International Olympic Committee and Norwegian Confederation of Sports and Olympic and Paralympic Committee and Lillehammer 2016 Youth Olympic Games Organizing Committee v. The Vu DAO / Home
Claim Number: FA1411001589324
Complainant is International Olympic Committee and Norwegian Confederation of Sports and Olympic and Paralympic Committee and Lillehammer 2016 Youth Olympic Games Organizing Committee (“Complainant”), represented by James L. Bikoff of Silverberg Goldman & Bikoff, LLP, District of Columbia, USA. Respondent is The Vu DAO / Home (“Respondent”), Veitnam.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <lillehammer2016.com> and <lillehammer2016.org>, registered with Name.com, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 10, 2014; the National Arbitration Forum received payment on November 10, 2014.
On November 11, 2014, Name.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <lillehammer2016.com> and <lillehammer2016.org> domain names are registered with Name.com, Inc. and that Respondent is the current registrant of the names. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 12, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 2014, by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@lillehammer2016.com, postmaster@lillehammer2016.org. Also on November 12, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 12, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
There are three Complainants in this matter: the International Olympic Committee (“IOC”), the Norwegian Confederation of Sports and Olympic and Paralympic Committee (“Norwegian Olympic Committee”), and the Lillehammer 2016 Youth Olympic Games Organizing Committee (“Lillehammer Organizing Committee”). Co-Complainant IOC works with its National Olympic Committees in over 200 countries and territories in connection with the Olympic Games. Co-Complainant Norwegian Olympic Committee is such a National Olympic Committee, and Co-Complainant Lillehammer Organizing Committee is the local organizing committee for the Youth Olympic Winter Games, which will be held in Lillehammer, Norway in 2016. Complainant OIC recognizes these Co-Complainant’s as responsible for the implementation of the 2016 Youth Olympic Games in Lillehammer.
Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
The Forum’s Supplemental Rule 1(e) allows multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
Complaint has shown a sufficient nexus or link between the Complainants; therefore, the Panel will treat them all as a single entity in this proceeding. The Complainants will be collectively referred to as “Complainant.”
Complainant requests that the domain names be transferred from Respondent to Complainant, International Olympic Committee.
A. Complainant
Complainant claims rights in the LILLEHAMMER 2016 mark. Complainant has registered the LILLEHAMMER 2016 mark with numerous trademark agencies worldwide, including the Swiss Federal Institute of Intellectual Property (Reg. No. 604,943, registered Sept. 13, 2010, filed Apr. 27, 2010), the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,988,864, registered July 5, 2011, filed Oct. 5, 2010). Complainant’s LILLEHAMMER 2016 mark is used in connection with the Youth Olympic Games, which will be hosted in Lillehammer, Norway in February 2016. The Youth Olympic Games is an international multi-sport athletic event held every four years. For over one hundred years, Complainant has owned rights in the “City + Year” marks associated with the Olympic Games (e.g., ATHENS 1896, SYDNEY 2000). The <lillehammer2016.com> and <lillehammer2016.org> domain names are identical to the LILLEHAMMER 2016 mark.
Respondent lacks rights or legitimate interests in the disputed domain names. Respondent is not affiliated with Complainant, and is not authorized to use the mark for domain names. Further, Respondent is not commonly known by the disputed domain names. The disputed domain names resolve to a blank page, but for the advertisement that the domain is for sale.
Respondent registered the disputed domain names solely to trade on the goodwill and reputation associated with Complainant and its LILLEHAMMER 2016 mark. Given the notoriety of Complainant, and the opportunistic timing of Respondent’s registrations, Respondent must have known of Complainant at the time of registration and registered with the intent to capitalize on the Lillehammer bid for the Youth Winter Games. Respondent registered the disputed domain names two days after the publication of an online article discussing Lillehammer’s bid to host the 2016 Youth Olympic Winter Games. Lillehammer was selected as the 2016 host city on December 27, 2011 by postal ballot. Respondent’s bad faith is further demonstrated by the offer to sell Complainant the disputed domain names at the inflated prices of $6,800 and $4,900 in 2012 and 2013, respectively.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the LILLEHAMMER 2016 mark. Complainant has registered the LILLEHAMMER 2016 mark, alone or in combination with other words, with numerous trademark agencies worldwide. For example, the IOC has registered the LILLEHAMMER 2016 mark with the Swiss Federal Institute of Intellectual Property (Reg. No. 604,943, registered Sept. 13, 2010, filed Apr. 27, 2010) and the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,988,864, registered July 5, 2011, filed Oct. 5, 2010).
For over one hundred years, the IOC has owned rights in the “City + Year” marks associated with the Olympic Games (e.g., ATHENS 1896, SYDNEY 2000). Complainant’s LILLEHAMMER 2016 mark is used in connection with the Youth Olympic Games, which will be hosted in Lillehammer, Norway, in February 2016.
The Youth Olympic Games is an international multi-sport athletic event held every four years.
Several nations have passed national legislation to protect the intellectual property of the IOC and its national and local organizing committees.
Respondent, The Vu DAO / Home, registered the <lillehammer2016.com> and <lillehammer2016.org> domain names on April 18, 2010. Respondent registered the disputed domain names two days after the publication of an online article discussing Lillehammer’s bid to host the 2016 Youth Olympic Winter Games. Lillehammer was selected as the 2016 host city on December 27, 2011 by postal ballot.
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."
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; and
(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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint 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.”).
Complainant’s LILLEHAMMER 2016 mark is used in connection with the Youth Olympic Games, which will be hosted in Lillehammer, Norway in February 2016. The Youth Olympic Games is an international multi-sport athletic event held every four years with varying host countries and cities. Complainant claims Policy ¶ 4(a)(i) rights in the LILLEHAMMER 2016 mark, as shown by registration with numerous trademark agencies worldwide, including the Swiss Federal Institute of Intellectual Property (Reg. No. 604,943, registered Sept. 13, 2010, filed Apr. 27, 2010), the USPTO (Reg. No. 3,988,864, registered July 5, 2011, filed Oct. 5, 2010). Complainant’s trademark registrations show Complainant’s rights in the LILLEHAMMER 2016 mark. Such rights date back to the earliest filing date, April 27, 2010. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”).
However, Respondent’s April 18, 2010 domain name registration predates Complainant’s rights in the mark through trademark registration. Ordinarily, a domain name registration predating a trademark filing and registration would preclude a finding of bad faith registration and the respondent would prevail. Here, there are special circumstances that give Complainant rights in the LILLEHAMMER mark prior to its earliest trademark filing and prior to the registration of Respondent’s domain names.
Complainant contends that IOC has owned rights in the “City + Year” marks associated with the Olympic Games for over one hundred years. Complainant requests that the Panel recognize IOC’s trademark rights in the “City + Year” marks, including LILLEHAMMER 2016. In Int'l Olympic Comm. v. Ritchey, FA 128817 (Nat. Arb. Forum Jan. 20, 2003), the Panel concluded that the Olympic Amateur Sports Act granted the complainant exclusive rights in the Olympic symbol and the word “Olympic,” preempting any chance for the respondent to claim rights or legitimate interests in an infringing domain name. In light of the evidence provided by Complainant, the Panel determines that IOC’s “City + Year” marks, including LILLEHAMMER 2016, are sufficiently protected to satisfy the requirements of Policy ¶ 4(a)(i) and preempt any opportunity for a respondent to claim priority rights.
The <lillehammer2016.com> and <lillehammer2016.org> domain names are identical to the LILLEHAMMER 2016 mark under Policy ¶ 4(a)(i). The domain names differ from the mark by the omission of the space between the two-word mark, as well as the addition of a generic top-level domain (“gTLD”). Policy ¶ 4(a)(i). See Lucky Brand Dungarees, Inc. v. Cole, FA 363048 (Nat. Arb. Forum Dec. 28, 2004) (“It is well established that neither the deletion of a space between words in a trademark nor the addition of a generic top-level domain distinguish a domain name from the trademark.”).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Respondent is not affiliated with Complainant, and is not authorized to use the LILLEHAMMER 2016 mark for domain names. Further, Complainant claims that Respondent is not commonly known by the disputed domain names. The WHOIS information identifies “The Vu DAO” as the registrant of record for both subject domain names. The Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Complainant claims that the <lillehammer2016.com> and <lillehammer2016.org> domain names resolve to a blank page, but for the advertisement that the domain is for sale. Respondent offered to sell the disputed domain names in e-mail correspondence for $6,800 in August 2012, and for $4,900 in October 2013. A respondent’s willingness to sell a disputed domain name may demonstrate a lack of rights in the name, especially where the offer is in excess of out-of-pocket costs. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“An attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests.”); Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name). Respondent’s anticipated use for the domain names is to sell the names to Complainant for profit. Such use is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant argues that Respondent registered the <lillehammer2016.com> and <lillehammer2016.org> domain names solely to trade on the goodwill and reputation associated with Complainant and its LILLEHAMMER 2016 mark. Complainant argues that Respondent’s bad faith is demonstrated by Respondent’s offer to sell Complainant the disputed domain names at the inflated prices of $6,800 and $4,900 in 2012 and 2013, respectively. A respondent’s willingness to sell a disputed domain in excess of out-of-pocket costs may indicate Policy ¶ 4(b)(i) bad faith. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). Accordingly, the Panel finds Respondent’s willingness to sell the disputed domain names for upwards of $6,800 constitutes bad faith pursuant to Policy ¶ 4(b)(i).
Next, Complainant argues that given the notoriety of Complainant, and the opportunistic timing of Respondent’s registrations, Respondent must have known of Complainant at the time of registration of the disputed domain names and registered them with the intent to capitalize on the Lillehammer bid for the Youth Winter Games. Respondent registered the disputed domain names on April 18, 2010, two days after the publication of an online article on April 16, 2010, discussing Lillehammer’s bid to host the 2016 Youth Olympic Winter Games. Respondent’s April 18, 2010 domain name registration predates Complainant’s rights in the mark through trademark registration, which generally would preclude a finding of bad faith registration. On this issue, the Panel is instructed by the panel’s discussion in Beijing Org. Comm. for the Games of the XXIX Olympiad & Int’l Olympic Comm. v. GBS Data System, FA 479544 (Nat. Arb. Forum June 28, 2005), where the panel determined, “Although Respondent’s January 26, 1999 registration of the <beijing2008.org> domain name predates Complainant’s registrations for the BEIJING 2008 mark, Respondent’s registration of the domain name was nevertheless in bad faith.” The Beijing panel emphasized that the complainant had provided substantial evidence that Beijing was recognized as the frontrunner to host the 2008 Olympic Games at the time of respondent’s registration, and therefore reasoned that the respondent had actual knowledge of the complainant’s strong connection to the BEIJING 2008 mark.
In the instant case, the Panel similarly concludes that the article publicizing Lillehammer’s bid to host the 2016 Youth Olympic Winter Games provides strong evidence that Respondent registered the domain names with knowledge of Complainant’s anticipated interest in the names and associated mark. Accordingly, given the opportunistic timing of Respondent’s registration just two days after Lillehammer’s bid to host the 2016 Youth Olympic Winter Games was made public, the Panel finds that Respondent registered the <lillehammer2016.com> and <lillehammer2016.org> domain names with Complainant in mind, and, therefore, in bad faith under to Policy ¶ 4(a)(iii). See MADRID 2012, S.A. v. Scott Martin-MadridMan Websites, D2003-0598 (WIPO Oct. 8, 2003) (finding that the respondent registered the <madrid2012.com> domain name in bad faith despite the fact that the complainant had not registered the mark at the time of the domain name registration because Madrid’s bid for the 2012 Olympic Games had been well publicized months before the respondent’s domain name registration); Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (“If there had been any doubt as to bad faith, the fact that registration was on the same day the news leaked about the merger, which was put in evidence, is a compelling indication of bad faith that [the] respondent has to refute and which he has failed to do. The panel finds a negative inference from this.”).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lillehammer2016.com> and <lillehammer2016.org> domain names be TRANSFERRED from Respondent to Complainant, International Olympic Committee.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 24, 2014
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