International Olympic
Committee, United States Olympic Committee, and CTV Inc. v.
Claim Number: FA0903001253280
PARTIES
Complainants are International
Olympic Committee, United States Olympic Committee, and CTV Inc. (“Complainant”), represented by James
L. Bikoff, of Silverberg Goldman & Bikoff, LLP, Washington,
D.C., USA. Respondent is Texas
International Property Associates - NA NA (“Respondent”), represented by Gary
Wayne Tucker, of Law Office of Gary Wayne Tucker,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ctvolympics.com>, registered with Compana, LLC.
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.
Debrett G. Lyons as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 19, 2009; the
National Arbitration Forum received a hard copy of the Complaint on March 20, 2009.
On March 23, 2009, Compana, LLC confirmed by e-mail to the
National Arbitration Forum that the <ctvolympics.com> domain name is
registered with Compana, LLC and that the
Respondent is the current registrant of the name. Compana, LLC
has verified that Respondent is bound by the Compana,
LLC 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 March 26, 2009, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of April 15, 2009 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@ctvolympics.com by e-mail.
A timely Response was received and determined to be complete on April 15, 2009.
On April 23, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Debrett G Lyons as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to CTV, Inc.
PARTIES’ CONTENTIONS
A. Complainant
Complainant asserts trademark rights and
alleges that the disputed domain name is both identical and is confusingly
similar to the trademarks.
Complainant alleges that Respondent has no
rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent is a
serial cybersquatter which registered and is using the disputed domain name in
bad faith.
B. Respondent
Respondent states that it “agrees to the relief requested by the Complainant and will, upon order of the Panel, do so.” Respondent goes on to add that “[t]his is not an admission to the three elements of 4(a) of the policy but rather an offer of a ‘unilateral consent to transfer’, as prior Panels have deemed it.”
Response contains no substantive submissions relevant to Paragraph 4(a) of the Policy.
FINDINGS
1.
International
Olympic Committee (IOC) is a NGO founded in 1894 and responsible for the
conduct and business of the modern day Olympic Games. It is the owner of trademark registrations
for OLYMPIC and THE OLYMPICS.
2.
United
States Olympic Committee (USOC) is recognized by IOC charter as the National
Olympic Committee for the territory of the
3.
CTV Inc.
is a Canadian commercial broadcasting company that IOC has licensed to use the
trademark OLYMPIC in relation to the international broadcasting of the upcoming
2010 Winter Olympics in Vancouver and the 2012 Summer Games in London. CTV Inc. holds trademark registrations for
CTV.
4.
Respondent
does not specify its business but appears to deal in domain names.
5.
Respondent
registered the disputed domain name on February 11, 2006.
6.
A website corresponding with the disputed domain
name carries third party commercial advertising.
7.
There is
no relationship between Respondent and any of IOC, USOC or CTV Inc., nor has
any of IOC, USOC or CTV Inc. authorized Respondent to use its trademark(s) or any
domain name incorporating the trademark(s).
DISCUSSION
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 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 Respondent is
identical or confusingly similar to a trademark or service mark in which Complainant
has rights;
(2) 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.
Notwithstanding
the foregoing, a panel may grant a complainant’s requested relief when a
respondent consents to that relief.
Preliminary Procedural Issue #1: Consent to
Transfer
An issue arises as to whether the Panel
should decide this case under the Policy given that Complainant calls for
transfer of the disputed domain name and Respondent answers that call.
In the case of Disney Enters., Inc. v.
Morales, FA 475191 (Nat. Arb. Forum June 24, 2005), it was said that “where Respondent has agreed to
comply with Complainant’s request [to transfer the domain name], the Panel felt it to be expedient and judicial to forego
the traditional UDRP analysis and order the transfer of the domain names.”
In Malev Hungarian Airlines, Ltd. v.
Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) the panel decided that
“the parties have both asked for the domain name to be transferred to the
Complainant .... Since the requests of the parties in this case are
identical, the Panel has no scope to do anything other than to recognize the
common request, and it has no mandate to make findings of fact or of compliance
(or not) with the Policy.” See also Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev.,
FA 133625 (Nat. Arb. Forum Jan. 9, 2003).
By way of contrast, in Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Nat. Arb.
Forum July 17, 2008), the panel stated that:
Respondent has admitted in his response to the
complaint of Complainant that it is ready to offer the transfer without
inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel
is of the view that the transfer of the disputed domain name deserves to be along
with the findings in accordance with the Policy
and in Barrow Indus. Inc. v.
Paragraph 10 of the
Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) sets out
the general powers of the Panel.
Paragraph 10(a) states that the “Panel shall conduct the
administrative proceeding in such manner as it considers appropriate in
accordance with the Policy and these Rules” and Paragraph 10(c) states that the “Panel
shall ensure that the administrative proceeding takes place with due
expedition.”
Respondent argues that “due expedition” means that Panel should not diffuse its energy on matters which do not require a decision. That argument has received sufficient attention in earlier decisions under this Policy and, for present purposes, all this Panel need decide is that if a decision of whatever proper scope can be rendered in a timely manner then it is rendered with due expedition.
Panel finds in this case that the consent-to-transfer statement (set out above) in Response is ambiguous and that since Respondent has otherwise denied any breach of the Policy, it is correct and proper to apply the Policy.
Preliminary Procedural Issue #2: Multiple
complainants
Complaint was filed jointly by IOC, USOC, and
CTV Inc. and so that raises consideration of Paragraph 3(a) of the Rules which
states that “[a]ny person or entity may initiate an administrative proceeding
by submitting a complaint.”
Prior panels interpreting the Rule 3(a) have
generally required multiple named complainants to demonstrate a commercial link
between one another. Here, the
uncontradicted assertions are that IOC has recognized USOC as the National
Olympic Committee for the territory of the
Panel finds that IOC, USOC and CTV Inc. are
sufficiently commercially linked and so form an ‘entity’ for the purposes of
Rule 3(a). They are therefore referred
to collectively as Complainant in this administrative proceeding.
Substantive Issues
Paragraph 4(a)(i) of
the Policy requires a two-fold enquiry – a threshold investigation of whether a
complainant has rights in a trademark – and an examination of identicality or
confusing similarity.
The Policy does not distinguish between
registered and unregistered trademark rights and it is widely accepted that a
trademark registered with a national authority is prima facie evidence of trademark rights for the purposes of the
Policy. For those reasons, Panel finds
that Complainant has rights in the trademarks CTV, OLYMPIC and THE OLYMPICS by virtue of
various national and international trademark registrations shown in evidence.
Likewise, it is widely accepted that the
addition of a gTLD such as “.com” is trivial and will not of itself prevent a
finding of legal identity in the comparison of a certain trademark and domain
name.
Although IOC, USOC and CTV Inc. collectively
comprise Complainant in these proceedings, that does not entail a finding that
Complainant has rights in any portmanteau combination of the trademarks found
to belong to the individual entities.
There is no legal identity between the
disputed domain name and any one of the relevant trademarks. The remaining enquiry is one of confusing
similarity and the proper question is whether CTVOLYMPICS is confusingly
similar to any of CTV, OLYMPIC or THE OLYMPICS.
Since Complainant has relied for its
trademark rights on registration and not reputation, the assessment of
confusing similarity can pay no regard to the repute of any of the registered
trademarks. For that reason Panel finds
there to be no confusing similarity in the comparison of CTVOLYMPICS with CTV.
On the other hand, the addition of three arbitrary
letters, CTV, to the word OLYMPICS which would in Panel’s opinion be readily
discerned as its distinctive element of the domain name, leads to the finding
that CTVOLYMPICS and OLYMPIC are terms which are confusingly similar.
Accordingly, Complainant has established the
first limb of the Policy.
Complainant has the burden to establish that Respondent has no rights
or legitimate interests in the domain name.
Nevertheless, it is well settled that Complainant need only make out a prima
facie case, after which the onus shifts to Respondent to demonstrate rights
or legitimate interests. See Do The Hustle, LLC v. Tropic Web,
D2000‑0624 (WIPO
Respondent makes an unsupported denial of Complainant’s allegation that
it lacks rights or legitimate interests in the domain name. Nevertheless, the Policy states
that any of the following circumstances, in particular but without limitation,
if found by the Panel to be proved based on its evaluation of all evidence
presented, shall demonstrate rights or legitimate interests to a domain name
for purposes of Policy ¶
4(a)(ii):
(i) before any notice to you of
the dispute, your use of, or demonstrable preparations to use, the domain name
or a name corresponding to the domain name in connection with a bona fide
offering of goods or services; or
(ii) you (as an individual,
business, or other organization) have been commonly known by the domain name,
even if you have acquired no trademark or service mark rights; or
(iii) you
are making a legitimate noncommercial or fair use of the domain name, without
intent for commercial gain to misleadingly divert consumers or to tarnish the
trademark or service mark at issue.
The WHOIS data does not support any argument that Respondent might be
commonly known by the disputed domain name.
There is no evidence that Respondent has any trademark rights. Complainant has stated there to be no
relationship between it and Respondent.
Respondent is not using, nor has it presented evidence of any demonstrable
preparations to use the disputed domain name in connection with a bona fide
offering of goods or services. The only
use is bad faith use, as to which see more below. See Fox
News Network, LLC v. Reid, D2002-1085 (WIPO
The Panel finds that Complainant has established a prima facie
case that Respondent lacks rights or legitimate interests in the disputed
domain name, and that Respondent in failing to provide any detail has not
discharged the onus which fell to it.
The Panel finds that Respondent has no rights or legitimate interests
in the domain name and so Complainant has satisfied the second limb of the
Policy.
Paragraph 4(b) of the Policy sets
out the circumstances which shall be evidence of the registration and use of a
domain name in bad faith. They are:
(i) circumstances
indicating that you have registered or you have acquired the domain name
primarily for the purpose of selling, renting, or otherwise transferring the
domain name registration to the complainant who is the owner of the trademark
or service mark or to a competitor of that complainant, for valuable
consideration in excess of your documented out of pocket costs directly related
to the domain name; or
(ii) you
have registered the domain name in order to prevent the owner of the trademark
or service mark from reflecting the mark in a corresponding domain name,
provided that you have engaged in a pattern of such conduct; or
(iii) you have
registered the domain name primarily for the purpose of disrupting the business
of a competitor; or
(iv) by using the
domain name, you have intentionally attempted to attract, for commercial gain,
Internet users to your website or other on‑line location, by creating a
likelihood of confusion with the complainant’s mark as to the source,
sponsorship, affiliation, or endorsement of your website or location or of a
product or service on your website or location.
What is noteworthy about Paragraphs 4(b)(i)-(iv)
is that they are all cases of both registration and use in bad faith. In this case, Complainant has not specifically
relied on any of those grounds and chose to raise independent claims of bad
faith registration and bad faith use, however Panel finds that Respondent’s
conduct falls squarely within Paragraph 4(b)(iv).
In particular, the evidence shows public
announcement in 2005 of CTV Inc.’s successful bid for coverage of the upcoming Winter and Summer Olympic Games, long before the disputed
domain name was registered. Moreover,
CTV Inc. has an active and relevant website at www.ctvolympic.ca. Panel has already found a likelihood of
confusion between the disputed domain name and Complainant’s trademark. The website corresponding to the disputed
domain name is clearly of a commercial nature and it is more likely than not
that Respondent is benefitting from pay-per-click revenue from that website. In short, all the elements of Policy ¶ 4(b)(iv)
are present and Panel need not look for other evidence of bad faith
registration and bad faith use.
Complainant has satisfied the third and final
limb of the Policy.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ctvolympics.com> domain name be TRANSFERRED
from Respondent to CTV, Inc.
Debrett G Lyons, Panelist
Dated: May 6, 2009
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