International Olympic Committee and The
United States Olympic Committee v. Domain For Sale, Inc. a/k/a John Barry
Claim Number: FA0208000117893
PARTIES
Complainant
is International Olympic Committee and
The United States Olympic Committee, Colorado Springs, CO (“Complainant”)
represented by James L. Bikoff, of Silverberg Goldman & Bikoff LLP. Respondent is John Barry a/k/a Domain For Sale, Bronx, NY
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <olympiccommittee.com>,
registered with eNom, Inc.
PANEL
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in serving as Panelist in this
proceeding.
Tyrus
R. Atkinson, Jr., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 6, 2002; the Forum received a hard copy of the
Complaint on August 7, 2002.
On
August 8, 2002, eNom, Inc. confirmed by e-mail to the Forum that the domain
name <olympiccommittee.com> is
registered with eNom, Inc. and that Respondent is the current registrant of the
name. eNom, Inc. has verified that
Respondent is bound by the eNom, Inc. 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
August 8, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of March 25,
2002 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@olympiccommittee.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
September 17, 2002, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr.,
as Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
<olympiccommittee.com> domain
name is confusingly similar to Complainant’s OLYMPIC mark and UNITED STATES
OLYMPIC COMMITTEE mark.
Respondent
has no rights or legitimate interests in the <olympiccommittee.com>
domain name.
Respondent
registered and used the <olympiccommittee.com>
domain name in bad faith.
B.
Respondent
Respondent has failed to submit a
Response in this proceeding.
FINDINGS
The International Olympic Committee and
The United States Olympic Committee, collectively Complainant, hold numerous
registrations for the OLYMPIC mark in multiple countries. Complainant owns Swiss Trademark
Registration No. 406021 for the OLYMPIC mark, for use on and in connection with
a wide variety of goods and services associated with the Olympic Games. The Swiss Registration marks the date of
first use as 1894. Complainant also
owns International Registration No. 609691 for the OLYMPIC mark.
Complainant owns Registration Nos.
968,566 and 2,311,493 with the United States Patent and Trademark Office
(“USPTO”) for the OLYMPIC mark. In
addition, Complainant holds Registration No. 980,734 with the USPTO for the
UNITED STATES OLYMPIC COMMITTEE mark (date of first use: 1932).
Since 1894, Complainant has operated as
the umbrella organization of the Olympic Movement supervising the organization
of the Olympic Games. Complainant has
orchestrated 24 Olympic Summer Games and 19 Olympic Winter Games and is
currently coordinating the 2004 Olympic Summer Games in Athens, Greece.
Complainant broadcasted the 2002
Olympic Winter Games in Salt Lake City, Utah to a record 160 nations,
captivating an audience of over three billion viewers. Thus, Complainant’s OLYMPIC mark has grown
since 1894 to become an extremely valuable asset that is internationally
recognized. Complainant has actively
sought to protect that asset to ensure its long-term ability to help fund the
Olympic Movement because its funds are derived from the sale of television
rights for broadcasting of the Olympic Games and from marketing (licensing and
sponsorship) programs related to the use of the OLYMPIC mark.
Respondent registered the <olympiccommittee.com>
domain name on March 25, 2002.
Respondent uses the domain name to divert Internet users to a website
addressed <abortionismurder.org>, which contains graphic images of
aborted fetuses. Respondent, John
Barry, is a serial cybersquatter who has had numerous domain name cases brought
against him under the ICANN Policy. As
such, Respondent has engaged in a pattern of registering domain names
containing well-known marks of others and linking them to the
<abortionismurder.org> website for his own political agenda.
DISCUSSION
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 the Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
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; and
(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.
Identical and/or Confusingly Similar
Complainant established its rights in the
OLYMPIC mark through proof of registration with various authorized governing
bodies, and continuous use of the mark since 1894 to promote and develop the
Olympic Movement and Olympic Games. In
addition, Complainant established rights in the UNITED STATES OLYMPIC COMMITTEE
mark through proof of registration with the USPTO and subsequent use of the
mark.
Respondent’s <olympiccommittee.com>
domain name contains Complainant’s entire OLYMPIC mark with the addition of
the term “committee.” The use of the
term “committee” in association with the OLYMPIC mark carries a relationship
with Complainant’s operations. Thus,
the domain name does not create a distinct and separate mark capable of
overcoming a Policy ¶ 4(a)(i) confusingly similar analysis. See Space
Imaging LLC v. Brownwell, AF-0298
(eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s
domain name combines Complainant’s mark with a generic term that has an obvious
relationship to Complainant’s business); see also Marriott Int’l v. Café au lait, FA
93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain name
<marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT
mark).
Furthermore, Respondent’s <olympiccommittee.com>
domain name is confusingly similar to Complainant’s UNITED STATES OLYMPIC
COMMITTEE mark. This is due to the fact
that the deletion of “United States” from the second level domain does not
defeat a confusingly similar analysis because the domain name still contains
the core part of the protected mark, “Olympic Committee.” See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name
<asprey.com> is confusingly similar to Complainant’s “Asprey &
Garrard” and “Miss Asprey” marks); see also WestJet Air Center, Inc. v. West Jets LLC, FA 96882 (Nat. Arb. Forum
Apr. 20, 2001) (finding that the <westjets.com> domain name is
confusingly similar to Complainant’s mark, where Complainant holds the WEST JET
AIR CENTER mark); see also Wellness
Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001)
(finding that the domain name <wellness-international.com> is confusingly
similar to Complainant’s “Wellness International Network”).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Complainant asserts that Respondent has
no rights or legitimate interests in the <olympiccommittee.com> domain
name, which effectively shifts the burden on Respondent to demonstrate such
rights or legitimate interests.
Respondent, however, has failed to come forward and refute Complainant’s
contentions. Therefore, it may be
presumed that Respondent has no rights or legitimate interests in the domain
name. See Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once
Complainant asserts that Respondent has no rights or legitimate interests in
respect of the domain, the burden shifts to Respondent to provide credible
evidence that substantiates its claim of rights and legitimate interests in the
domain name); see also Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)
(finding that Respondents’ failure to respond can be construed as an admission
that they have no legitimate interest in the domain names).
Furthermore, Respondent’s failure to
answer Complainant’s allegations allows all reasonable inferences to be drawn
in favor of Complainant. See Vertical Solutions Mgmt., Inc. v.
Webnet-Marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure
to respond allows all reasonable inferences of fact in the allegations of Complainant
to be deemed true); see also Talk
City, Inc. v. Robertson,
D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is
appropriate to accept as true all allegations of the Complaint”).
Respondent simply uses the <olympiccommittee.com>
domain name to trade off of the goodwill Complainant has developed with the
OLYMPIC and UNITED STATES OLYMPIC COMMITTEE marks. The <olympiccommittee.com> domain name resolves to
the <abortionismurder.org> website where an Internet user is confronted
with graphic images of aborted fetuses.
As previously stated, this is a common practice of Respondent’s whereby
Respondent infringes on marks that are widely recognized. Thus, Respondent’s intent is to use
Complainant’s mark as a means to bring more traffic to the website containing
offensive images. Respondent’s
tarnishing practice does not constitute a connection with a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i), nor does it represent a legitimate
fair use under Policy ¶ 4(c)(iii). See
Rittenhouse Dev. Co. v. Domains For Sale, Inc.,
FA 105211 (Nat. Arb. Forum Apr. 8, 2002) (finding that, by linking the
confusingly similar domain name to an “Abortion is Murder” website and
subsequently asking for compensation beyond out-of-pocket costs to transfer the
domain name, Respondent has not demonstrated a right or legitimate interest in
the disputed domain name); see also MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding
that it is not a bona fide offering of goods or services to use a domain name
for commercial gain by attracting Internet users to third party sites offering
sexually explicit and pornographic material, where such use is calculated to
mislead consumers and tarnish Complainant’s mark).
Respondent is not affiliated with
Complainant and, even in light of the fact that Complainant heavily relies on
licensing use of its marks, Respondent is not authorized or licensed to
register or use domain names or marks containing the OLYMPIC mark. Respondent’s identity is disclosed as John
Barry, a notorious cybersquatter, and is not commonly known by the <olympiccommittee.com>
domain name or any similar variation thereof.
Therefore, Respondent has no rights or legitimate interests in the
domain name pursuant to Policy ¶ 4(c)(ii).
See Compagnie de Saint
Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no
rights or legitimate interest 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).
Accordingly, the Panel finds that
Respondent has no rights or legitimate interests in <olympiccommittee.com>
the domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent’s use of the <olympiccommittee.com>
domain name to promote the anti-abortion agenda by subjecting unsuspecting
Internet users to graphic images of aborted fetuses represents a bad faith
intent to trade off of the goodwill Complainant has worked hard to establish in
its OLYMPIC mark. It is clear that
Respondent knew of Complainant’s famous OLYMPIC mark, as Respondent’s intent
was to confuse Internet users as to Complainant’s affiliation or sponsorship
with the website and its politically charged content. Therefore, the Panel finds that Respondent, as evidenced by a
continuing pattern of conduct, registered and used the domain name in bad faith
under ¶ 4(a)(iii). See Rittenhouse
Dev. Co. v. Domains For Sale, Inc., FA 105211 (Nat. Arb. Forum
Apr. 8, 2002) (finding that “when a party registers and uses a domain name that
incorporates a well-known mark and connects the domain name with a website that
depicts offensive images,” the party has registered and used the disputed
domain name in bad faith); see also Reuters Ltd. v. Teletrust
IPR Ltd., D2000-0471
(WIPO Sept. 8, 2000) (finding that Respondent demonstrated bad faith where
Respondent was aware of Complainant’s famous mark when registering the domain
name as well as aware of the deception and confusion that would inevitably
follow if he used the domain names).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
shall be hereby granted.
Accordingly, it is Ordered that the
domain name <olympiccommittee.com> be transferred from
Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: October 1, 2002.
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