impartially, and to
the best of his knowledge, has no known conflict in serving as Panelist in this
proceeding.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint,
as it timely filed the required Intellectual Property (IP) Claim Form with the
Registry Operator, NeuLevel. As an IP
Claimant, Complainant timely noted its intent to file a STOP Complaint against
Respondent with the Registry Operator, NeuLevel and with the National
Arbitration Forum (the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on April 26, 2002; the Forum
received a hard copy of the Complaint on April 30, 2002.
On
May 2, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 22,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance with paragraph 2(a) of the Rules for
the Start-up Trademark Opposition Policy (the “STOP Rules”).
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On June 5, 2002, pursuant to STOP Rule 6(b), the Forum
appointed the Honorable
Charles K. McCotter, Jr. (Ret.) as the single Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has discharged its responsibility under Paragraph 2(a) of
the STOP Rules. Therefore, the Panel
may issue its decision based on the documents submitted and in accordance with
the STOP Policy, STOP Rules, the Forum’s STOP Supplemental Rules and any rules
and principles of law that the Panel deems applicable, without the benefit of
any Response from Respondent.
Transfer
of the domain name from Respondent to Complainant.
A. Complainant
1. Respondent’s <olympic.biz> domain
name is identical to Complainant’s OLYMPIC mark.
2. Respondent has no rights or legitimate
interests in the <olympic.biz> domain name.
3. Respondent registered the <olympic.biz>
domain name in bad faith.
B. Respondent failed to submit a Response.
Complainant is the owner of numerous
OLYMPIC marks registered internationally, for example, Swiss Trademark Reg. No.
406021 first used in 1894, International Register (Madrid Protocol) Reg. No.
609691, and United Kingdom Reg. No. 339990, among others.
Complainant was founded in 1894 as an
international, non-governmental, non-profit organization to serve as the
umbrella organization of the Olympic Movement. In 1896, under Complainant’s
direction, Greece hosted the first modern era Olympic Games. Since 1896,
Complainant has supervised the organization of twenty-four Summer Games and
nineteen Winter Games. Complainant owns all rights to the Olympic Games, the
Olympic symbol, the Olympic flag, motto and anthem and the OLYMPIC mark.
Respondent registered the disputed domain
name on March 27, 2002 and is not a franchisee or a licensee of Complainant.
Complainant’s research shows evidence that Respondent registered 225 “.biz”
domain names through Key-Systems GmbH at or around the same time.
Paragraph 15(a) of the STOP Rules instructs this Panel
to “decide a complaint on the basis of the statements and documents submitted
in accordance with the Policy, these Rules and any rules and principles of law
that it deems applicable.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the STOP Rules
and draw such inferences it considers appropriate pursuant to paragraph 14(b)
of the STOP Rules.
Paragraph
4(a) of the STOP Policy requires that the Complainant must prove each of the
following three elements to obtain an order that a domain name should be
transferred:
(1) the domain name is identical to a
trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or
legitimate interests in respect of the domain name; and
(3)
the domain name has been registered or is being used in bad faith.
Due
to the common authority of the ICANN policy governing both the Uniform Domain
Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel
will exercise its discretion to rely on relevant UDRP precedent where
applicable.
Under
the STOP proceedings, a STOP Complaint may only be filed when the domain name
in dispute is identical to a trademark or service mark for which a Complainant
has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily
involves a disputed domain name that is identical to a trademark or service
mark in which a Complainant asserts rights.
The existence of the “.biz” generic top-level domain (gTLD) in the
disputed domain name is not a factor for purposes of determining that a
disputed domain name is not identical to the mark in which the Complainant
asserts rights.
Complainant
has established that it has rights in the OLYMPIC mark through international
registration and continuous use following Complainant’s founding in 1894.
Respondent’s <olympic.biz> domain name is identical to
Complainant’s OLYMPIC mark in form and spelling, thereby satisfying the
identical inquiry. See Princeton Linear Assoc., Inc. v. Copland o/b/o LAN
Solutions Inc. FA 102811 (Nat. Arb. Forum Feb. 8, 2001) (finding that, due
to the nature of STOP proceedings, identicalness between Complainant's mark and
disputed domain name should never be a threshold issue).
The
Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Respondent has failed to come forward
with a Response. Therefore, it is presumed that Respondent has no rights or
legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to
respond can be construed as an admission that they have no legitimate interest
in the domain names). Furthermore, when Respondent fails to submit a Response
the Panel is permitted to make all inferences in favor of Complainant. See Vertical Solutions Mgmt., Inc. v.
Webnet-Marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure
to respond allows all reasonable inferences of fact in the allegations of
Complainant to be deemed true).
Complainant has established that it has
rights in the disputed domain name because it is the owner of the relevant
registered trademarks worldwide. Respondent has not come forward to proffer any
evidence that it has rights in the OLYMPIC mark anywhere in the world. Due to
the international fame of Complainant’s mark, it can be inferred that
Respondent is not the owner of a trade or service mark that is identical to the
contested domain name. Therefore, Respondent has no rights or legitimate interests
in the <olympic.biz> domain name under STOP Policy ¶ 4(c)(i). See
Victoria’s Secret v. Asdak, FA
96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent
was not commonly known by a domain name confusingly similar to Complainant’s
VICTORIA’S SECRET mark because of Complainant’s well-established use of the
mark); see also Nike, Inc. v. B.
B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or
legitimate interests where one “would be hard pressed to find a person who may
show a right or legitimate interest” in a domain name containing Complainant's
distinct and famous NIKE trademark and that no person besides Complainant could
claim a right or a legitimate interest with respect to the domain name
<nike-shoes.com>).
It can be inferred that Respondent’s
planned use of the domain name identical to Complainant’s mark would be to
divert Internet users interested in Complainant’s services to Respondent’s
website. Therefore, Respondent’s registration of <olympic.biz> is
not in connection with a bona fide offering of goods and services under STOP
Policy ¶ 4(c)(ii). See Credit Suisse Group o/b/o Winterthur
Ins. Co. v. Pal-Ex Kft, FA 102971 (Nat. Arb. Forum Feb. 25, 2002) (“The use
of another's trademark to attract users to Respondent's domain is not
considered to be a bona fide offering of goods or services pursuant to STOP
Policy ¶ 4(c)(ii)”); see also Toronto-Dominion
Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or
legitimate interests where Respondent diverted Complainant’s customers to his
websites).
There is no evidence on the record, nor
has Respondent come forward to establish that it is commonly known by the <olympic.biz>
domain name pursuant to STOP Policy ¶ 4(c)(iii). Furthermore, it would be difficult to find a person who could
show rights or legitimate interests in an internationally renowned mark that
has been in use since 1894. Complainant’s famous mark prevents Respondent from
claiming that it has been commonly known by an identical representation, mark
or domain name. See Nike, Inc. v.
B. B. de Boer, supra.; see also Nat’l Acad. Of Recording Arts & Sci
Inc. v. Lsites, FA 103059 (Nat. Arb. Forum Feb. 11, 2002) (finding that the
famous nature of Complainant’s GRAMMY mark prevented Respondent from being
commonly known by <grammy.biz>).
The Panel finds that STOP Policy ¶
4(a)(ii) has been satisfied.
Respondent registered the domain name for
the purpose of preventing Complainant from registering its OLYMPIC mark. Respondent’s
actions evidence bad faith pursuant to STOP Policy ¶ 4(b)(ii). When it registered the domain name, by
virtue of the STOP registration procedure, Respondent had constructive notice
of the OLYMPIC trademark registrations, over one hundred years of trademark
protection and the international fame of the OLYMPIC mark. Therefore,
registration constituted bad faith infringement of Complainant’s right to
reflect its mark. See Toyota
Jidosha Kabushiki Kaisha v. S&S Enter. Ltd., D2000-0802 (WIPO Sept. 9,
2000) (finding that “Registration of a domain name goes further than merely
correctly using in an advertisement the trade mark of another in connection
with that other’s goods or services; it prevents the trade mark owner from
reflecting that mark in a corresponding domain name”); see also Peachtree
Software v. Scarponi, FA 102781 (Nat. Arb. Forum Jan. 23, 2002)
(finding bad faith under STOP Policy ¶ 4(b)(ii), noting that it
was reasonable to conclude Respondent registered <peachtree.biz>
with the intent to prevent Complainant from reflecting its PEACHTREE mark in a
corresponding domain name, given Respondent's knowledge of Complainant's mark
and Respondent's lack of rights or interests in the mark). Respondent was aware that
it was intentionally infringing upon Complainant’s mark. See Samsonite Corp. v. Colony Holding,
FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual
or constructive knowledge of a commonly known mark at the time of
registration).
Additionally, due to the aforementioned
international fame associated with Complainant’s mark, Respondent was
constructively aware of Complainant’s OLYMPIC mark and the opportunities
available to those affiliated with it. Respondent’s <olympic.biz> domain
name is identical to Complainant’s established OLYMPIC mark resulting in the
likelihood that Internet users will believe that there is some affiliation
between Respondent and Complainant; notwithstanding the fact that Respondent
had no authorization to make use of Complainant’s mark. Registration of the <olympic.biz>
domain name is evidence of bad faith pursuant to STOP Policy ¶ 4(b)(iv)
since it is inevitable that Respondent will attract unsuspecting Internet users
seeking Complainant’s website based on the goodwill associated with its famous
mark. See Red Bull GmbH v. Gutch,
D2000-0766 (WIPO Sept. 21, 2000) (finding that Respondent’s expected use of the
domain name <redbull.org> would lead people to believe that the domain
name was connected with Complainant, and thus is the equivalent to bad faith
use); see also Sony Kabushiki
Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith
registration and use where it is “inconceivable that the respondent could make
any active use of the disputed domain names without creating a false impression
of association with the Complainant”).
The Panel finds that STOP Policy ¶
4(a)(iii) has been satisfied.
Having established all three elements
required under the Start-Up Trademark Opposition Policy, the Panel concludes
that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the
domain name <olympic.biz> be
TRANSFERRED from Respondent to Complainant and that subsequent
challenges under the STOP Policy against this domain name SHALL NOT be
permitted.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: June 13, 2002
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