Committee, United States Olympic Committee, and CTV Inc. v.
Claim Number: FA0903001253280
Complainants are International
Olympic Committee, United States Olympic Committee, and CTV Inc. (“Complainant”), represented by James
L. Bikoff, of Silverberg Goldman & Bikoff, LLP, Washington,
D.C., USA. Respondent is Texas
International Property Associates - NA NA (“Respondent”), represented by Gary
Wayne Tucker, of Law Office of Gary Wayne Tucker,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ctvolympics.com>, registered with Compana, LLC.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 19, 2009; the National Arbitration Forum received a hard copy of the Complaint on March 20, 2009.
On March 23, 2009, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <ctvolympics.com> domain name is registered with Compana, LLC and that the Respondent is the current registrant of the name. Compana, LLC has verified that Respondent is bound by the Compana, LLC registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 26, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 15, 2009 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
A timely Response was received and determined to be complete on April 15, 2009.
On April 23, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G Lyons as Panelist.
Complainant requests that the domain name be transferred from Respondent to CTV, Inc.
Complainant asserts trademark rights and alleges that the disputed domain name is both identical and is confusingly similar to the trademarks.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent is a serial cybersquatter which registered and is using the disputed domain name in bad faith.
Respondent states that it “agrees to the relief requested by the Complainant and will, upon order of the Panel, do so.” Respondent goes on to add that “[t]his is not an admission to the three elements of 4(a) of the policy but rather an offer of a ‘unilateral consent to transfer’, as prior Panels have deemed it.”
Response contains no substantive submissions relevant to Paragraph 4(a) of the Policy.
1. International Olympic Committee (IOC) is a NGO founded in 1894 and responsible for the conduct and business of the modern day Olympic Games. It is the owner of trademark registrations for OLYMPIC and THE OLYMPICS.
States Olympic Committee (USOC) is recognized by IOC charter as the National
Olympic Committee for the territory of the
3. CTV Inc. is a Canadian commercial broadcasting company that IOC has licensed to use the trademark OLYMPIC in relation to the international broadcasting of the upcoming 2010 Winter Olympics in Vancouver and the 2012 Summer Games in London. CTV Inc. holds trademark registrations for CTV.
4. Respondent does not specify its business but appears to deal in domain names.
5. Respondent registered the disputed domain name on February 11, 2006.
6. A website corresponding with the disputed domain name carries third party commercial advertising.
7. There is no relationship between Respondent and any of IOC, USOC or CTV Inc., nor has any of IOC, USOC or CTV Inc. authorized Respondent to use its trademark(s) or any domain name incorporating the trademark(s).
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “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.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Notwithstanding the foregoing, a panel may grant a complainant’s requested relief when a respondent consents to that relief.
Preliminary Procedural Issue #1: Consent to Transfer
An issue arises as to whether the Panel should decide this case under the Policy given that Complainant calls for transfer of the disputed domain name and Respondent answers that call.
In the case of Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005), it was said that “where Respondent has agreed to comply with Complainant’s request [to transfer the domain name], the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”
In Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) the panel decided that “the parties have both asked for the domain name to be transferred to the Complainant .... Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.” See also Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003).
By way of contrast, in Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Nat. Arb. Forum July 17, 2008), the panel stated that:
Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy
and in Barrow Indus. Inc. v.
Paragraph 10 of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) sets out the general powers of the Panel. Paragraph 10(a) states that the “Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules” and Paragraph 10(c) states that the “Panel shall ensure that the administrative proceeding takes place with due expedition.”
Respondent argues that “due expedition” means that Panel should not diffuse its energy on matters which do not require a decision. That argument has received sufficient attention in earlier decisions under this Policy and, for present purposes, all this Panel need decide is that if a decision of whatever proper scope can be rendered in a timely manner then it is rendered with due expedition.
Panel finds in this case that the consent-to-transfer statement (set out above) in Response is ambiguous and that since Respondent has otherwise denied any breach of the Policy, it is correct and proper to apply the Policy.
Preliminary Procedural Issue #2: Multiple complainants
Complaint was filed jointly by IOC, USOC, and CTV Inc. and so that raises consideration of Paragraph 3(a) of the Rules which states that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.”
Prior panels interpreting the Rule 3(a) have
generally required multiple named complainants to demonstrate a commercial link
between one another. Here, the
uncontradicted assertions are that IOC has recognized USOC as the National
Olympic Committee for the territory of the
Panel finds that IOC, USOC and CTV Inc. are sufficiently commercially linked and so form an ‘entity’ for the purposes of Rule 3(a). They are therefore referred to collectively as Complainant in this administrative proceeding.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation of whether a complainant has rights in a trademark – and an examination of identicality or confusing similarity.
The Policy does not distinguish between registered and unregistered trademark rights and it is widely accepted that a trademark registered with a national authority is prima facie evidence of trademark rights for the purposes of the Policy. For those reasons, Panel finds that Complainant has rights in the trademarks CTV, OLYMPIC and THE OLYMPICS by virtue of various national and international trademark registrations shown in evidence.
Likewise, it is widely accepted that the addition of a gTLD such as “.com” is trivial and will not of itself prevent a finding of legal identity in the comparison of a certain trademark and domain name.
Although IOC, USOC and CTV Inc. collectively comprise Complainant in these proceedings, that does not entail a finding that Complainant has rights in any portmanteau combination of the trademarks found to belong to the individual entities.
There is no legal identity between the disputed domain name and any one of the relevant trademarks. The remaining enquiry is one of confusing similarity and the proper question is whether CTVOLYMPICS is confusingly similar to any of CTV, OLYMPIC or THE OLYMPICS.
Since Complainant has relied for its trademark rights on registration and not reputation, the assessment of confusing similarity can pay no regard to the repute of any of the registered trademarks. For that reason Panel finds there to be no confusing similarity in the comparison of CTVOLYMPICS with CTV.
On the other hand, the addition of three arbitrary letters, CTV, to the word OLYMPICS which would in Panel’s opinion be readily discerned as its distinctive element of the domain name, leads to the finding that CTVOLYMPICS and OLYMPIC are terms which are confusingly similar.
Accordingly, Complainant has established the first limb of the Policy.
Complainant has the burden to establish that Respondent has no rights
or legitimate interests in the domain name.
Nevertheless, it is well settled that Complainant need only make out a prima
facie case, after which the onus shifts to Respondent to demonstrate rights
or legitimate interests. See Do The Hustle, LLC v. Tropic Web,
Respondent makes an unsupported denial of Complainant’s allegation that it lacks rights or legitimate interests in the domain name. Nevertheless, the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of Policy ¶ 4(a)(ii):
(i) 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
(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.
The WHOIS data does not support any argument that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has any trademark rights. Complainant has stated there to be no relationship between it and Respondent.
Respondent is not using, nor has it presented evidence of any demonstrable
preparations to use the disputed domain name in connection with a bona fide
offering of goods or services. The only
use is bad faith use, as to which see more below. See Fox
News Network, LLC v. Reid, D2002-1085 (WIPO
The Panel finds that Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, and that Respondent in failing to provide any detail has not discharged the onus which fell to it.
The Panel finds that Respondent has no rights or legitimate interests in the domain name and so Complainant has satisfied the second limb of the Policy.
Paragraph 4(b) of the Policy sets out the circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on‑line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
What is noteworthy about Paragraphs 4(b)(i)-(iv) is that they are all cases of both registration and use in bad faith. In this case, Complainant has not specifically relied on any of those grounds and chose to raise independent claims of bad faith registration and bad faith use, however Panel finds that Respondent’s conduct falls squarely within Paragraph 4(b)(iv).
In particular, the evidence shows public announcement in 2005 of CTV Inc.’s successful bid for coverage of the upcoming Winter and Summer Olympic Games, long before the disputed domain name was registered. Moreover, CTV Inc. has an active and relevant website at www.ctvolympic.ca. Panel has already found a likelihood of confusion between the disputed domain name and Complainant’s trademark. The website corresponding to the disputed domain name is clearly of a commercial nature and it is more likely than not that Respondent is benefitting from pay-per-click revenue from that website. In short, all the elements of Policy ¶ 4(b)(iv) are present and Panel need not look for other evidence of bad faith registration and bad faith use.
Complainant has satisfied the third and final limb of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ctvolympics.com> domain name be TRANSFERRED from Respondent to CTV, Inc.
Debrett G Lyons, Panelist
Dated: May 6, 2009
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