International Olympic Committee & United States Olympic Committee v. Russell Ritchey d/b/a EZ Fixin's
Claim Number: FA0211000128817
Complainant is International Olympic Committee, Lausanne, SWITZERLAND (“Complainant”) represented by James L. Bikoff, of Silverberg Goldman & Bikoff LLP. Respondent is Russell Ritchey d/b/a EX Fixin’s, Waco, TX, USA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <olympicbrand.com>, <olympicsbrand.com>, <olympic-brand.com>, <olympics-brand.com> and <olympianbrand.com>, registered with VeriSign, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Honorable Robert T. Pfeuffer (Ret.), Honorable Charles K. McCotter, Jr. (Ret.) and R. Glen Ayers, served as Panelists. Judge Pfeuffer served as Chairman; R. Glen Ayers drafted the Opinion.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 1, 2002; the Forum received a hard copy of the Complaint on October 30, 2002.
On November 4, 2002, VeriSign, Inc. confirmed by e-mail to the Forum that the domain names <olympicbrand.com>, <olympicsbrand.com>, <olympic-brand.com>, <olympics-brand.com> and <olympianbrand.com> are registered with VeriSign, Inc. and that the Respondent is the current registrant of the names. VeriSign, Inc. has verified that Respondent is bound by the VeriSign, 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 November 14, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 4, 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 firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com and firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on December 4, 2002.
Additional submissions, all of which were timely, were received as follows: (1) Complainant’s Request to Submit Reply to Response...” (2) “Complainant’s Reply to Response....”; (3) Respondent’s “Second Response; (4) Correspondence from VeriSign, Inc.
On December 23, 2002, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Retired Judge Pfeuffer, Retired Judge McCotter, Jr.; and R. Glen Ayers as Panelists.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainants, the International Olympic Committee and the United States Olympic Committee (hereafter “IOC” unless there is a specific reference to “USOC”) allege that registration of the five domain names in question violate both the statutory laws of the United States and the Policy and Rules of ICANN.
In the Complaint, IOC has clearly established its ownership rights in the Olympic trademark. Further, the OLYMPIC mark and the Olympic emblem (the emblem is not at issue in this matter) have been protected by a statute of the Untied States, 36 U.S.C. §220501, et seq. That statute, the Ted Stevens Olympic & Amateur Sports Act (“OASA”) grants the IOC an exclusive right in the Olympic symbol and the word Olympic, Olympiad or any combination. That statute has been upheld in litigation, including San Francisco Arts & Athletics Inc. v. United States Olympic Comm. and Int’l Olympic Comm., 483 U.S. 522 (1987). The IOC Complaint goes on to establish its trademarks and that the domain names are confusingly similar.
The domain names, IOC alleges, have been registered under two different assumed names, “EZ Fixin’s” and “eBbrandman.com” both held by Russell Ritchey (hereafter “Ritchey”).
IOC alleges that Ritchey offered these domain name registrations for sale on September 29, 2002, and that Complainant sent a cease and desist letter.
IOC also asserts that Ritchey has no legitimate rights in the domain names. He is not commonly known by such names and his marks do not relate to the various exceptions forbidding use of the term Olympic contained in the above referenced protective statute.
As to bad faith, IOC states that Ritchey clearly procured the domain names for purposes of resale. Complainant says bad faith is also clearly shown by Ritchey’s conduct including letters to the IOC. The registration and offer to sell is enough, asserts IOC. In addition, IOC cites the Panel to United States Olympic Comm. v. Tri B-U-N-Eco Project, WIPO Case D2000-0435 (July 13, 2000) where the specific finding that the statute cited above was sufficient to justify finding of bad faith without more.
Respondent’s basic argument seems to be that first he was only trying to make some money and that he is an “Independent Brand Consultant.” He then argues that Olympic is a generic term and that the trademark is merely the 5 ring symbol. He denies that the domain names were registered for the express purpose of resale and he denies that there is any confusion between what he does and has done and the actual Olympics. Further, Ritchey notes that he offered to sell the domain name registrations to entities associated with the Olympics, and all of which had the right to use the trademark. Further, Ritchey notes that each of the documents which he sends out specifically informs potential customers that the use of any of his materials cannot violate trademark law.
Respondent alleges “reverse domain highjacking.”
C. Additional Submissions
Complainant’s additional submissions include a document styled “Complainant’s Request to Submit Or Reply to Response...” and “Complainant’s Reply to Response...” Both were timely and will be considered.
Complainant first suggests that Respondent changed registration information concerning the domain names from “EZ Fixin’s” to “eBbrandman.com”. IOC alleges that this is bad faith.
Complainant’s additional submissions also concern whether or not Respondent is a reseller and allege that Respondent contradicts himself when he states that he is not a reseller of domain name registrations.
IOC also asserts that correspondence received from Respondent represents a “wide- spreading effort to solicit commercial ventures with the domain names....”
IOC also asserts that OASA, 36 U.S.C. §220501 et seq., has removed the terms Olympic and Olympian from the context of generic words. Other issues raised are lack of rights and legitimate interest and registration in bad faith.
Finally, Complainant denies any reverse domain name highjacking.
Respondent’s additional response first discusses his transfer of domain names from EZ Fixin’s” to “eBbrandman.com” asserting that the transfer was completed before any complaint was filed.
He also asserts that his business activities are legitimate and are not conducted in bad faith. Finally, he continues to assert that Olympic and related terms are inherently generic.
First, the Panel would ordinarily not be concerned with protecting “generic” terms such as either “Olympic” or “olympic”. However, any concern that the Panel might have with the generic nature of the term Olympic is resolved by the statute referenced by both parties, the “Olympic and Amateur Sports Act” (“OASA”), 36 U.S.C. §220501 et seq. Because it is obvious that Olympic is identical to or confusingly similar to the domain names, and the term Olympic and similar terms are protected by federal statute, then in the context of a dispute arising in the United States, the Panel need inquire no further to find that the names are confusingly similar. Here, the addition of the word “brand” to the domain name does not change the analysis and, in fact, adds to the problem.
The same findings can be made as to rights in the name - Mr. Ritchey can have no rights in the name because of federal statute. Further, the Panel finds no “preparation for use.”
Ritchey’s conduct can certainly be said to have risen to the level of “bad faith” as that term is ordinarily used and explored in domain name disputes. It is clear to the Panel that an attempt to register a domain name by a United States citizen in contravention of a federal statute is, ipso facto to be bad faith. Violation of the law, whether knowing or unknowing, is probably always bad faith.
That said, again it is crystal clear that Mr. Ritchey has no rights in the domain names. He is not known by any version of the term “Olympic.” He has made no preparation for offering of goods and services under that name, not withstanding his argument that his business is the “offering” of the names themselves. In short, the facts are clear that these domain names were registered primarily for the purpose of resale by the “eBbrandman.com” business.
As to bad faith, his solicitations of IOC, coupled with the confusingly similar nature of the names, clearly constitute bad faith whether bad faith is considered to be blocking or attempting to register a domain name which is confusingly similar to a trademark and then offering the domain name for resale.
In other words, the Panel has no trouble finding that Mr. Ritchey has no rights in the name and that he has acted in “bad faith” as that term is used in the ICANN Rules and Policies.
To state simply, the statutes of the Untied States make it clear that the IOC and its American counterpart, USOC, have completely preempted the field. Even if that were not the case, the existence of trademarks held by the IOC and their famous, universal nature, would be sufficient to defeat Mr. Ritchey’s contentions that he should not be compelled to transfer these names.
No evidence of reverse domain highjacking exists.
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.
The names are identical or confusingly similar to the marks. The priority of the OASA and the registered trademarks of IOC over the domain names is clear.
There is no evidence of rights in the name which adhere to Respondent. Further, OASA preempts the field. And, as Panelist McCotter stated in Olympic Comm. v. More Virtual Agency, FA 112584 (Nat. Arb. Forum, June 13, 2002): “[IOC] has established that it has rights in the ...name because...of registered trademarks worldwide.”
Bad faith here is determined by the statute, OASA, and by the offer of confusingly similar domain name registrations for sale to the owner (the IOC) of a truly famous mark protected by a specific, preemptive statute. Again, the determining factor is the existence of the statute.
There can be no reverse domain name hijacking where the United States Congress has pre-empted the field. The generic words involved in the marks and domain names are specifically protected.
The domain name shall be TRANSFERRED.
Honorable Robert T. Pfeuffer (Ret.)
Honorable Charles K. McCotter, Jr. (Ret.)
R. Glen Ayers
Dated: January 20, 2003
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