International Olympic Committee and
United States Olympic Committee v. Guy Boyden
Claim Number: FA0310000201977
PARTIES
Complainant is International Olympic Committee and United States Olympic
Committee (“Complainant”), represented by James L. Bikoff of Silverberg Goldman & Bikoff, LLP, 1101 30th St., N.W., Suite 120,
Washington, DC 20007. Respondent is Guy
Boyden, 10200 S.E. Talbert Street,
Clackamas, OR 97015 (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAMES
The domain names at issue are <bcolympic.com>, <bcolympic2010.com>, <bcolympics2010.com>, <bcolympics2010.net>, <vancouverbcolympic.com>, <vancouverbcolympics.com>, <vancouverbcolympics.net>, <vancouverbcolympics2010.com> and <vancouverbcolympics2010.net> registered with Name It Corporation d/b/a Aitdomains.com.
PANEL
The undersigned certifies that she has acted
independently and impartially and to the best of her knowledge has no known
conflict in serving as Panelist in this proceeding.
Anne M. Wallace, Q.C. as Panelist.
PROCEDURAL
HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum (the “Forum”) electronically on October 7, 2003; the
Forum received a hard copy of the Complaint on October 9, 2003.
On October 13, 2003, Name It Corporation d/b/a
Aitdomains.com confirmed by e-mail to the Forum that the domain names <bcolympic.com>, <bcolympic2010.com>, <bcolympics2010.com>, <bcolympics2010.net>, <vancouverbcolympic.com>, <vancouverbcolympics.com>, <vancouverbcolympics.net>, <vancouverbcolympics2010.com> and <vancouverbcolympics2010.net> are registered with Name It
Corporation d/b/a Aitdomains.com and that Respondent is the current registrant
of the names. Name It Corporation d/b/a Aitdomains.com has verified that
Respondent is bound by the Name It Corporation d/b/a Aitdomains.com
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 16, 2003, a Notification of Complaint
and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of November 5, 2003 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
postmaster@bcolympic.com, postmaster@bcolympic2010.com, postmaster@bcolympics2010.com,
postmaster@bcolympics2010.net, postmaster@vancouverbcolympic.com, postmaster@vancouverbcolympics.com,
postmaster@vancouverbcolympics.net, postmaster@vancouverbcolympics2010.com and
postmaster@vancouverbcolympics2010.net by e-mail.
On October 20, 2003, Respondent sent the Forum
an e-mail message which appeared to be a response to the Complaint. The Forum
replied to Respondent that day asking Respondent if the Forum was to consider
this communication to be the formal Response to the Complaint. Respondent
replied: “No I am sending all correspondence to you by U.S. mail today with
supporting letters from past communication with the IOC and its sponsors.”
A hard copy version of the Response was received
on October 21, 2003, however, an electronic copy of the Response was not
received. Therefore, the Forum does not consider the Response to be in
compliance with Rule 5(b). Notwithstanding that the Forum does not consider the
Response to be in compliance with Rule 5(b), out of fairness, this Panel will
consider the Response in making this decision. The electronic response that was
received on October 20, 2003, is virtually identical to the written Response
received on October 21, 2003, with the exception of the attachments which were
sent only in the mail. The Panel does not see any prejudice to the Complainant
in the circumstances, and in our view in this particular case it would not be
in accordance with basic principles of due process if the Panel did not
consider the Response.
On November 14, 2003,
pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Anne M. Wallace, Q.C.
as Panelist.
There are two named
Complainants in this case: International Olympic Committee (“IOC”) and United
States Olympic Committee (“USOC”). Rule 3(a) states, “Any person or entity may
initiate an administrative proceeding by submitting a complaint.” The Panel has
been asked to rule on the question of whether the Complainants can be
considered as one entity for the purposes of this Complaint. The singular tenor
of the rule’s language implies that a Complainant consist of one entity. It has
been accepted, however, 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 this case, the
Complainant IOC has recognized the USOC as the National Olympic Committee for
the territory of the United States and, under the IOC Charter, the USOC has
sole authority to represent the United States at the Olympic Games and to
protect the OLYMPIC mark in the United States. In these circumstances, it is
the Panel’s conclusion that the IOC and USOC have established a sufficient link
between them to be treated as one entity for the purposes of this Complaint.
RELIEF
SOUGHT
Complainant requests that the domain names be
transferred from Respondent to Complainant IOC.
PARTIES’
CONTENTIONS
A. Complainant
Complainant made extensive submissions with
respect to Complainant’s rights to the OLYMPIC mark and provided evidence to
establish the following:
On June 23, 1894, Baron Pierre de Coubertin
founded the IOC, an international, non-governmental, non-profit organization,
as the umbrella organization of the Olympic Movement. In 1896, under the IOC’s direction, Athens, Greece hosted the
first Olympic Games of the modern era.
Since 1896, the IOC has supervised the organization of the Olympic
Games. The IOC has conducted 19 Olympic
Winter Games and 24 Olympic Summer Games. On July 2, 2003, the IOC selected
Vancouver, British Columbia as the host of the 2010 Olympic Winter Games.
The IOC works with National Organizing
Committees (“NOCs”) in 199 countries and territories, including the United
States, to spread the principles of the Olympic Movement. The IOC also provides direct financial
assistance to NOCs participating in the Olympic Games.
The IOC owns all rights to the Olympic Games,
the Olympic symbol (which is protected by, among other things, the Nairobi Treaty on the
Protection of the Olympic Symbol), the Olympic flag, motto and anthem, and
the word OLYMPIC. The Olympic Charter, which details the rights and
responsibilities of the IOC and members of the Olympic Movement, states:
The Olympic
Games are the exclusive property of the IOC, which owns all rights and data
relating thereto, in particular, and without limitation, all rights relating to
their organization, exploitation, broadcasting, recording, representation,
reproduction, access and dissemination in any form and by any means or
mechanism whatsoever, whether now existing or developed in the future. The IOC shall determine the conditions of
access to and the conditions of use of data relating to the Olympic Games and
to the competitions and sports performances of the Olympic Games. Rule
11, Olympic Charter.
Under the Bylaws to Rules 12-17 of the Olympic
Charter, “the IOC may take all appropriate steps to obtain the legal
protection, both on the national and international basis, of the Olympic
symbol, flag, motto and anthem.” In
addition, each NOC “shall also endeavor to obtain protection of the
designations ‘Olympic’ and ‘Olympiad’ for the benefit of the IOC.” Bylaw 2,
Olympic Charter.
The IOC owns Swiss Trademark Registration No.
406021 for the trademark OLYMPIC, for use on and in connection with a wide
variety of goods and services. The registration includes international
trademark classes 9 (electrical and scientific apparatus), 14 (jewelry and
precious metals), 16 (paper goods and printed matter), 36 (insurance and
financial services), 38 (telecommunications) and 41 (education and
entertainment services). The
registration, which is in full force and effect, recognizes that the IOC’s
first use of the OLYMPIC mark dates back to 1894, when Pierre de Coubertin
founded the organization. The IOC’s Swiss registration predates Respondent’s
registration of the Domain Names; IOC’s common law rights predate the domain
name registrations by over one hundred years.
The IOC owns International Registration No.
609691 for the trademark OLYMPIC. The registration includes international
trademark classes 9, 14, 16, 36, 38 and 41.
The IOC also has registrations in many other countries, including
Australia, China, France, Germany, Hong Kong, Italy, Japan, Singapore, South
Korea, Spain and Taiwan.
The goodwill associated with the OLYMPIC Marks
is a valuable asset needed to ensure the IOC’s long-term ability to help fund
the Olympic Movement. The IOC’s OLYMPIC
Marks and goodwill are important because the IOC receives no government
funding; its revenues are derived primarily from the sale of television rights
for broadcasting the Olympic Games and from marketing (licensing and
sponsorship) programs related to use of the OLYMPIC Marks.
The IOC has been extensively engaged in the
business of using and/or licensing others to use the OLYMPIC Marks in its
marketing programs throughout the world, including the United States. These marketing programs include worldwide
sponsorship agreements with Olympic partners Coca-Cola, Kodak, Visa and others.
Through 2004, the IOC’s worldwide sponsors will contribute hundreds of millions
of dollars to the Olympic Games.
The IOC broadcasts the Olympic Games on
television to a global audience. The
IOC broadcast the 2002 Olympic Winter Games to a record 3 billion viewers in
160 nations, including the United States. The IOC distributes its revenues,
which come from broadcast revenue and royalties from licensing the right to use
the OLYMPIC Marks, to support the Olympic Movement.
The IOC has recognized the USOC as the NOC for
the territory of the United States and, under the IOC Charter, the USOC has
sole authority to represent the United States at the Olympic Games and to
protect the OLYMPIC Marks in the United States. The USOC owns many trademarks and service marks containing the
word OLYMPIC, including OLYMPIC, U.S. Trademark Registration No.
2,311,493 (date of first use: 1896), U.S. Trademark Registration No.
968,566 (date of first use: 1920). These
registrations all predate by many years Respondent’s registration of the Domain
Names.
Since 1950, the OLYMPIC Marks and emblem have
been protected by U.S. statute, now codified at 36 U.S.C. §220501, et seq. The statute, known as the Ted Stevens
Olympic and Amateur Sports Act (“OASA”), grants the USOC the exclusive right to
use the Olympic symbol and the words “Olympic,” “Olympiad,” or any combination
of those words in the United States.
In 1987, the U.S. Supreme Court upheld the OASA
statute and the unique protection it affords to the OLYMPIC Marks in San
Francisco Arts & Athletics, Inc. v. United States Olympic Comm., 483
U.S. 522 (1987). In 1999, the U.S. Congress incorporated the OASA into the
Anticybersquatting Consumer Protection Act, granting special protection to
OLYMPIC trademarks against bad faith registration of domain names. See 15 U.S.C. §1125(d)(1)(A)(ii)(III).
The IOC owns and maintains a number of
websites, including websites containing the OLYMPIC Marks; e.g.,
<Olympic.org>, <Olympic.net>, <Olympic.info>,
<Olympic.biz> and many more. The IOC has owned and used Olympic.org since
1995. In February 2002, Olympic.org
received approximately 120 million hits and 1.5 million visitors.
The
IOC has worked with other NOCs, such as the USOC, in actively pursuing domain
name registrations making unauthorized use of the OLYMPIC Marks. In June 2000, the IOC, joined by the USOC
and the Salt Lake Organizing Committee, commenced the largest in rem
lawsuit filed to date under the ACPA against the unauthorized use of the
OLYMPIC Mark in over 1,800 domain names. United States Olympic
Comm v. 2000Olympic.com, 00-CV-1018-A (E.D. Va. filed
2000). In June 1999, the USOC obtained a permanent
injunction against a registrant who had offered for sale sixteen domain names
containing USOC marks. US Olympic
Comm. v. Mehrotra, 99-CV-85 (D. Ariz. 1999). See also TOROC & IOC v. Hufschmid, D2001-0604 (WIPO June 14, 2001). These cases exemplify the extensive
program conducted by the IOC against cybersquatting.
By
virtue of the aforementioned extensive use, recognition and protection provided
for over 100 years, the OLYMPIC Marks are distinctive, famous, world-renowned
and entitled to broad protection under national laws of 199 countries and
territories, including the United States, as well as international law and the
UDRP.
With respect to the substance of the
Complaint, Complainant also made lengthy submissions and arguments, much of
which I will outline here:
Respondent Guy Boyden registered the
domain names <bcolympic.com>, <bcolympic2010.com>, <bcolympics2010.com>, <bcolympics2010.net>, <vancouverbcolympic.com>, <vancouverbcolympics.com>, <vancouverbcolympics.net>, <vancouverbcolympics2010.com> and <vancouverbcolympics2010.net> (the “Disputed Domain
Names” or the “Domain Names”) between July 2 and July 5, 2003. On July 2, 2003,
the IOC selected Vancouver, British Columbia as the host city for the 2010
Olympic Winter Games.
On July 14, 2003, Respondent wrote to
Robert Livingstone, owner of the informational site <GamesBids.com>,
offering to sell a number of domain names “related to the 2010 games.” Boyden asked if Livingstone knew “any
interested parties within the Olympic Committee” because he wanted to sell the
names as a group. He said that he would
be placing them for auction on eBay and wanted to sell them for “$18,000us and
three VIP Passes to the [Olympic] games,” and he asked Livingstone to “feel
free to give my number and web address to any interested parties.” Livingstone
forwarded Boyden’s e-mail to Richard Pound, a member of the IOC, who forwarded
the message to the IOC Legal Department for action.
On July 28, 2003, the IOC Legal
Department sent Boyden a cease and desist letter, demanding that he remove the
Domain Names from sale and cancel the Domain Names. This letter also placed Boyden on notice that his registration of
the Domain Names violated the IOC’s exclusive rights in the OLYMPIC Marks.
Boyden responded to that letter on July 29 by e-mail, claiming that the Domain
Names were not offered for public sale and “were offered to the BC Olympic
Committee or sponsors in an effort to use them in a beneficial manner.” Boyden explained his offer to sell the names
to the BC Olympic Committee, saying that he “did include a price that was
nothing but cheap, I in no way tried to gouge them, I just wanted to receive
something for imagination and effort, it is only right.” Boyden also claimed
that he had registered the names “to support Thailand’s bid for sponsoring the
games.” Thailand did not bid to host
the 2010 Olympic Games.
The IOC wrote back to Boyden on August 8,
2003, reiterating its position that the IOC does not approve third parties to
sell domain names containing OLYMPIC Marks.
Boyden replied on August 20, stating that “it is very fair to ask to be
compensated for creativity and real property value, two thousand a site”
(emphasis added). The IOC assumed that
this meant Boyden wanted $2,000 per domain name, or $18,000 for all nine of the
infringing Domain Names.
The IOC sent another notice to Boyden on
August 26, 2003, asking him not to exploit the domain names directly or
indirectly. Boyden replied on August
29, 2003, indicating that he intended to use the domain names in connection
with banner advertising to generate revenue for his Internet ventures. A final notice was sent to Boyden on
September 5, 2003.
In his many communications with the IOC,
Boyden admitted that the Domain Names were registered for the express purpose
of resale, which is a violation of the ACPA and the UDRP, and that he wanted
monetary compensation in exchange for the Domain Names.
The Domain Names are identical and
confusingly similar to the OLYMPIC Marks, and incorporate the OLYMPIC Marks in
their entirety. The addition of the descriptive
terms “Vancouver”, “BC” and “2010” to the OLYMPIC Marks does not diminish the
confusing similarity between the Complainants’ OLYMPIC Marks and the disputed
Domain Names.
The addition of the terms “Vancouver”,
“BC” and “2010” to the OLYMPIC Marks increases the likelihood of confusion,
because “BC” is an abbreviation for the Canadian province British Columbia, and
its capital city Vancouver is the host city of the 2010 Olympic Winter
Games. Such use falsely suggests that
goods will be found for sale under the official OLYMPIC Mark.
Likelihood of confusion with
Complainants’ OLYMPIC Marks is high. It is likely that Internet users will be
confused into believing that the Domain Names would lead to an official website
for the IOC or USOC. The overall
impression left by the Domain Names suggests that they belong to the IOC or
USOC “and consumer confusion will result.”
It is indisputable that Respondent was
aware of the OLYMPIC Marks when he registered the Domain Names. In his July 14, 2003 letter to Livingstone,
Boyden stated “I own a number of domain names that are available for sale
related to the 2010 games.” Boyden admits that the Domain Names are related
to the 2010 Olympic Winter Games to be held in Vancouver, British
Columbia. Given the worldwide fame and
recognition of the OLYMPIC Marks, Respondent could not have been unaware of the
IOC’s rights in the OLYMPIC Marks when he registered the Domain Names on July 2
and July 5, 2003, shortly after Vancouver, British Columbia was selected as the
host city for the 2010 Olympic Winter Games.
In the aforementioned in rem action
brought by the IOC and USOC against numerous domain names containing the
OLYMPIC Marks, Magistrate Judge Sewell of the Eastern District of Virginia
recommended entry of judgment against 854 domain names containing the OLYMPIC
Marks, observing that: “[o]ver the past
century these [Olympic] marks have become inherently distinctive and … this
confusion ultimately could harm the goodwill represented by the Olympic
Marks….The registrants cannot deny knowledge and cannot be unaware that the
Olympic Marks are distinctive and famous.” Report and Recommendation, United
States Olympic Comm. v. 2000Olympic.com, 00-CV-1018 (E.D. Va. May
21, 2002).
It is apparent that Respondent registered
the Domain Names knowing that they infringed upon and violated the exclusive
rights of the Complainants in the OLYMPIC Marks.
Boyden has no legitimate rights to the
Domain Names. He is not affiliated with
the IOC or the USOC and is not authorized to register or use domain names or
marks containing the OLYMPIC Mark.
Boyden is not commonly known by the Domain Names or the OLYMPIC
Marks.
Boyden has made no demonstrable
preparations to use the Domain Names in connection with a bona fide
offering of goods or services. In fact,
he disclaimed such intention. In this
case, Boyden offered to sell the Domain Names to the IOC.
By offering the Domain Names for sale and
by soliciting an offer from the IOC, Respondent has used the domain names for
commercial gain. Boyden is not making a legitimate noncommercial or fair use of
the Domain Names. Accordingly, Boyden has no rights or legitimate interests in
the Domain Names herein.
The strength of the OLYMPIC Marks supports a finding of bad faith.
Because Boyden is an Oregon resident and an American citizen, he was aware of
the fame of the OLYMPIC Marks. He registered the Domain Names to falsely
suggest an association with the Complainants and the OLYMPIC Marks. In view of the fame and goodwill associated
with Complainants’ marks, it is evident that Boyden was aware of these
trademarks when he registered the Domain Names. “The popularity of
Complainant’s mark permits the conclusion that Respondent knew or should have
known of Complainant’s well-known mark prior to registering the disputed domain
name. This is evidence of bad
faith.”
Boyden’s letters to the IOC indicate that
he registered the Domain Names primarily for the purpose of selling the Domain
Names to the Complainants in excess of his registration costs. It also
indicates that he registered the Domain Names to intentionally attract, for
commercial gain, Internet users to his websites to sell domain names containing
the OLYMPIC Marks.
Boyden purchased the Domain Names to
profit from the OLYMPIC Marks. In his own words, Boyden said that “it is
very fair to ask to be compensated for creativity and real property value, two
thousand a site.” (emphasis added).
These letters demonstrate that Boyden has purposefully offered to sell
domain names containing the OLYMPIC Marks to the IOC and others affiliated with
the Olympic Movement.
Boyden’s domain name registrations create
a likelihood of confusion with the OLYMPIC Marks as to the source, sponsorship,
affiliation or endorsement of the websites, in violation of Paragraph 4(b)(iv)
of the UDRP. The Domain Names trade
upon the reputation and goodwill associated with the OLYMPIC Marks. Boyden is attempting to mislead consumers,
who may believe that the Domain Names are associated with or authorized by the IOC. The IOC will be harmed if Boyden is allowed
to profit from the confusion he has caused.
Boyden’s registration of these domain names prevents the IOC from using
these Domain Names to provide marketing and licensing services.
The four criteria set out in UDRP Para. 4(b) are
nonexclusive; other factors can support a finding of bad faith. See Telstra
Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). One such
additional factor is that the registration is a violation of the OASA. In United
States Olympic Comm. v. Tri B-U-N-Eco. Project, D2000-0435 (WIPO July 13,
2000), Panelist Richard G. Lyon stated that Respondent’s “violation of OASA,
which was enacted in part to give special protection to Complainant’s marks and
attached goodwill, is bad faith per se.” The OASA has been incorporated into the ACPA, 15 U.S.C.
§1125(d). The registration of domain
names containing the protected OLYMPIC Marks by an unauthorized third party is
a violation of the ACPA, OASA and UDRP, and is bad faith, per se. This finding was also followed in the
aforementioned Ritchey decision.
“To state simply, the statutes of the United States make it clear that
the IOC and its American counterpart, USOC, have completely preempted the
field.”
There is no plausible legitimate use to which
Boyden could put the Domain Names. See
Telstra Corp. v. Nuclear Marshmallows, supra, para. 7.12(v), Sun
Microsystems Inc. v. Elise, Bruce, Regina & Associates Inc., FA 102723
(Nat. Arb. Forum. Jan. 14, 2002) (finding respondent acted with opportunistic
bad faith when it registered Javaone.com without regard to Sun’s JAVA
trademark), and Am. Nat’l Red Cross v. Habersham, FA 103926 (Nat. Arb.
Forum Mar. 6, 2002).
Given
Respondent’s registration of Domain Names identical and confusingly similar to
the OLYMPIC trademarks, it is clear that Respondent registered the Domain Names
solely to trade on the goodwill and reputation associated with the OLYMPIC
Marks.
B. Respondent
Respondent filed a short written Response
together with copies of e-mail communications between himself and various
persons with whom he communicated about the Disputed Domain Names. The
Response, in its entirety reads:
I
received the claims IOC is making in the large packet they sent and still feel
they are way out of line in their accusations. Instead of just asking what my
use of the property was for and working out a reasonable answer to the
situation they chose to go to an unsupported negative position right off the
bat.
I made it clear to them that they are not for
public sale; I did contact sponsors and peoples involved in the games only as a
second option, see below.
I
did offer to donate them to the Thai Olympic Committee to help them create
interest in Thailand's desire to host the games while promoting the Vancouver
Games even though they are not directly involved in these games.
I
have not sent repeated letters to the IOC saying that I would offer them for
public sale as they indicated in their claims. They were not purchased for
resale as they claim, maybe they should read all the letters in date order and
get their story straight.
I
do not feel they have a right to my property only because the letters olympic
are contained in the property names. It makes no sense since they would then
have the right to claim the Olympic Mountains in Washington or better yet lay
claim to Olympia Wa.. Web sites are now considered real property, like land,
and I have the same rights as a land owner in these areas.
I
feel that the IOC is misrepresenting the facts to you, their claims are made
out of context and I have been more then reasonable in my offer to release my
ownership of the property to them. It was my intent to use the web sites to
promote the games and create fund raising sites for the athletes, students and
Olympic Committees around the world. I had hoped to find sponsors to support
the creation of the programs needed and to donate the hosting. I offered the
sites to the Canadian O.C. and sponsors when I found no one interested in the
donation sites. I felt it was reasonable to ask something for my time,
creatitiveity [sic] and effort since they would use them to make millions for
themselves in advertising and promotions. I really thought they would be happy
with the offer and that they would be receiving a block of property for less
then .1% of what they will make off of them without hiring an advertising firm
to create the same sites for them. The responses from the sponsors and the COC
were that they had no interest in the sites since they had a different theme to
the games. It was at this point that the IOC sent a letter by email demanding I
release the sites and how I was taking advantage of them. They are more
interested in taking them, at any cost, from me then [sic] making a fare [sic]
offer. I am back to trying to set up the donation sites myself and did reflect
this in communication with the IOC and was up front in telling then that since
this was benefiting sports and education through direct donations that I would
have to cover my expenses of setting up and maintaining the sites through
advertising ads placed on the sites, the cost of the sites would be tracked
through a non profit organization that would be set up. I do not think it is
exploitation to cover my costs in this and I did offer to include the IOC in
the program and even turn my idea over to them if they decided to purchase the
property. I know my plan is good and would help people and schools all over the
world. I would give more details if I did not think the IOC would try to take
it to, I have held off on activating the sites for just this reason.
If
they do not have the foresight to have the registration, of the sites they say
are copy write [sic] protected, blocked off the registration services then they
are property open to title. The technology is in place; they should be
responsible and quit trying to hold the inexperienced consumer responsible for
their lack of effort in preventing this kind of situation from happening. I am
just an unemployed restaurant worker that wanted to do some good with the free
time I have.
The U.S.
Circuit Court of Appeals recently established that domains are real property
and not only a set of letters in the sex.com fraudulent domain transfer case.
In order for the accused to extradited [sic] from Mexico they had to establish
that real property was stolen. If I understand right the court established that
domains are a material asset and not just a name. If this is true then I do not
feel at all compelled to just give the IOC, at my expense, the sites they say
they do not want to use. The way I see it is that if I own a Ford Car, that
says Ford on the nameplate they do not own the car just because it says Ford on
it, I do because I have title to it. If I buy the car new or used from a dealer
or private party Ford still has no rights. They cannot remove the nameplate
because the way the car is run; it came with the car and is my property. This
would be interesting to test and see how current guidelines apply to the
claim.
I will send all copies, by mail, of the mail
I have sent them and you will see that I have been more then responsive and
fair in my dealings in this matter. I do not want to waste your time in this
matter but the IOC has decided to throw its weight around and not handle this
in a reasonable manner. I would hope you would agree with my rights in this
matter and I am still open to a fair solution.
None.
FINDINGS
The Panel finds as follows:
1. The Disputed Domain Names, <bcolympic.com>, <bcolympic2010.com>, <bcolympics2010.com>, <bcolympics2010.net>, <vancouverbcolympic.com>, <vancouverbcolympics.com>, <vancouverbcolympics.net>, <vancouverbcolympics2010.com> and <vancouverbcolympics2010.net>,
are confusingly similar
to the OLYMPIC trademark, which is protected through legislation trademark
registrations.
2. Respondent does not have rights or
legitimate interests in the Disputed Domain Names.
3. Respondent registered and is using the
Disputed Domain Names in bad faith.
DISCUSSION
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 Panel accepts
Complainant’s evidence of rights in the OLYPMIC mark, particularly the
statutory and trade mark registration protection in existence in the United
States and elsewhere in the world.
Respondent does
not seriously contend that the Disputed Domain Names are not confusingly
similar to the OLYMPIC mark. Every one of the Disputed Domain Names uses a
combination of the word OLYMPIC or OLYMPICS with “BC”, “Vancouver” and “2010”,
all of which are descriptive of the 2010 Olympics to be held in Vancouver, B.C. (i.e. British Columbia).
Each of the Disputed Domain Names merely incorporates the OLYMPIC mark with one
or more of these descriptive terms. These terms are insufficient to create a
distinct and separate mark capable of overcoming the confusing similarity with
the OLYMPIC mark. See Int’l Olympic
Comm. v. Domain For Sale a/k/a John Barry, FA 117893 (Nat. Arb. Forum Oct.
1, 2002) (finding <olympiccommittee.com> to be confusingly similar to
OLYMPIC because “use of the
term ‘committee’ in association with the OLYMPIC mark carries a relationship
with Complainant’s operations”); see also Int’l Olympic Comm. v. Ritchey
d/b/a EZ Fixin’s, FA 128817 (Nat. Arb. Forum Jan. 20, 2003) (finding
<olympicbrand.com>, <olympicsbrand.com>, <olympic-brand.com>,
<olympics-brand.com>, and <olympianbrand.com> to be confusingly
similar to OLYMPIC).
Complainant therefore succeeds on
the first element.
Applying Policy 4(c) to the evidence
before me, I have concluded as follows:
·
Respondent
did not use the Disputed Domain Names or names corresponding to any of them in
connection with a bona fide offering of goods or services before notice to him
of the dispute. By Respondent’s own admission, he registered the Disputed
Domain Names in connection with and for purposes of activities in relation to
the Olympic Games. He was not in any business involving the use of the Disputed
Domain Names before he registered them.
See Hewlett-Packard Co. v.
High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000)
(finding no rights or legitimate interests where Respondent registered the
domain name with the intention of selling its rights).
·
There is no
evidence whatsoever that Respondent was ever commonly known by any of the
Disputed Domain Names. See Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark).
·
Respondent
has not established that he is making a legitimate noncommercial or fair use of
the Disputed Domain Names. While Respondent suggests that he had intentions for
the Disputed Domain Names to be used in connection with activities that would
generate revenues that might be used for what one might describe as charitable
purposes, the Respondent’s own evidence indicates that Respondent’s first use
was to offer the Disputed Domain Names for sale to Olympics-related
organizations. By offering the Disputed Domain Names for sale and soliciting
offers from IOC, Respondent has used the Disputed Domain Names for commercial
gain. The Panel finds that the use of domain names in this fashion cannot be a
legitimate noncommercial use. See Am. Nat’l Red Cross v. Domains a/k/a Best Domains
a/k/a John Barry, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate
interests in the domain name is further evidenced by Respondent’s attempt to
sell its domain name registration to Complainant, the rightful holder of the
RED CROSS mark”).
Respondent has therefore been unable to establish rights to
or legitimate interests in the Disputed Domain Names under Policy 4(c)(i), (ii)
or (iii), and there is no evidence before me that would permit the Panel to
conclude Respondent had acquired rights to or legitimate interests in the Disputed
Domain Names in any other manner either. Respondent is not affiliated with the
IOC or the USOC or for that matter any NOC, and he was ever authorized to use
the OLYMPIC mark.
Complainant succeeds on the second
element.
To deal with the bad faith question, the Panel need go no
further than Respondent’s own correspondence in this matter to conclude the
Policy 4(b)(i) applies to this case. Respondent’s own correspondence indicates
that he registered the Disputed Domain Names primarily for the purpose of
selling them to Complainants or others connected to the Olympics for amounts
far in excess of his registration costs. In several communications put in
evidence by Respondent himself, he invites others to purchase the domain names.
Examples include the following statements:
·
“I own a number of domain names that are available for sale related to
the 2010 games if you know of any interested parties within the Olympic
Committee or in the Chamber of Commerce. I will be selling these as a group and
would like to see somebody in B.C. put them to good use and not a private
entity that might misrepresent the good name of the Olympics. They would make
great travel info sites or commerce sites to promote your upcoming event. I had
market appraisals done on them and the current value on each of them was at
least $2600+us low to a projected value of $6500+us, some were much higher. I
will sell the Group for $18,000us and three VIP passes to the games for my
self, my wife and daughter. This is a great opportunity for somebody to own the
key search sites for the games. I will be placing them up for public sale with
a broker or on EBay if I do not find an interested Vancouver BC group in 30
days. I have full ownership of these names and the right to transfer to new
owners when the purchase is made. My phone number is [redacted] in Portland
Oregon; feel free to give my number and web address to any interested parties.”
·
“I am offering the names to them for a fair price, way under market,
and will transfer full ownership to them no string attached except that I want
to go [to the Olympics].”
·
“It is very fair to ask to be compensated for creativity and real
property value, two thousand a site.”
Respondent’s argument is essentially that since he was going
to use the proceeds of sale of the Disputed Domain Names for non-commercial
purposes, that he was entitled to put them up for sale. The fallacy in this
argument that the real issue here is not what he wanted to do with the money he
received for selling the sites, but that he intended to sell the Disputed
Domain Names in the first place for far in excess of his out-of-pocket costs.
Immediately upon the awarding of the 2010 Olympic bid to Vancouver, Respondent
began registering the Disputed Domain Names and within days after that he
offered them for sale to Complainant who is the owner of the OLYMPIC mark. The
inescapable conclusion on the evidence before the Panel is that Respondent
registered the Disputed Domain Names for the purpose of selling them to
Complainant at far in excess of his out of pocket costs. This is bad faith
within Policy 4(b)(i). See Tech. Prop., Inc v. Hussain, FA 95411
(Nat. Arb. Forum Sept. 14, 2000) (finding bad faith where Respondent verbally
offered the domain names for sale for $2,000); see also Mr. Severiano
Ballesteros Sota, Fairway, S.A. v. Waldron, D2001-0351 (WIPO June 18, 2001)
(holding that Respondent’s request for “4 complementary tickets for the Seve
Ballesteros Trophy for every year that the Seve Ballesteros trophy takes place”
in exchange for the disputed domain name registration evidenced bad faith
registration and use).
Complainant succeeds on the third
element.
I do wish to point out one error in
Complainant’s submissions. My fellow Canadians in Victoria, British Columbia,
would be quick to point out to the IOC and the USOC that while Vancouver is the
largest city in British Columbia, it is not the capital city of British
Columbia. The capital city is Victoria.
DECISION
Having established all three elements required
under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bcolympic.com>, <bcolympic2010.com>, <bcolympics2010.com>, <bcolympics2010.net>, <vancouverbcolympic.com>, <vancouverbcolympics.com>, <vancouverbcolympics.net>, <vancouverbcolympics2010.com> and <vancouverbcolympics2010.net> domain names be TRANSFERRED from Respondent to Complainant, IOC.
Anne
M. Wallace, Q.C., Panelist
Dated: December 19, 2003
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