International Olympic Committee and The United States Olympic Committee v. Domain For Sale, Inc. a/k/a John Barry
Claim Number: FA0208000117893
Complainant is International Olympic Committee and The United States Olympic Committee, Colorado Springs, CO (“Complainant”) represented by James L. Bikoff, of Silverberg Goldman & Bikoff LLP. Respondent is John Barry a/k/a Domain For Sale, Bronx, NY (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <olympiccommittee.com>, registered with eNom, Inc.
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 August 6, 2002; the Forum received a hard copy of the Complaint on August 7, 2002.
On August 8, 2002, eNom, Inc. confirmed by e-mail to the Forum that the domain name <olympiccommittee.com> is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 August 8, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 25, 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.
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 September 17, 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.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.” Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The <olympiccommittee.com> domain name is confusingly similar to Complainant’s OLYMPIC mark and UNITED STATES OLYMPIC COMMITTEE mark.
Respondent has no rights or legitimate interests in the <olympiccommittee.com> domain name.
Respondent registered and used the <olympiccommittee.com> domain name in bad faith.
Respondent has failed to submit a Response in this proceeding.
The International Olympic Committee and The United States Olympic Committee, collectively Complainant, hold numerous registrations for the OLYMPIC mark in multiple countries. Complainant owns Swiss Trademark Registration No. 406021 for the OLYMPIC mark, for use on and in connection with a wide variety of goods and services associated with the Olympic Games. The Swiss Registration marks the date of first use as 1894. Complainant also owns International Registration No. 609691 for the OLYMPIC mark.
Complainant owns Registration Nos. 968,566 and 2,311,493 with the United States Patent and Trademark Office (“USPTO”) for the OLYMPIC mark. In addition, Complainant holds Registration No. 980,734 with the USPTO for the UNITED STATES OLYMPIC COMMITTEE mark (date of first use: 1932).
Since 1894, Complainant has operated as the umbrella organization of the Olympic Movement supervising the organization of the Olympic Games. Complainant has orchestrated 24 Olympic Summer Games and 19 Olympic Winter Games and is currently coordinating the 2004 Olympic Summer Games in Athens, Greece.
Complainant broadcasted the 2002 Olympic Winter Games in Salt Lake City, Utah to a record 160 nations, captivating an audience of over three billion viewers. Thus, Complainant’s OLYMPIC mark has grown since 1894 to become an extremely valuable asset that is internationally recognized. Complainant has actively sought to protect that asset to ensure its long-term ability to help fund the Olympic Movement because its funds are derived from the sale of television rights for broadcasting of the Olympic Games and from marketing (licensing and sponsorship) programs related to the use of the OLYMPIC mark.
Respondent registered the <olympiccommittee.com> domain name on March 25, 2002. Respondent uses the domain name to divert Internet users to a website addressed <abortionismurder.org>, which contains graphic images of aborted fetuses. Respondent, John Barry, is a serial cybersquatter who has had numerous domain name cases brought against him under the ICANN Policy. As such, Respondent has engaged in a pattern of registering domain names containing well-known marks of others and linking them to the <abortionismurder.org> website for his own political agenda.
Paragraph 15(a) of 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.”
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 Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
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; and
(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 established its rights in the OLYMPIC mark through proof of registration with various authorized governing bodies, and continuous use of the mark since 1894 to promote and develop the Olympic Movement and Olympic Games. In addition, Complainant established rights in the UNITED STATES OLYMPIC COMMITTEE mark through proof of registration with the USPTO and subsequent use of the mark.
Respondent’s <olympiccommittee.com> domain name contains Complainant’s entire OLYMPIC mark with the addition of the term “committee.” The use of the term “committee” in association with the OLYMPIC mark carries a relationship with Complainant’s operations. Thus, the domain name does not create a distinct and separate mark capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark).
Furthermore, Respondent’s <olympiccommittee.com> domain name is confusingly similar to Complainant’s UNITED STATES OLYMPIC COMMITTEE mark. This is due to the fact that the deletion of “United States” from the second level domain does not defeat a confusingly similar analysis because the domain name still contains the core part of the protected mark, “Olympic Committee.” See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to Complainant’s “Asprey & Garrard” and “Miss Asprey” marks); see also WestJet Air Center, Inc. v. West Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to Complainant’s mark, where Complainant holds the WEST JET AIR CENTER mark); see also Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to Complainant’s “Wellness International Network”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant asserts that Respondent has no rights or legitimate interests in the <olympiccommittee.com> domain name, which effectively shifts the burden on Respondent to demonstrate such rights or legitimate interests. Respondent, however, has failed to come forward and refute Complainant’s contentions. Therefore, it may be presumed that Respondent has no rights or legitimate interests in the domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also 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, Respondent’s failure to answer Complainant’s allegations allows all reasonable inferences to be drawn 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); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).
Respondent simply uses the <olympiccommittee.com> domain name to trade off of the goodwill Complainant has developed with the OLYMPIC and UNITED STATES OLYMPIC COMMITTEE marks. The <olympiccommittee.com> domain name resolves to the <abortionismurder.org> website where an Internet user is confronted with graphic images of aborted fetuses. As previously stated, this is a common practice of Respondent’s whereby Respondent infringes on marks that are widely recognized. Thus, Respondent’s intent is to use Complainant’s mark as a means to bring more traffic to the website containing offensive images. Respondent’s tarnishing practice does not constitute a connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor does it represent a legitimate fair use under Policy ¶ 4(c)(iii). See Rittenhouse Dev. Co. v. Domains For Sale, Inc., FA 105211 (Nat. Arb. Forum Apr. 8, 2002) (finding that, by linking the confusingly similar domain name to an “Abortion is Murder” website and subsequently asking for compensation beyond out-of-pocket costs to transfer the domain name, Respondent has not demonstrated a right or legitimate interest in the disputed domain name); see also MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish Complainant’s mark).
Respondent is not affiliated with Complainant and, even in light of the fact that Complainant heavily relies on licensing use of its marks, Respondent is not authorized or licensed to register or use domain names or marks containing the OLYMPIC mark. Respondent’s identity is disclosed as John Barry, a notorious cybersquatter, and is not commonly known by the <olympiccommittee.com> domain name or any similar variation thereof. Therefore, Respondent has no rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in <olympiccommittee.com> the domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent’s use of the <olympiccommittee.com> domain name to promote the anti-abortion agenda by subjecting unsuspecting Internet users to graphic images of aborted fetuses represents a bad faith intent to trade off of the goodwill Complainant has worked hard to establish in its OLYMPIC mark. It is clear that Respondent knew of Complainant’s famous OLYMPIC mark, as Respondent’s intent was to confuse Internet users as to Complainant’s affiliation or sponsorship with the website and its politically charged content. Therefore, the Panel finds that Respondent, as evidenced by a continuing pattern of conduct, registered and used the domain name in bad faith under ¶ 4(a)(iii). See Rittenhouse Dev. Co. v. Domains For Sale, Inc., FA 105211 (Nat. Arb. Forum Apr. 8, 2002) (finding that “when a party registers and uses a domain name that incorporates a well-known mark and connects the domain name with a website that depicts offensive images,” the party has registered and used the disputed domain name in bad faith); see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that Respondent demonstrated bad faith where Respondent was aware of Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <olympiccommittee.com> be transferred from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: October 1, 2002.
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