International Olympic Committee v. Richard Freeman a/k/a Return Pty Ltd.
Claim Number: FA0210000127799
Complainant is International Olympic Committee, Lausanne, SWITZERLAND (“Complainant”) represented by James L. Bikoff, of Silverberg Goldman & Bikoff LLP. Respondent is Richard Freeman, Darkes Forest Nsw, AUSTRALIA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <olympic.tv>, registered with The .tv Corporation, a VeriSign Company.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 10, 2002; the Forum received a hard copy of the Complaint on October 14, 2002.
On October 14, 2002, The .tv Corporation, a VeriSign Company confirmed by e-mail to the Forum that the domain name <olympic.tv> is registered with The .tv Corporation, a VeriSign Company and that the Respondent is the current registrant of the name. The .tv Corporation, a VeriSign Company has verified that Respondent is bound by the The .tv Corporation, a VeriSign Company 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 October 17, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 6, 2002 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 November 20, 2002.
Complainant filed a timely Additional Submission on November 25, 2002.
On December 9, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant is the International Olympic Committee (IOC) located at Lausanne, Switzerland.
The IOC is a famous organization, which sponsors the Olympic Games.
The IOC owns all rights to the Olympic Games, the Olympic symbol, the Olympic flag, motto and anthem, and the word Olympic. The IOC owns Swiss Trademark Registration No. 406,021 for the trademark OLYMPIC. The IOC owns registrations in many countries, including Australia and the United States. Several nations, including the United States and Australia, have passed national legislation to protect the OLYMPIC Mark as mandated in the Olympic Charter. On October 1, 2001, Australia enacted the “Olympic Insignia Protection Amendment Act of 2001” which states that the word “OLYMPIC” is a protected Olympic symbol.”
The IOC owns and maintains a number of websites, including websites containing the OLYMPIC Mark; e.g., <olympic.org>, <olympic.info>, <olympic.biz> and many more.
In the year 2000, the Olympic Games were held in Sydney, Australia.
Respondent registered the Domain Name, <olympic.tv> on July 12, 2000.
On October 2000, IOC counsel first placed Respondent on notice that his registration violated the IOC’s exclusive rights in the OLYMPIC Mark. Respondent did not respond to the letter. The IOC’s counsel wrote to Respondent again on November 1, 2000. Respondent did not respond to that letter, so the IOC and its counsel continued to monitor Respondent’s registration from the end of 2000 to July 2002. Respondent has passively held <olympic.tv> since registering it on July 12, 2000. On October 4, 2002, IOC’s counsel sent one final letter by e-mail to Respondent. Respondent did not respond. Given Respondent’s failure to respond, the IOC decided to proceed with its UDRP complainant against Respondent.
The domain name <olympic.tv> is identical and confusingly similar to the OLYMPIC Mark.
Respondent has no rights or legitimate interests in the domain name.
Respondent registered the domain name with full knowledge of Complainant’s rights in the OLYMPIC Mark.
Respondent registered the domain name in bad faith.
Respondent is Richard Freeman of Darkes Forest NSW, UNK, Australia.
Respondent registered two domain names on July 12, 2000. One of the domain names was <olympic.tv>. The purpose of the registrations was to use the domain names to protest against Complainant on behalf of the Australian Aboriginal community who were upset that Sydney received the Olympic Games over Beijing, China. Also there was a huge outcry over ticketing and other complaints. With less than two months to go before the start of the Olympic Games, a decision was made to not go ahead with a protest website on <olympic.tv>, mainly due to the unknown risk of potential litigation.
Respondent recently renewed the domain name <olympic.tv>. Respondent intends to use the website for discussion forums for critical analysis of the IOC and plans on making the site active in time for the start of the Athens Olympic Games in 2004.
The domain name was registered solely for use a protest site. Respondent has rights to the guarantee of free speech under the First Amendment of the U.S. Constitution.
Exemption from liability is protected by the “fair use” exemption under the U.S. Federal Anti-Dilution Act of 1996 for use of a famous mark if the use is for non-commercial purposes or for news reporting and commentary.
Respondent has legitimate rights and interests in the domain name and did not register the domain name in bad faith.
C. Additional Submissions
Respondent first published his “protest website” on November 22, 2002. This website was published long after the filing of this Complaint, and is a contrived attempt to demonstrate that Respondent has legitimate rights in the Domain Name. Respondent has no right to use Complainant’s mark in a domain name or website as a “protest site”. No First Amendment defense is available in this case. Respondent has provided no valid reason why he could not provide critical comment on the IOC without using the IOC’s Mark.
Respondent has failed to provide concrete evidence of his use of the <olympic.tv> website prior to the initiation of this dispute.
Criticism sites do not constitute fair use of a mark under the UDRP.
1. Complainant is a long-standing, world famous, continually active organization that operates under the OLYMPIC Mark worldwide.
2. Complainant owns trademarks for the OLYMPIC Mark in Australia, the United States and elsewhere and in addition is the beneficiary of legislation in Australia further protecting its OLYMPIC Mark.
3. In anticipation of the Olympic Games in Australia, Respondent registered the domain name <olympic.tv>. Respondent contends that he registered the domain name, as a potential criticism site to be used against the IOC regarding certain problems Respondent contends existed in Australia. Respondent presents no evidence, other than his personal assertions, that his purpose was as he states.
4. Respondent held the domain name passively from the date of registration on July 12, 2000, until 2002 at which time Respondent renewed the registration through 2004.
5. Complainant notified Respondent by letter in October 2000 and November 2000, that the registration of <olympic.tv> was in violation of Complainant’s trademark rights. No response was received to either letter. Complainant continued to monitor the registration awaiting its cancellation. When Respondent renewed the domain name, Complainant wrote yet another letter to Respondent dated October 4, 2002. Receiving no response to the last letter, Complainant filed this proceeding.
6. The domain name <olympic.tv> is identical or confusingly similar to Complainant’s trademark, OLYMPIC.
7. Respondent has no rights or legitimate interests in the domain name <olympic.tv>.
8. Respondent registered and used the domain name in bad faith.
9. Both Complainant and Respondent request the Panel to apply the law and legal precedents of the United States in reaching a decision in this proceeding. Neither party cites any law of another jurisdiction as applicable except certain legislation in Australia that purports to give special protection to Complainant’s trademark. The Panel finds that the parties have elected to have this dispute decided under the laws of the United States. The Panel will consider the court decisions and laws of the United States cited by the parties as appropriate authority where and if necessary to aid in the making of the decision in this case.
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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Identical and/or Confusingly Similar
Complainant has rights in the trademark, OLYMPIC, by virtue of the trademark registration in Australia, the United States and elsewhere in the world. That is sufficient to show rights under Policy ¶ 4(a)(i). See Koninklijke KPN N.V. v. Telepathy Inc. D2000-0217 (WIPO May 7, 2001).
The domain name <Olympic.tv> is identical to Complainant’s trademark, OLYMPIC.
The addition of the top-level domain (gTLD) to a word is without legal significance in a domain name dispute. See Busy Body, Inc. v. Fitness Outlet Inc, D2000-0127 (WIPO Apr. 22, 2000). This is true as to the ccTLD “tv” as well. See World Wrestling Fed’n Entm’t, Inc. v. Michael Rapuano a/k/a Bobby Rogers, DTV2001-0010 (WIPO May 23, 2001).
Complainant prevails under Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant shows by use of evidence and exhibits that it is the owner of the mark contained in the domain name at issue. Complainant contends that it has exclusive rights to use the mark. See Am. Online, Inc. v. Tencent Communications Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000). It is clear from the pleadings that Respondent is not an agent of Complainant nor authorized by Complainant to use the trademark. No evidence suggests that Respondent has ever been known as OLYMPIC or <olympic.tv>. Indeed, Respondent admits that the notion of registering the domain name came to Respondent as a result of Australia being chosen to host the Olympic Games.
As a result of Complainant’s showing, and Respondent’s apparent lack of rights and legitimate interests in the domain name <olympic.tv>, the burden must shift to Respondent to demonstrate Respondent’s rights and legitimate interests in the domain name. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000).
Respondent’s sole contention is that he registered the domain name for use as a “protest site” to air complaints of one kind or another against Complainant. This intention, Respondent argues, constitutes a proper use under Policy ¶ 4(c)(iii). Respondent states as follows: “The content of the website Olympic.tv is for criticism and commentary about the IOC and the Olympic Games, which I believe to be non commercial use and fair use…Commentary is intended to engage public opinion about the direction of the Olympic movement in a positive manner, not in order to tarnish the trademark ‘Olympic’”. This use is protected by free speech, Respondent contends.
The only evidence presented by Respondent consists of several articles critical of the Olympic movement written by various individuals who have no apparent connection to Respondent. None of this material has ever appeared on a website operated at <olympic.tv>. It is clear from the evidence, and both parties agree, that no website was posted using the domain name <olympic.tv> from the date of registration until after the filing of the Complaint in this proceeding. The domain name was passively held during the two-year period.
The rule most Panels employ is that once the complainant has made a prima facie showing, that the burden of production shifts to the respondent to show by providing concrete evidence that he has rights to or legitimate interests in the domain name at issue. Concrete evidence constitutes more than mere personal assertions. Just as a Panel should require a complainant to establish by means other than mere bald assertions that it is the owner of registered marks, so should the panel require that a respondent come forward with concrete evidence that the assertions made in the response are true. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000).
All Respondent offers in this case are bald assertions. No concrete evidence is presented to support any of Respondent’s personal declarations.
However, giving Respondent the benefit of the truth of his assertions that he intended to use the domain name as a “protest site” but never got around to doing so for a two year period and that he then decided to renew the domain name registrations with intent to use it in the future for a “protest site” changes in no way the ultimate result.
There is a line of cases regarding consumer free speech Complainant sites and a developing line of case law regarding such sites that attempt to define the limits to which a party may use the mark of another in a domain name to comment, criticize, disparage, or downplay the products or activities of another. See Robo Enters., Inc. v. Tobiason, FA 95857 (Nat. Arb. Forum Dec. 24, 2000); The New York Times Co. v. New York Internet Servs., D2000-1072 (WIPO Dec 5, 2000).
It is inappropriate to permit trademark owners to shut down sites that are aimed at criticism of the trademark holder because the content contained in the site is unfair, unwarranted, or untrue. Trademark rights may be limited by First Amendment concerns. See Wal-Mart Stores, Inc. v. wallmartcanadasucks.com and Kenneth J. Harvey, D2000-1104 (WIPO Nov. 23, 2000).
A distinction must be drawn between the domain name itself and the contents of the site which is reached through the domain name. A party may have First Amendment rights as to the content of the site, but that does not give the party an equal right to use the marks of another in the domain name. See Estee Lauder Inc. v. estelauder.com, esteelauder.net and Jeff Hanna, D2000-0869 (WIPO Sept. 25, 2000).
In the The New York Times Co. v. New York Internet Servs. case, it was stated as follows: “Even if the site at newyorktimes.com were purely a commentary or opinion site, NYIS would not be entitled to use THE NEW YORK TIMES mark in the domain name…” See D2000-1072 (WIPO Dec. 5, 2000). Free expression rights do not give a respondent a right or legitimate interest in a domain name that is intentionally chosen to be identical with or confusingly similar to the mark of another, even when the intention of Respondent is to comment or criticize the mark holder. See Estee Lauder Inc. v. estelauder.com estelauder.net and Jeff Hanna, supra.
A critical issue to be determined in “protest site” cases is whether the domain name in question itself signifies critical purposes, as opposed to imitation of the trademark at issue. A proper “protest site” makes some indication that the site is not the site of the trademark holder but is instead a site for criticism of the trademark holder. There must be a lack of confusion between the “protest site” and the trademark holder. Otherwise, there is initial interest confusion, which is impermissible. See Winchester Props., LLC v. DefaultData.com, FA 97114 (Nat. Arb. Forum June 22, 2001).
The indication that the site is one of criticism and not the site of the trademark holder is impossible when the domain name and trademark are identical, as is the factual situation in this case.
Not only has Respondent never used the domain name <olympic.tv> for any purpose from the date or registration through the date of the filing of the Complaint in this case, but even if he had used the site in the manner he anticipated at registration, such use would have not been a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Accordingly, Complainant prevails under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant’s argument to the effect that Respondent must have known of the fame of Complainant’s trademark at the time of registration is admitted by Respondent. Respondent intentionally selected the domain name for the purpose of criticism of Complainant in connection with the Olympic Games in Australia. Actual knowledge of a commonly known mark at the time of registering a domain name that infringes upon the mark is evidence of bad faith registration. See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000); Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000); Neiman Marcus Group, Inc. v. Lorna Kang, FA 109722 (Nat. Arb. Forum May 29, 2002).
Complainant contends that Respondent creates a likelihood of confusion with the OLYMPIC Mark as to the source, sponsorship, affiliation or endorsement of the <olympic.tv> website in violation of Policy ¶ 4(b)(iv). The domain name trades upon the reputation and goodwill associated with the OLYMPIC Mark, it is argued. That is likely to have been true had Respondent actually used the domain name on the Internet. Respondent did not use the domain name so as to cause such confusion as condemned in Policy ¶ 4(b)(iv). Respondent passively held the domain name for more than two years after registration.
Complainant must prove both bad faith registration and use.
Passive holding of a domain name can be found to be evidence of bad faith use. See Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 28, 2000). Each case must be considered on the particular facts presented to determine “whether the passive holding of a domain name, following a bad faith registration of it satisfies the requirements of paragraph 4(a)(iii)…” And taking into account the facts when it is not possible to conceive of any plausible actual or contemplated active use of the domain name by Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of Complainant’s rights under trademark law, it can be found that the domain name “is being used in bad faith” by Respondent. See Telstra Corp. Ltd. v. Nuclear Marshmallows, ibid.
Complainant’s contention that the renewal of the domain name was done in bad faith is inappropriate. See Weatherall Green & Smith v. Everyman.com, D2000-1528 (WIPO Feb. 19, 2001). Only the original registration is in issue.
The Panel finds that the original registration of the domain name was done in bad faith by Respondent since Respondent was fully aware of Complainant’s trademark and registered a domain name which intentionally infringed upon Complainant’s mark. Under the facts and circumstances of this case, and the proper inferences to be drawn from the facts, the Panel finds that the passive holding of the domain name for a two-year period constitutes bad faith use of the domain name under the reasoning employed by the panel in Telstra Corp. Ltd. v. Nuclear Marshmallows since there is no use Respondent could make of the domain name that would not be an infringement of Complainant’s rights under trademark law. See also Aloe Vera of Am., Inc. v. Adam Norins, FA 97291 (Nat Arb. Forum July 3, 2001) (holding that passive holding of a domain name up and until the time a complainant was filed even though the intended future use of the domain name was for criticism and comment constituted bad faith use of the domain name).
The Panel finds that the domain name <olympic.tv> was registered and used in bad faith by Respondent.
Complainant prevails under Policy ¶ 4(a)(iii).
The Panel holds that the domain name, <olympic.tv>, now registered to Respondent, Richard Freeman, be TRANSFERRED to Complainant, International Olympic Committee.
Tyrus R. Atkinson, Jr., Panelist
Dated: December 19, 2002
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