START-UP TRADEMARK OPPOSITION POLICY

DECISION

International Olympic Committee v. More Virtual Agency

Claim Number: FA0204000112584

PARTIES

Complainant is International Olympic Committee, Lausanne, SWITZERLAND (“Complainant”) represented by James L. Bikoff, of Silverberg Goldman & Bikoff, LLP.  Respondent is More Virtual Agency, Bonn, GERMANY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <olympic.biz>, registered with Key-Systems Gmbh.

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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel.  As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).

Complainant submitted a Complaint to the Forum electronically on April 26, 2002; the Forum received a hard copy of the Complaint on April 30, 2002.

On May 2, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 22, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).

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 June 5, 2002, pursuant to STOP Rule 6(b), the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as the single 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 STOP Rules.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the STOP Policy, STOP Rules, the Forum’s STOP Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Transfer of the domain name from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

1. Respondent’s <olympic.biz> domain name is identical to Complainant’s OLYMPIC mark.

2. Respondent has no rights or legitimate interests in the <olympic.biz> domain name.

3. Respondent registered the <olympic.biz> domain name in bad faith.

B. Respondent failed to submit a Response.

FINDINGS

Complainant is the owner of numerous OLYMPIC marks registered internationally, for example, Swiss Trademark Reg. No. 406021 first used in 1894, International Register (Madrid Protocol) Reg. No. 609691, and United Kingdom Reg. No. 339990, among others.

Complainant was founded in 1894 as an international, non-governmental, non-profit organization to serve as the umbrella organization of the Olympic Movement. In 1896, under Complainant’s direction, Greece hosted the first modern era Olympic Games. Since 1896, Complainant has supervised the organization of twenty-four Summer Games and nineteen Winter Games. Complainant owns all rights to the Olympic Games, the Olympic symbol, the Olympic flag, motto and anthem and the OLYMPIC mark.

Respondent registered the disputed domain name on March 27, 2002 and is not a franchisee or a licensee of Complainant. Complainant’s research shows evidence that Respondent registered 225 “.biz” domain names through Key-Systems GmbH at or around the same time.

DISCUSSION

Paragraph 15(a) of the STOP 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 STOP Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the STOP Rules.

Paragraph 4(a) of the STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:

(1) the domain name is identical 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 or is being used in bad faith.

Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.

Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (IP) claim form.  Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights.  The existence of the “.biz” generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.

Complainant’s Rights in the Mark

Complainant has established that it has rights in the OLYMPIC mark through international registration and continuous use following Complainant’s founding in 1894. Respondent’s <olympic.biz> domain name is identical to Complainant’s OLYMPIC mark in form and spelling, thereby satisfying the identical inquiry. See Princeton Linear Assoc., Inc. v. Copland o/b/o LAN Solutions Inc. FA 102811 (Nat. Arb. Forum Feb. 8, 2001) (finding that, due to the nature of STOP proceedings, identicalness between Complainant's mark and disputed domain name should never be a threshold issue).

The Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to come forward with a Response. Therefore, it is presumed that Respondent has no rights or legitimate interests in the disputed domain name. See 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, when Respondent fails to submit a Response the Panel is permitted to make all inferences 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).

Complainant has established that it has rights in the disputed domain name because it is the owner of the relevant registered trademarks worldwide. Respondent has not come forward to proffer any evidence that it has rights in the OLYMPIC mark anywhere in the world. Due to the international fame of Complainant’s mark, it can be inferred that Respondent is not the owner of a trade or service mark that is identical to the contested domain name. Therefore, Respondent has no rights or legitimate interests in the <olympic.biz> domain name under STOP Policy ¶ 4(c)(i). See Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark and that no person besides Complainant could claim a right or a legitimate interest with respect to the domain name <nike-shoes.com>).

It can be inferred that Respondent’s planned use of the domain name identical to Complainant’s mark would be to divert Internet users interested in Complainant’s services to Respondent’s website. Therefore, Respondent’s registration of <olympic.biz> is not in connection with a bona fide offering of goods and services under STOP Policy ¶  4(c)(ii). See  Credit Suisse Group o/b/o Winterthur Ins. Co. v. Pal-Ex Kft, FA 102971 (Nat. Arb. Forum Feb. 25, 2002) (“The use of another's trademark to attract users to Respondent's domain is not considered to be a bona fide offering of goods or services pursuant to STOP Policy ¶ 4(c)(ii)”); see also Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or legitimate interests where Respondent diverted Complainant’s customers to his websites).

There is no evidence on the record, nor has Respondent come forward to establish that it is commonly known by the <olympic.biz> domain name pursuant to STOP Policy ¶ 4(c)(iii).  Furthermore, it would be difficult to find a person who could show rights or legitimate interests in an internationally renowned mark that has been in use since 1894. Complainant’s famous mark prevents Respondent from claiming that it has been commonly known by an identical representation, mark or domain name. See Nike, Inc. v. B. B. de Boer, supra.; see also Nat’l Acad. Of Recording Arts & Sci Inc. v. Lsites, FA 103059 (Nat. Arb. Forum Feb. 11, 2002) (finding that the famous nature of Complainant’s GRAMMY mark prevented Respondent from being commonly known by <grammy.biz>).

The Panel finds that STOP Policy ¶ 4(a)(ii) has been satisfied.

Registration or Use in Bad Faith

Respondent registered the domain name for the purpose of preventing Complainant from registering its OLYMPIC mark. Respondent’s actions evidence bad faith pursuant to STOP Policy ¶ 4(b)(ii).  When it registered the domain name, by virtue of the STOP registration procedure, Respondent had constructive notice of the OLYMPIC trademark registrations, over one hundred years of trademark protection and the international fame of the OLYMPIC mark. Therefore, registration constituted bad faith infringement of Complainant’s right to reflect its mark. See Toyota Jidosha Kabushiki Kaisha v. S&S Enter. Ltd., D2000-0802 (WIPO Sept. 9, 2000) (finding that “Registration of a domain name goes further than merely correctly using in an advertisement the trade mark of another in connection with that other’s goods or services; it prevents the trade mark owner from reflecting that mark in a corresponding domain name”); see also Peachtree Software v. Scarponi, FA 102781 (Nat. Arb. Forum Jan. 23, 2002) (finding bad faith under STOP Policy ¶ 4(b)(ii), noting that it was reasonable to conclude Respondent registered <peachtree.biz> with the intent to prevent Complainant from reflecting its PEACHTREE mark in a corresponding domain name, given Respondent's knowledge of Complainant's mark and Respondent's lack of rights or interests in the mark). Respondent was aware that it was intentionally infringing upon Complainant’s mark. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

Additionally, due to the aforementioned international fame associated with Complainant’s mark, Respondent was constructively aware of Complainant’s OLYMPIC mark and the opportunities available to those affiliated with it. Respondent’s <olympic.biz> domain name is identical to Complainant’s established OLYMPIC mark resulting in the likelihood that Internet users will believe that there is some affiliation between Respondent and Complainant; notwithstanding the fact that Respondent had no authorization to make use of Complainant’s mark. Registration of the <olympic.biz> domain name is evidence of bad faith pursuant to STOP Policy ¶ 4(b)(iv) since it is inevitable that Respondent will attract unsuspecting Internet users seeking Complainant’s website based on the goodwill associated with its famous mark. See Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that Respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with Complainant, and thus is the equivalent to bad faith use); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).

The Panel finds that STOP Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the Start-Up Trademark Opposition Policy, the Panel concludes that relief shall be hereby GRANTED.

Accordingly, it is Ordered that the domain name  <olympic.biz> be TRANSFERRED from Respondent to Complainant and that subsequent challenges under the STOP Policy against this domain name SHALL NOT be permitted.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated: June 13, 2002

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