WIPO Arbitration and Mediation
ADMINISTRATIVE PANEL DECISION
United States Olympic Committee (USOC)
v. Tri B-U-N Eco. Project
Case No. D2000-0435
1. The Parties
Complainant is United States Olympic Committee
("USOC"), a non-profit, Congressionally chartered
Colorado (USA) corporation (36 U.S.C. section 220502), One Olympic
Plaza, Colorado Springs, Colorado (USA), represented by James
L. Bikoff, Esq. and David I. Wilson, Esq., Silverberg Goldman
& Bikoff, Georgetown Place, Suite 120, 1101 30th Street,
NW, Washington D.C. 20007 (USA), hereinafter the "Complainant."
Respondent is Tri B-U-N Eco. Project, P.O.
Box 15436, Seattle, Washington 98115 (USA), represented by Ronald
R. Ritoch II, P.O. Box 15436, Seattle, Washington, 98115 (USA),
hereinafter the "Respondent."
2. The Domain Name and
The domain names at issue are usaolympiconlinestore.com
and olympiconlinestore.com. They are collectively referred to
as the "Domain Names." The registrar is register.com,
inc. (the "Registrar").
3. Procedural History
The WIPO Arbitration and Mediation Center (the
Center) received the Complainantís complaint on May 15, 2000
(electronic version) and May 17, 2000 (hard copy). The Center
verified that the complaint satisfies the formal requirement
of the ICANN Uniform Domain Name Dispute Resolution Policy (the
Policy), the Rules for Uniform Domain Name Dispute Resolution
Policy (the Rules), and the Supplemental Rules for Uniform Domain
Name Dispute Resolution Policy (the Supplemental Rules). Complainant
made the required payment to the Center. The formal date of
the commencement of this administrative proceeding is May 18,
On May 17, 2000, the Center transmitted, via
email to register.com, a request for registrar verification
in connection with this case. On May 17, 2000, register.com
transmitted, via email to the Center, register.comís Whois Results,
confirming that the Respondent Tri B-U-N Eco. Project is the
registrant, that the administrative contact is Ronald Ritoch,
and that the technical contact is Internic Registrar Internic.
Having verified that the complaint satisfied
the formal requirements of the Policy and the Rules, on May
18, 2000, the Center transmitted to the Respondent Notification
of Complaint and Commencement of the Administrative Proceeding
via post/courier, facsimile and e-mail. The postal address used
for Respondent was as follows:
Tri B-U-N Eco. Project
PO Box 15436
Seattle, WA 98115 (USA)
A response was received by June 7, 2000 (electronic
version) and June 13, 2000 (hard copy).
On June 16, 2000, in view of the Complainantís
designation of a single panelist (but without prejudice to any
election to be made by the Respondent) the Center invited Mr.
Richard G. Lyon to serve as a panelist.
Having received on June 16, 2000, Mr. Lyonís
Statement of Acceptance and Declaration of Impartiality and
Independence, the Center transmitted to the parties a Notification
of Appointment of Administrative Panel. The Projected Decision
Date was June 30, 2000. The Sole Panelist finds that the Administrative
Panel was properly constituted and appointed in accordance with
the Rules and Supplemental Rules.
Complainantís "Request to File a Reply
to Respondentís Response" was received and granted by the
Panel on June 16, 2000, and Respondentís "Request to Deny
Complainantís Request to File a Reply to Respondentís Response,"
received June 15, 2000, was denied. Complainant filed his reply
to Respondentís response, and Respondent was allowed a Sur-Reply,
due June 30, 2000. On June 26, 2000, Respondent requested a
10-day extension of his deadline, which was granted; his Sur-Reply
was filed on July 10.
The Administrative Panel shall issue its Decision
based on the Complaint, the Response, the Reply to the Response
and Sur-Reply, the e-mails exchanged, the evidence presented,
the Policy, the Rules and Supplemental Rules.
4. Factual Background
Complainant is a non-profit, Congressionally
chartered corporation with exclusive rights to commercial use
of Olympic terminology and symbols, under the Ted Stevens Olympic
and Amateur Sports Act (OASA), 36 U.S.C. section 220506. Congress
charged Complainant with the responsibility of coordinating
and developing amateur athletic activity in the United States
directly related to international amateur athletic competition.
Exclusive rights to the use of the word OLYMPIC "facilitate
the USOCís ability to raise those financial resources from the
private sector that are needed to fund the United States Olympic
movement." United States Olympic Committee v. Intelicense
Corp., S.A., 737 F. 2d 263 (2nd Cir. 1984).
Complainant is the owner of many United States
Trademark registrations that include the components U.S. or
USA and OLYMPIC. A partial list of Complainantís registered
U.S. trademarks, and products exhibiting the trademarks, is
set forth in paragraph 26 of the Complaint. Pursuant to OASA,
grandfathered rights to make use of the word OLYMPIC exist only
for those parties which actually used the word before September
21, 1950. Complainantís trademark registration includes a first
use in commerce date of 1896, and Respondentís registration
of the Domain Names is dated March 24, 2000.
Complainant derives substantial revenue from
licensing its marks in connection with goods and services associated
with the Olympic Games (Complaint paragraphs 28, 32). Respondentís
website originally advertised future sale of Olympic merchandise,
memorabilia, and souvenirs. Sale of this merchandise was not
licensed by the USOC (Complaint paragraph 33).
As discussed below, there were conversations
between representatives of Complainant and Respondent in which
a possible sale of the Domain Names for $30,000, or $25,000
and four tickets to certain events at the 2000 Olympic Games
in Sydney, Australia, was discussed, and a later discussion
in which a sale for $20,000 plus four tickets to 2000 Olympic
events was discussed. The USOC offered to acquire the Domain
Names for Respondentís cost of registering them.
5. Partiesí Contentions
Complainant. Complainant contends that the
Respondent has acquired Domain Names that incorporate the identifying
portion of Complainantís registered trademarks; that these Domain
Names are confusingly similar to Complainantís trademarks, that
Respondent has taken this action to take advantage of the Complainantís
trademarks and the goodwill associated with them by diverting
potential buyers from the websites of Complainant and its authorized
licensees to the Respondentís website; that Respondentís use
of the Domain Names violates OASA; that the Respondent has no
rights or legitimate interests in respect to the Domain Names,
that Respondentís offer to sell the Domain Names violates the
Policy, and that the Domain Names were registered and are being
used in bad faith.
Respondent. Respondent claims a legitimate
right to use the Domain Names. He claims that he intends to
use his websites for the primary purpose of selling photographs
of the 2000 Olympic Games in Sydney. While Respondent admits
a desire initially to use the Domain Names to sell "Olympic-type
merchandise," he states that after a request from Complainant
he agreed to cease any use of Complainantís logo and disclaimed
any intention to sell merchandise that used that logo or the
word OLYMPIC, thereby eliminating any confusion or inference
of bad faith. In his Sur-Reply (p. 9) he states that his "hopes,
without action, to sell non-officially authorized olympic-related
or olympic-type merchandise" cannot violate OASA.
Respondent denies that use of the Domain Names
for his website is likely to cause confusion with Complainantís
marks. Respondent notes that its website now includes a disclaimer,
"Not affiliated with any official Olympic organization,"
which removes any possibility of confusion with Complainantís
Respondent makes various arguments about how
OASA does not apply to its use of Olympic in its website, including
a claim that OASA does not apply to the Internet.
While acknowledging a telephone conversation
in which possible sale of the Domain Names for either $30,000
or $25,000 plus certain tickets to the Sydney Games took place,
Respondent stoutly denies making an offer to sell the Domain
Names He characterizes Complainantís actions in this conversations
as a "subtle... attempt to entrap Respondent into making
such an offer" (Response paragraph 44). Respondent claims
that his original lack of intent to sell the Domain Names, and
his ultimate refusal to sell the Domain Names, evidences that
they were not registered in bad faith.
Respondent also contends that Complainantís
licensing third parties to sell official Olympic merchandise
is conduct "contrary to [OASA]" (Response paragraph
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the
Administrative Panel as to the principles the Administrative
Panel is to use in determining the dispute: "A Panel shall
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."
Applied to this case, Paragraph 4(a) of the
Policy directs that the Complainant must prove each of the following:
(1) that the Domain Name is registered by the
Respondent is identical to the trademark in which the Complainant
has right; and,
(2) that the Respondent has no legitimate interests
in respect to the Domain Name; and,
(3) that the Domain Name has been registered
and used in bad faith.
The Domain Names specifically include the word
OLYMPIC for which the Complainant has a trademark, and combine
USA with OLYMPIC in one of the Domain Names, similar to additional
trademark registrations held by the USOC (Complaint paragraph
26). These word combinations are followed by the words "online
store." They are clearly likely to cause confusion with
those sites registered by Complainant. Specifically, Complainantís
registration of the mark U.S. OLYMPIC SPIRIT is for mail order
catalog and retail store services (Complaint paragraph 30).
These services are closely mirrored by the services originally
intended to be offered at the addresses of the Domain Names.
It is especially likely that an individual who is using the
Internet to find genuinely licensed Olympic merchandise would,
by reason of the inclusion of the word OLYMPIC in Respondentís
website, discover Respondentís site. Even if Respondentís disclaimer
might disabuse that person of the notion that Respondent was
properly licensed by Complainant, use of the word will have
attracted customers to the site. Respondentís admitted desire
to sell merchandise or photographs related to the Olympic Games
through his website indicates an intent to benefit from the
goodwill associated with Complainantís marks.
B. Legitimate Interest
Complainant has not licensed or otherwise permitted
Respondent to use any of its trademarks in any manner, including
use in Respondentís domain name. Use of the Domain Names to
sell Olympic merchandise would therefore violate OASA. Respondent
is not making a legitimate noncommercial or fair use of the
Domain Names, nor has Respondent ever been known by the name
corresponding to the Domain Names. Respondent has acknowledged
that he intended to use the Domain Names for merchandise or
photographs associated with the Olympic Games, thus making use
of Complainantís marks for commercial gain.
C. Use in Bad Faith
(i) If Respondent were to use the Domain Names
as he originally proposed Ė addresses for websites selling "Olympic
merchandise, memorabilia and souvenirs," even if "unauthorized"
Ė Respondent would be intentionally attempting to attract, for
commercial gain, Internet users to its web site by creating
a likelihood of confusion with USOCís mark as to the source
or endorsement of the website and products offered. The same
is true for sale of photographs relating to the Olympics. This
activity, even if never carried through into practice, is a
basis for a finding of bad faith under Paragraph 4b(iv) of the
(ii) Violation of OASA, which was enacted in
part to give special protection to Complainantís marks and attached
goodwill, is bad faith per se. The Panel has considered, and
rejects, Respondentís various arguments about why OASA is invalid
or does not apply to him.
(iii) . Both parties acknowledge that the Policyís
method of resolving disputes such as this does not permit the
Panel to assess credibility except upon the partiesí written
submissions. The Panel will not rest its decision upon an issue
that would best be resolved by confrontation, cross-examination,
and a factfinderís assessment of believability. That is not
necessary, for Respondentís e-mail correspondence indicates
that he was prepared to sell the Domain Names for at least $20,000,
a sum that greatly exceeds the out-of-pocket expenses associated
with registering the names, and in the end (Sur-Reply, pp. 13-14)
Respondent bases the propriety of such a sale, should he undertake
it, on the legitimacy of his right to use the Domain Names.
The Panel has found no such legitimacy, so any attempt to sell
the Domain Names for profit is behavior constituting bad faith
in registering the Domain Names under Paragraph 4(b) of the
For these reasons the Administrative Panel
finds that the Respondent has registered and used the Domain
Names in bad faith.
The Administrative Panel finds that the Domain
Names listed above registered by Respondent incorporate a registered
trademark of Complainant; that the Respondent has no right or
legitimate interest in respect to the Domain Names; and that
the Respondentís Domain Names have been registered and are being
used in bad faith. Accordingly, pursuant to paragraph 4(i) of
the Policy, the Administrative Panel requires that the registration
of the Domain Names be transferred to the Complainant.
Richard G. Lyon Sole Panelist
Dated: July 13, 2000