WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
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 Registrar
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 Complainant’s 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, 2000.
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.com’s 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 Complainant’s 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. Lyon’s 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.
Complainant’s "Request to File a Reply to Respondent’s Response" was received and granted by the Panel on June 16, 2000, and Respondent’s "Request to Deny Complainant’s Request to File a Reply to Respondent’s Response," received June 15, 2000, was denied. Complainant filed his reply to Respondent’s 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 USOC’s 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 Complainant’s 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. Complainant’s trademark registration includes a first use in commerce date of 1896, and Respondent’s 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). Respondent’s 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 Respondent’s cost of registering them.
5. Parties’ Contentions
Complainant. Complainant contends that the Respondent has acquired Domain Names that incorporate the identifying portion of Complainant’s registered trademarks; that these Domain Names are confusingly similar to Complainant’s trademarks, that Respondent has taken this action to take advantage of the Complainant’s trademarks and the goodwill associated with them by diverting potential buyers from the websites of Complainant and its authorized licensees to the Respondent’s website; that Respondent’s use of the Domain Names violates OASA; that the Respondent has no rights or legitimate interests in respect to the Domain Names, that Respondent’s 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 Complainant’s 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 Complainant’s marks. Respondent notes that its website now includes a disclaimer, "Not affiliated with any official Olympic organization," which removes any possibility of confusion with Complainant’s marks.
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 Complainant’s 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 Complainant’s licensing third parties to sell official Olympic merchandise is conduct "contrary to [OASA]" (Response paragraph 14).
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, Complainant’s 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 Respondent’s website, discover Respondent’s site. Even if Respondent’s 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. Respondent’s 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 Complainant’s marks.
B. Legitimate Interest
Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks in any manner, including use in Respondent’s 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 Complainant’s marks for commercial gain.
C. Use in Bad Faith
(i) If Respondent were to use the Domain Names as he originally proposed – addresses for websites selling "Olympic merchandise, memorabilia and souvenirs," even if "unauthorized" – Respondent would be intentionally attempting to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with USOC’s 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 Policy.
(ii) 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 Panel has considered, and rejects, Respondent’s various arguments about why OASA is invalid or does not apply to him.
(iii) . Both parties acknowledge that the Policy’s method of resolving disputes such as this does not permit the Panel to assess credibility except upon the parties’ written submissions. The Panel will not rest its decision upon an issue that would best be resolved by confrontation, cross-examination, and a factfinder’s assessment of believability. That is not necessary, for Respondent’s 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 Policy.
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 Respondent’s 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