International Olympic Committee and United States Olympic Committee v. Guy Boyden
Claim Number: FA0310000201977
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.
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.
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 firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com and firstname.lastname@example.org 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.
Complainant requests that the domain names be transferred from Respondent to Complainant IOC.
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.
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.
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.
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.
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.
M. Wallace, Q.C., Panelist
Dated: December 19, 2003
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