Athens 2004 Organizing Committee for the Olympic Games & International Olympic Committee v. Melissa Molloy
Claim Number: FA0404000260584
Complainants are Athens 2004 Organizing Committee for the Olympic Games and International Olympic Committee (“Complainants”), represented by James L. Bikoff of Silverberg Goldman & Bikoff, LLP, 1101 30th St. N.W., Suite 120, Washington, DC 20007. Respondent is Melissa Molloy (“Respondent”), Post Office Box 669, Double Bay 2028, South Wales, Australia.
REGISTRAR AND DISPUTED DOMAIN NAME(s)
The domain name at issue is <athens2004.org>, registered with Go Daddy Software, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainants submitted a Complaint to the National Arbitration Forum (the "Forum") electronically April 22, 2004; the Forum received a hard copy of the Complaint April 23, 2004.
On April 22, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <athens2004.org> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On April 28, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 18, 2004, by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On May 28, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainants request that the domain name be transferred from Respondent to Complainants.
A. Complainants make the following assertions:
1. The domain name registered by Respondent, <athens2004.org>, is identical to Complainants’ ATHENS 2004 mark.
2. Respondent has no rights to or legitimate interests in the <athens2004.org> domain name.
3. Respondent registered and used the <athens2004.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant IOC is an international, non-governmental, non-profit organization that serves as the umbrella organization of the Olympic Movement. It was founded June 23, 1894. The IOC works with its National Olympic Committees (“NOCs”) in more than 200 countries and territories to spread the principles of the Olympic Movement. The IOC also provides direct financial assistance to NOCs participating in the Olympic Games. Complainant ATHOC is the local organizing committee for the games of the XXVIII Olympiad in Athens in 2004 and is responsible for the organization and protection of the ATHENS 2004 Mark in Greece. The IOC’s city and year date marks, including ATHENS 2004, are distinctive, famous, of world-renowned recognition and are entitled to broad protection under national laws in more than 200 countries and territories, including Respondent’s home country Australia, as well as international law and the UDRP.
Complainant IOC holds trademark registrations with the Swiss Federal Institute Intellectual Property for the ATHENS 2004 mark (Reg. No. 449,677, issued March 3, 1998, Reg. No. 468,609, issued September 2, 1999, Reg. No 691,105, issued March 3, 1998, Reg. No. 732,953, issued February 8, 2000, Reg. No. 763,482, issued September 25, 2000, Reg. No. 509,637, issued April 9, 2001, Reg. No. 756,368, issued March 4, 1998, and Reg. No. 823,685, issued February 15, 2000).
Complainant ATHOC holds numerous Greek trademark registrations for the ATHENS 2004 mark (Reg. No. 145,267, issued June 24, 1999; Reg. No.145,273, issued June 24, 1999, and Reg. No. 146,216, issued September 1999).
Complainant ATHOC owns registrations for the <athens2004.com>, <athens2004.gr>, <athens2004.net>, <athens2004volunteers.com>, and <athens2004-homes.com> domain names where consumers can access any and all information for the 2004 Olympic and Paralympic games.
The Olympic Amateur Sports Act (“OASA”) (36 U.S.C. §220501) gives the Olympic Committee exclusive rights to the name, seals, emblems and badges. The Committee may authorize contributors and suppliers of goods or services to use the Olympic Trademarks. The OASA has been incorporated into the Anti-cybersquatting Consumer Protection Act (15 U.S.C. §1125(d)(1)(A)(ii)(III)) that grants special protection to Olympic trademarks against bad faith registration of domain names. Australia enacted a counterpart to the OASA statute, the Olympic Insignia Protection Act, which when combined with the Australian Trade Practices Act and Trade Marks Act, provides special protection for the IOC’s trademarks in Australia. Respondent has not been granted authority for its use of the disputed domain name.
Respondent registered the disputed domain name, <athens2004.org>, July 15, 1997, and is using the domain name to redirect Internet users to a search engine that provides links to a variety of entertainment websites including online gambling. The website also contains references to a guide to the 2004 Olympics available at this domain, although at this time no such guide has been placed.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainants’ undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires Complainants to 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 to or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainants established by extrinsic proof in this proceeding that they have rights in the ATHENS 2004 mark through registration with the Swiss Federal Institute Intellectual Property and Greek Trademark Registration as well as through continued use of this mark in commerce for the last seven years. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption).
Respondent’s domain name is identical to Complainants’ ATHENS 2004 mark because the only difference between the two is the addition of the generic top-level domain (“gTLD”) “.org”. The gTLD does not significantly distinguish the domain name from the mark pursuant to Policy ¶ 4(c)(i). See Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name <microsoft.org> is identical to Complainant’s mark); see also Koninklijke Philips Elec. NV v. Ramazan Goktas, D2000-1638 (WIPO Feb. 8, 2001) (finding that the domain name <philips.org> is identical to Complainant’s PHILIPS mark); see also BMW AG v. Loophole, D2000-1156 (WIPO Oct. 26, 2000) (finding that there is “no doubt” that the domain name <bmw.org> is identical to Complainant’s well-known and registered BMW trademarks).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainants established in this proceeding by extrinsic proof that they have rights to and legitimate interests in the mark contained in its entirety within the domain name that Respondent registered. Further, Complainants allege that Respondent has no such rights to or legitimate interests in the domain name. Due to Respondent’s failure to respond to the Complaint, the Panel is permitted to presume that Respondent lacks rights and legitimate interests in the disputed domain name. The burden shifts to Respondent to show that it does have such rights to or legitimate interests once Complainants make their prima facie showing pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name.”)
Respondent is using the <athens2004.org> domain name to redirect Internet users to a website that advertises and offers online gambling and other online entertainment links. Respondent’s use of a domain name identical to Complainant’s ATHENS 2004 mark is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Société des Bains de Mer v. Int’l Lotteries, D2000-1326 (WIPO Jan. 8, 2001) (finding no rights or legitimate interests where Respondent used the <casinomontecarlo.com> and <montecarlocasinos.com> domain names in connection with an online gambling website); see also Imation Corp. v. Jean Streut, FA 125759 (Nat. Arb. Forum Nov. 8, 2002) (finding no rights or legitimate interest where Respondent used the disputed domain name to redirect Internet users to an online casino); see also Disney Enterss, Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that Respondent’s diversionary use of Complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
Moreover, Respondent did not appear and did not produce any proof to counter Complainants’ allegations. The record contains no suggestion that Respondent is commonly known by the <athens2004.org> domain name and it is unlikely that Respondent could make such a showing. Thus, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent intentionally registered a domain name that contains in its entirety Complainants’ well-known mark and did so for Respondent’s commercial gain. Respondent’s domain name, <athens2004.org>, diverts Internet users who seek Complainants’ ATHENS 2004 mark to Respondent’s commercial website through the use of a domain name that is identical to Complainants’ mark. Furthermore, Respondent is unfairly and opportunistically attempting to benefit from the goodwill and reputation associated with Complainants’ ATHENS 2004 mark. Respondent’s practice of diversion, motivated by commercial gain, through the use of an identical domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Bank of America Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website” in holding that the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)); see also H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through Respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using Complainant’s famous marks and likeness); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website); see also Mars, Inc. v. Double Down Magazine, D2000-1644 (WIPO Jan. 24, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent linked the domain name <marssmusic.com>, which is identical to Complainant’s mark, to a gambling website).
Furthermore, while each of the four circumstances listed under Policy ¶ 4(b), if proven, evidences bad faith use and registration of a domain name, additional factors can also be used to support findings of bad faith. Here, Complainants stress that Respondent was aware or should have been aware of the fame of the IOC and its city and year date marks when Respondent registered the disputed domain name. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith).
Respondent registered the disputed domain name in violation of Australian statute. Accordingly, the law of Australia makes it clear that the IOC, its NOCs, and its Olympic Organizing Committees have preempted the field on use of the ATHENS 2004 mark. The strength of the ATHENS 2004 mark supports a finding of bad faith. Because Respondent is an Australian resident, it was aware or should have been aware of the fame of the SYDNEY 2000 mark. Respondent registered <athens2004.org> to suggest an association with Complainants and the ATHENS 2004 mark when no such association existed. In view of the fame and goodwill associated with Complainants’ marks, it is evident that Respondent was aware or should have been aware of these trademarks when it registered the disputed domain name. See Int'l Olympic Comm. & United States Olympic Comm. v. Russell Ritchey, FA 128817 (Nat. Arb. Forum Jan. 20, 2003) (finding that Respondent's registration was done in violation of a federal statute, and as such was held to be ipso facto bad faith); see also Best Western Internat’l Inc. v. Wieczorek, FA 96557 (Nat. Arb. Forum Mar. 27, 2001) (“The popularity of Complainants’ mark permits the conclusion that Respondent knew or should have known of Complainants’ well-known mark prior to registering the disputed domain name. This is evidence of bad faith.”); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <athens2004.org> domain name be TRANSFERRED from Respondent to Complainant International Olympic Committee.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 11, 2004.
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