International
Olympic Committee & United States Olympic Committee v. Russell Ritchey
d/b/a EZ Fixin's
Claim Number:
FA0211000128817
PARTIES
Complainant is International Olympic
Committee, Lausanne, SWITZERLAND (“Complainant”) represented by James L.
Bikoff, of Silverberg Goldman & Bikoff LLP. Respondent is Russell Ritchey d/b/a EX
Fixin’s, Waco, TX, USA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <olympicbrand.com>,
<olympicsbrand.com>, <olympic-brand.com>, <olympics-brand.com>
and <olympianbrand.com>, registered with VeriSign, Inc.
PANEL
The undersigned certify that they have
acted independently and impartially and to the best of their knowledge have no
known conflict in serving as Panelists in this proceeding.
Honorable Robert T. Pfeuffer (Ret.),
Honorable Charles K. McCotter, Jr. (Ret.) and R. Glen Ayers, served as
Panelists. Judge Pfeuffer served as
Chairman; R. Glen Ayers drafted the Opinion.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum (the “Forum”) electronically on November 1, 2002;
the Forum received a hard copy of the Complaint on October 30, 2002.
On November 4, 2002, VeriSign, Inc.
confirmed by e-mail to the Forum that the domain names <olympicbrand.com>,
<olympicsbrand.com>, <olympic-brand.com>, <olympics-brand.com>
and <olympianbrand.com> are registered with VeriSign, Inc. and
that the Respondent is the current registrant of the names. VeriSign, Inc. has verified that Respondent
is bound by the VeriSign, 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 November 14, 2002, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of December 4, 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@olympicbrand.com, postmaster@olympicsbrand.com,
postmaster@olympic-brand.com, postmaster@olympics-brand.com and
postmaster@olympianbrand.com by e-mail.
A timely Response was received and
determined to be complete on December 4, 2002.
Additional submissions, all of which were
timely, were received as follows: (1) Complainant’s Request to Submit Reply to
Response...” (2) “Complainant’s Reply to Response....”; (3) Respondent’s
“Second Response; (4) Correspondence from VeriSign, Inc.
On December 23, 2002, pursuant to
Complainant’s request to have the dispute decided by a three-member Panel, the
Forum appointed Retired Judge Pfeuffer, Retired Judge McCotter, Jr.; and R.
Glen Ayers as Panelists.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainants, the International Olympic
Committee and the United States Olympic Committee (hereafter “IOC” unless there
is a specific reference to “USOC”) allege that registration of the five domain
names in question violate both the statutory laws of the United States and the
Policy and Rules of ICANN.
In the Complaint, IOC has clearly
established its ownership rights in the Olympic trademark. Further, the OLYMPIC mark and the Olympic
emblem (the emblem is not at issue in this matter) have been protected by a statute
of the Untied States, 36 U.S.C. §220501, et seq. That statute, the Ted Stevens Olympic &
Amateur Sports Act (“OASA”) grants the IOC an exclusive right in the Olympic
symbol and the word Olympic, Olympiad or any combination. That statute has been upheld in litigation,
including San Francisco Arts & Athletics Inc. v. United States Olympic
Comm. and Int’l Olympic Comm., 483 U.S. 522 (1987). The IOC Complaint goes on to establish its
trademarks and that the domain names are confusingly similar.
The domain names, IOC alleges, have been
registered under two different assumed names, “EZ Fixin’s” and “eBbrandman.com”
both held by Russell Ritchey (hereafter “Ritchey”).
IOC alleges that Ritchey offered these
domain name registrations for sale on September 29, 2002, and that Complainant
sent a cease and desist letter.
IOC
also asserts that Ritchey has no legitimate rights in the domain names. He is not commonly known by such names and
his marks do not relate to the various exceptions forbidding use of the term
Olympic contained in the above referenced protective statute.
As to bad faith, IOC states that Ritchey
clearly procured the domain names for purposes of resale. Complainant says bad
faith is also clearly shown by Ritchey’s conduct including letters to the
IOC. The registration and offer to sell
is enough, asserts IOC. In addition,
IOC cites the Panel to United States Olympic Comm. v. Tri B-U-N-Eco Project,
WIPO Case D2000-0435 (July 13, 2000) where the specific finding that the
statute cited above was sufficient to justify finding of bad faith without
more.
B. Respondent
Respondent’s basic argument seems to be
that first he was only trying to make some money and that he is an “Independent
Brand Consultant.” He then argues that
Olympic is a generic term and that the trademark is merely the 5 ring
symbol. He denies that the domain names
were registered for the express purpose of resale and he denies that there is
any confusion between what he does and has done and the actual Olympics. Further, Ritchey notes that he offered to
sell the domain name registrations to entities associated with the Olympics,
and all of which had the right to use the trademark. Further, Ritchey notes that each of the documents which he sends
out specifically informs potential customers that the use of any of his
materials cannot violate trademark law.
Respondent alleges “reverse domain
highjacking.”
C.
Additional Submissions
Complainant’s additional submissions
include a document styled “Complainant’s Request to Submit Or Reply to
Response...” and “Complainant’s Reply to Response...” Both were timely and will be considered.
Complainant first suggests that
Respondent changed registration information concerning the domain names from
“EZ Fixin’s” to “eBbrandman.com”. IOC
alleges that this is bad faith.
Complainant’s additional submissions also
concern whether or not Respondent is a reseller and allege that Respondent
contradicts himself when he states that he is not a reseller of domain name
registrations.
IOC also asserts that correspondence
received from Respondent represents a “wide- spreading effort to solicit
commercial ventures with the domain names....”
IOC also asserts that OASA, 36 U.S.C.
§220501 et seq., has removed the terms Olympic and Olympian from the
context of generic words. Other issues
raised are lack of rights and legitimate interest and registration in bad
faith.
Finally, Complainant denies any reverse
domain name highjacking.
Respondent’s additional response first
discusses his transfer of domain names from EZ Fixin’s” to “eBbrandman.com”
asserting that the transfer was completed before any complaint was filed.
He also asserts that his business
activities are legitimate and are not conducted in bad faith. Finally, he continues to assert that Olympic
and related terms are inherently generic.
FINDINGS
First, the Panel would ordinarily not be
concerned with protecting “generic” terms such as either “Olympic” or
“olympic”. However, any concern that
the Panel might have with the generic nature of the term Olympic is resolved by
the statute referenced by both parties, the “Olympic and Amateur Sports Act”
(“OASA”), 36 U.S.C. §220501 et seq.
Because it is obvious that Olympic is identical to or confusingly
similar to the domain names, and the term Olympic and similar terms are
protected by federal statute, then in the context of a dispute arising in the
United States, the Panel need inquire no further to find that the names are
confusingly similar. Here, the addition
of the word “brand” to the domain name does not change the analysis and, in
fact, adds to the problem.
The same findings can be made as to
rights in the name - Mr. Ritchey can have no rights in the name because of
federal statute. Further, the Panel
finds no “preparation for use.”
Ritchey’s conduct can certainly be said
to have risen to the level of “bad faith” as that term is ordinarily used and
explored in domain name disputes. It is
clear to the Panel that an attempt to register a domain name by a United States
citizen in contravention of a federal statute is, ipso facto to be bad
faith. Violation of the law, whether
knowing or unknowing, is probably always bad faith.
That said, again it is crystal clear that
Mr. Ritchey has no rights in the domain names.
He is not known by any version of the term “Olympic.” He has made no preparation for offering of
goods and services under that name, not withstanding his argument that his
business is the “offering” of the names themselves. In short, the facts are clear that these domain names were
registered primarily for the purpose of resale by the “eBbrandman.com”
business.
As to bad faith, his solicitations of
IOC, coupled with the confusingly similar nature of the names, clearly
constitute bad faith whether bad faith is considered to be blocking or
attempting to register a domain name which is confusingly similar to a
trademark and then offering the domain name for resale.
In other words, the Panel has no trouble
finding that Mr. Ritchey has no rights in the name and that he has acted in
“bad faith” as that term is used in the ICANN Rules and Policies.
To state simply, the statutes of the
Untied States make it clear that the IOC and its American counterpart, USOC,
have completely preempted the field.
Even if that were not the case, the existence of trademarks held by the
IOC and their famous, universal nature, would be sufficient to defeat Mr.
Ritchey’s contentions that he should not be compelled to transfer these names.
No evidence of reverse domain highjacking
exists.
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 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;
(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.
The
names are identical or confusingly similar to the marks. The priority of the OASA and the registered
trademarks of IOC over the domain names is clear.
There is no evidence of rights in the
name which adhere to Respondent.
Further, OASA preempts the field.
And, as Panelist McCotter stated in Olympic Comm. v. More Virtual
Agency, FA 112584 (Nat. Arb. Forum, June 13, 2002): “[IOC] has established
that it has rights in the ...name because...of registered trademarks
worldwide.”
Bad
faith here is determined by the statute, OASA, and by the offer of confusingly
similar domain name registrations for sale to the owner (the IOC) of a truly
famous mark protected by a specific, preemptive statute. Again, the determining factor is the
existence of the statute.
There
can be no reverse domain name hijacking where the United States Congress has
pre-empted the field. The generic words
involved in the marks and domain names are specifically protected.
DECISION
The domain name shall be TRANSFERRED.
Honorable Robert T. Pfeuffer (Ret.)
Honorable Charles K. McCotter, Jr. (Ret.)
R. Glen Ayers
Dated:
January 20, 2003
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