International Olympic Committee v.
Richard Freeman a/k/a Return Pty Ltd.
Claim Number: FA0210000127799
PARTIES
Complainant
is International Olympic Committee,
Lausanne, SWITZERLAND (“Complainant”) represented by James L. Bikoff, of
Silverberg Goldman & Bikoff LLP.
Respondent is Richard Freeman,
Darkes Forest Nsw, AUSTRALIA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <olympic.tv>,
registered with The .tv Corporation, a
VeriSign Company.
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 October 10, 2002; the Forum received a hard copy of the
Complaint on October 14, 2002.
On
October 14, 2002, The .tv Corporation, a VeriSign Company confirmed by e-mail
to the Forum that the domain name <olympic.tv>
is registered with The .tv Corporation, a VeriSign Company and that the
Respondent is the current registrant of the name. The .tv Corporation, a VeriSign Company has verified that
Respondent is bound by the The .tv Corporation, a VeriSign Company 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
October 17, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 6, 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@olympic.tv by e-mail.
A
timely Response was received and determined to be complete on November 20,
2002.
Complainant
filed a timely Additional Submission on November 25, 2002.
On December 9, 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
is the International Olympic Committee (IOC) located at Lausanne, Switzerland.
The
IOC is a famous organization, which sponsors the Olympic Games.
The
IOC owns all rights to the Olympic Games, the Olympic symbol, the Olympic flag,
motto and anthem, and the word Olympic.
The IOC owns Swiss Trademark Registration No. 406,021 for the trademark
OLYMPIC. The IOC owns registrations in
many countries, including Australia and the United States. Several nations, including the United States
and Australia, have passed national legislation to protect the OLYMPIC Mark as
mandated in the Olympic Charter. On
October 1, 2001, Australia enacted the “Olympic Insignia Protection Amendment
Act of 2001” which states that the word “OLYMPIC” is a protected Olympic
symbol.”
The
IOC owns and maintains a number of websites, including websites containing the
OLYMPIC Mark; e.g., <olympic.org>, <olympic.info>,
<olympic.biz> and many more.
In
the year 2000, the Olympic Games were held in Sydney, Australia.
Respondent
registered the Domain Name, <olympic.tv> on July 12, 2000.
On
October 2000, IOC counsel first placed Respondent on notice that his
registration violated the IOC’s exclusive rights in the OLYMPIC Mark. Respondent did not respond to the letter.
The IOC’s counsel wrote to Respondent again on November 1, 2000. Respondent did not respond to that letter,
so the IOC and its counsel continued to monitor Respondent’s registration from
the end of 2000 to July 2002. Respondent
has passively held <olympic.tv> since registering it on July 12,
2000. On October 4, 2002, IOC’s counsel
sent one final letter by e-mail to Respondent.
Respondent did not respond.
Given Respondent’s failure to respond, the IOC decided to proceed with
its UDRP complainant against Respondent.
The
domain name <olympic.tv> is identical and confusingly similar to
the OLYMPIC Mark.
Respondent
has no rights or legitimate interests in the domain name.
Respondent
registered the domain name with full knowledge of Complainant’s rights in the
OLYMPIC Mark.
Respondent
registered the domain name in bad faith.
B.
Respondent
Respondent
is Richard Freeman of Darkes Forest NSW, UNK, Australia.
Respondent
registered two domain names on July 12, 2000.
One of the domain names was <olympic.tv>. The purpose of the registrations was to use the
domain names to protest against Complainant on behalf of the Australian
Aboriginal community who were upset that Sydney received the Olympic Games over
Beijing, China. Also there was a huge
outcry over ticketing and other complaints. With less than two months to go
before the start of the Olympic Games, a decision was made to not go ahead with
a protest website on <olympic.tv>, mainly due to the unknown risk
of potential litigation.
Respondent
recently renewed the domain name <olympic.tv>. Respondent intends to use the website for
discussion forums for critical analysis of the IOC and plans on making the site
active in time for the start of the Athens Olympic Games in 2004.
The
domain name was registered solely for use a protest site. Respondent has rights to the guarantee of
free speech under the First Amendment of the U.S. Constitution.
Exemption
from liability is protected by the “fair use” exemption under the U.S. Federal
Anti-Dilution Act of 1996 for use of a famous mark if the use is for non-commercial
purposes or for news reporting and commentary.
Respondent
has legitimate rights and interests in the domain name and did not register the
domain name in bad faith.
C.
Additional Submissions
Respondent
first published his “protest website” on November 22, 2002. This website was published long after the
filing of this Complaint, and is a contrived attempt to demonstrate that
Respondent has legitimate rights in the Domain Name. Respondent has no right to use Complainant’s mark in a domain
name or website as a “protest site”. No
First Amendment defense is available in this case. Respondent has provided no valid reason why he could not provide
critical comment on the IOC without using the IOC’s Mark.
Respondent
has failed to provide concrete evidence of his use of the <olympic.tv>
website prior to the initiation of this dispute.
Criticism
sites do not constitute fair use of a mark under the UDRP.
FINDINGS
1. Complainant is a long-standing, world
famous, continually active organization that operates under the OLYMPIC Mark
worldwide.
2. Complainant owns trademarks for the
OLYMPIC Mark in Australia, the United States and elsewhere and in addition is
the beneficiary of legislation in Australia further protecting its OLYMPIC
Mark.
3. In anticipation of the Olympic Games in
Australia, Respondent registered the domain name <olympic.tv>. Respondent contends that he registered the
domain name, as a potential criticism site to be used against the IOC regarding
certain problems Respondent contends existed in Australia. Respondent presents no evidence, other than
his personal assertions, that his purpose was as he states.
4. Respondent held the domain name passively
from the date of registration on July 12, 2000, until 2002 at which time
Respondent renewed the registration through 2004.
5. Complainant notified Respondent by letter
in October 2000 and November 2000, that the registration of <olympic.tv>
was in violation of Complainant’s trademark rights. No response was received to either letter. Complainant continued to monitor the
registration awaiting its cancellation.
When Respondent renewed the domain name, Complainant wrote yet another
letter to Respondent dated October 4, 2002.
Receiving no response to the last letter, Complainant filed this
proceeding.
6. The domain name <olympic.tv>
is identical or confusingly similar to Complainant’s trademark, OLYMPIC.
7. Respondent has no rights or legitimate
interests in the domain name <olympic.tv>.
8. Respondent registered and used the domain
name in bad faith.
9. Both Complainant and Respondent request
the Panel to apply the law and legal precedents of the United States in
reaching a decision in this proceeding.
Neither party cites any law of another jurisdiction as applicable except
certain legislation in Australia that purports to give special protection to
Complainant’s trademark. The Panel
finds that the parties have elected to have this dispute decided under the laws
of the United States. The Panel will consider the court decisions and laws of
the United States cited by the parties as appropriate authority where and if
necessary to aid in the making of the decision in this case.
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.
Identical and/or Confusingly Similar
Complainant has rights in the trademark,
OLYMPIC, by virtue of the trademark registration in Australia, the United
States and elsewhere in the world. That
is sufficient to show rights under Policy ¶ 4(a)(i). See Koninklijke KPN
N.V. v. Telepathy Inc. D2000-0217 (WIPO May 7, 2001).
The domain name <Olympic.tv>
is identical to Complainant’s trademark, OLYMPIC.
The addition of the top-level domain
(gTLD) to a word is without legal significance in a domain name dispute. See
Busy Body, Inc. v. Fitness Outlet Inc, D2000-0127 (WIPO Apr. 22,
2000). This is true as to the ccTLD
“tv” as well. See World Wrestling Fed’n Entm’t, Inc. v. Michael Rapuano
a/k/a Bobby Rogers, DTV2001-0010 (WIPO May 23, 2001).
Complainant prevails under Policy ¶
4(a)(i).
Rights or Legitimate Interests
Complainant shows by use of evidence and
exhibits that it is the owner of the mark contained in the domain name at
issue. Complainant contends that it has
exclusive rights to use the mark. See Am. Online, Inc. v. Tencent
Communications Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000). It is clear from the pleadings that
Respondent is not an agent of Complainant nor authorized by Complainant to use
the trademark. No evidence suggests
that Respondent has ever been known as OLYMPIC or <olympic.tv>. Indeed, Respondent admits that the notion of
registering the domain name came to Respondent as a result of Australia being
chosen to host the Olympic Games.
As a result of Complainant’s showing, and
Respondent’s apparent lack of rights and legitimate interests in the domain
name <olympic.tv>, the burden must shift to Respondent to
demonstrate Respondent’s rights and legitimate interests in the domain name. See
Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov.
28, 2000).
Respondent’s sole contention is that he registered
the domain name for use as a “protest site” to air complaints of one kind or
another against Complainant. This
intention, Respondent argues, constitutes a proper use under Policy ¶
4(c)(iii). Respondent states as
follows: “The content of the website Olympic.tv is for criticism and commentary
about the IOC and the Olympic Games, which I believe to be non commercial use
and fair use…Commentary is intended to engage public opinion about the
direction of the Olympic movement in a positive manner, not in order to tarnish
the trademark ‘Olympic’”. This use is
protected by free speech, Respondent contends.
The only evidence presented by Respondent
consists of several articles critical of the Olympic movement written by
various individuals who have no apparent connection to Respondent. None of this material has ever appeared on a
website operated at <olympic.tv>.
It is clear from the evidence, and both parties agree, that no website
was posted using the domain name <olympic.tv> from the date of
registration until after the filing of the Complaint in this proceeding. The domain name was passively held during
the two-year period.
The rule most Panels employ is that once
the complainant has made a prima facie showing, that the burden of production
shifts to the respondent to show by providing concrete evidence that he has
rights to or legitimate interests in the domain name at issue. Concrete evidence constitutes more than mere
personal assertions. Just as a Panel
should require a complainant to establish by means other than mere bald
assertions that it is the owner of registered marks, so should the panel
require that a respondent come forward with concrete evidence that the
assertions made in the response are true. See Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000).
All Respondent offers in this case are
bald assertions. No concrete evidence
is presented to support any of Respondent’s personal declarations.
However, giving Respondent the benefit of
the truth of his assertions that he intended to use the domain name as a
“protest site” but never got around to doing so for a two year period and that
he then decided to renew the domain name registrations with intent to use it in
the future for a “protest site” changes in no way the ultimate result.
There is a line of cases regarding
consumer free speech Complainant sites and a developing line of case law
regarding such sites that attempt to define the limits to which a party may use
the mark of another in a domain name to comment, criticize, disparage, or
downplay the products or activities of another. See Robo Enters., Inc. v.
Tobiason, FA 95857 (Nat. Arb. Forum Dec. 24, 2000); The New York Times
Co. v. New York Internet Servs., D2000-1072 (WIPO Dec 5, 2000).
It is inappropriate to permit trademark
owners to shut down sites that are aimed at criticism of the trademark holder
because the content contained in the site is unfair, unwarranted, or
untrue. Trademark rights may be limited
by First Amendment concerns. See Wal-Mart Stores, Inc. v.
wallmartcanadasucks.com and Kenneth J. Harvey, D2000-1104 (WIPO Nov. 23,
2000).
A distinction must be drawn between the
domain name itself and the contents of the site which is reached through the
domain name. A party may have First
Amendment rights as to the content of the site, but that does not give the
party an equal right to use the marks of another in the domain name. See
Estee Lauder Inc. v. estelauder.com, esteelauder.net and Jeff Hanna, D2000-0869
(WIPO Sept. 25, 2000).
In the The New York Times Co. v. New
York Internet Servs. case, it was stated as follows: “Even if the site at newyorktimes.com were
purely a commentary or opinion site, NYIS would not be entitled to use THE NEW
YORK TIMES mark in the domain name…” See D2000-1072 (WIPO Dec. 5, 2000).
Free expression rights do not give a respondent a right or legitimate interest
in a domain name that is intentionally chosen to be identical with or
confusingly similar to the mark of another, even when the intention of
Respondent is to comment or criticize the mark holder. See Estee Lauder Inc.
v. estelauder.com estelauder.net and Jeff Hanna, supra.
A critical issue to be determined in
“protest site” cases is whether the domain name in question itself signifies
critical purposes, as opposed to imitation of the trademark at issue. A proper “protest site” makes some
indication that the site is not the site of the trademark holder but is instead
a site for criticism of the trademark holder.
There must be a lack of confusion between the “protest site” and the
trademark holder. Otherwise, there is
initial interest confusion, which is impermissible. See Winchester Props.,
LLC v. DefaultData.com, FA 97114 (Nat. Arb. Forum June 22, 2001).
The indication that the site is one of
criticism and not the site of the trademark holder is impossible when the
domain name and trademark are identical, as is the factual situation in this
case.
Not only has Respondent never used the
domain name <olympic.tv> for any purpose from the date or
registration through the date of the filing of the Complaint in this case, but
even if he had used the site in the manner he anticipated at registration, such
use would have not been a legitimate noncommercial or fair use under Policy ¶
4(c)(iii).
Accordingly, Complainant prevails under
Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant’s argument to the effect that
Respondent must have known of the fame of Complainant’s trademark at the time
of registration is admitted by Respondent.
Respondent intentionally selected the domain name for the purpose of
criticism of Complainant in connection with the Olympic Games in
Australia. Actual knowledge of a
commonly known mark at the time of registering a domain name that infringes
upon the mark is evidence of bad faith registration. See Exxon Mobil Corp.
v. Fisher, D2000-1412 (WIPO Dec. 18, 2000); Samsonite Corp. v. Colony
Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000); Neiman Marcus Group,
Inc. v. Lorna Kang, FA 109722 (Nat. Arb. Forum May 29, 2002).
Complainant contends that Respondent
creates a likelihood of confusion with the OLYMPIC Mark as to the source,
sponsorship, affiliation or endorsement of the <olympic.tv>
website in violation of Policy ¶ 4(b)(iv).
The domain name trades upon the reputation and goodwill associated with
the OLYMPIC Mark, it is argued. That is
likely to have been true had Respondent actually used the domain name on the
Internet. Respondent did not use the
domain name so as to cause such confusion as condemned in Policy ¶ 4(b)(iv). Respondent passively held the domain name
for more than two years after registration.
Complainant must prove both bad faith
registration and use.
Passive holding of a domain name can be
found to be evidence of bad faith use. See Telstra Corp. Ltd. v. Nuclear
Marshmallows, D2000-0003 (WIPO Feb. 28, 2000). Each case must be considered on the particular facts presented to
determine “whether the passive holding of a domain name, following a bad faith
registration of it satisfies the requirements of paragraph 4(a)(iii)…” And taking into account the facts when it is
not possible to conceive of any plausible actual or contemplated active use of
the domain name by Respondent that would not be illegitimate, such as by being
a passing off, an infringement of consumer protection legislation, or an
infringement of Complainant’s rights under trademark law, it can be found that
the domain name “is being used in bad faith” by Respondent. See Telstra Corp. Ltd. v. Nuclear
Marshmallows, ibid.
Complainant’s contention that the renewal
of the domain name was done in bad faith is inappropriate. See Weatherall
Green & Smith v. Everyman.com, D2000-1528 (WIPO Feb. 19, 2001). Only the original registration is in issue.
The Panel finds that the original
registration of the domain name was done in bad faith by Respondent since
Respondent was fully aware of Complainant’s trademark and registered a domain
name which intentionally infringed upon Complainant’s mark. Under the facts and circumstances of this
case, and the proper inferences to be drawn from the facts, the Panel finds
that the passive holding of the domain name for a two-year period constitutes
bad faith use of the domain name under the reasoning employed by the panel in Telstra
Corp. Ltd. v. Nuclear Marshmallows since there is no use Respondent could
make of the domain name that would not be an infringement of Complainant’s
rights under trademark law. See also Aloe Vera of Am., Inc. v. Adam Norins, FA
97291 (Nat Arb. Forum July 3, 2001) (holding that passive holding of a domain
name up and until the time a complainant was filed even though the intended
future use of the domain name was for criticism and comment constituted bad
faith use of the domain name).
The Panel finds that the domain name <olympic.tv>
was registered and used in bad faith by Respondent.
Complainant prevails under Policy ¶
4(a)(iii).
The
Panel holds that the domain name, <olympic.tv>, now registered to
Respondent, Richard Freeman, be TRANSFERRED to Complainant,
International Olympic Committee.
Tyrus R. Atkinson, Jr., Panelist
Dated: December 19, 2002
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