WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

TOROC & IOC v. Peter H. Hufschmid

Case No. D2001-0604

 

1. The Parties

The Complainants are: the Comitato per l'organizzazione dei XX giochi olimpici invernali - Torino 2006 ("TOROC"), an Italian non-profit foundation having its registered office at Via Nizza nr. 262 int. 58, 10126 Turin, Italy, and the International Olympic Committee ("IOC"), an international non-governmental non-profit organization having its office at Chateau de Vidy, P.O. Box 356, 1001 Lausanne, Switzerland.

The Respondent is Peter H. Hufschmid, an individual whose address is Tavelweg 25, 3006 Bern, Switzerland.

 

2. The Domain Name and Registrar

The domain name at issue is <torino2006.com> (the "domain name"). The Registrar is Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, USA ("NSI").

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") by email on April 27, 2001, and by hardcopy on April 30, 2001. The Center acknowledged receipt of the Complaint on April 30, 2001.

On May 1, 2001, the Center sent to the Registrar a request for verification of registration data. On May 2, 2001, the Registrar confirmed: 1) that Peter H. Hufschmid (TORINO8-DOM) is the current registrant of <torino2006.com>; 2) that the Registrantís address is Tavelweg 25, Bern, Switzerland; 3) that the Administrative, Technical and Billing Contact are: Peter H. Hufschmid (HP1430), Tavelweg 25, 3006 Bern, Switzerland, email: "peterhufschmid@bluewin.ch", telephone and fax number: +41 31 351 4691; 4) that the Uniform Domain Name Dispute Resolution Policy applies to the domain name; and 5) that the domain name is currently active.

On May 3, 2001, the Center verified that the Complainant had complied with all formal requirements, including payment of the fee.

On May 3, 2001, the Center forwarded the Complaint to the Respondent by post/courier, fax and email, with copies to ICANN and to the Registrar. The Center formally notified the Respondent that the Complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"); that payment of the required sum had been made by the Complainant; and that an administrative proceeding had been commenced against the Respondent. A deadline of May 22, 2001, was fixed for the Response.

No Response was submitted. Accordingly, the Center issued a Notification of Respondent Default to both parties on May 25, 2001.

On June 1, 2001, the Center notified the Parties that an Administrative Panel composed of a single member, Dr. Kamen Troller, had been appointed and that the Panelist had duly submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center. Absent exceptional circumstances, the Panelist was required to forward his decision to the Center in accordance with Paragraph 15 of the Rules by June 15, 2001.

The Panelist examined all notifications of the Center, and the Complaint, and finds that they comply with the formal requirements of the Rules and Supplemental Rules, and that the Administrative Panel was properly constituted.

 

4. Factual Background

A. The Complainants

The IOC is responsible for the supervision and organization of the Summer and Winter Olympic Games.

On June 19, 1999, the IOC entrusted the organization of the XXth Winter Olympic Games to the City of Torino and the Comitato Olimpico Nazionale Italiano (Complainantsí Exhibit 1, Host City Contract). The City of Torino and the Comitato Olimpico Nazionale Italiano created an organizing committee for the Games, TOROC (Complainantsí Exhibit 2).

The Complainants own the following trademark registrations for the trademark "TURIN 2006":

- Canadian trademark registration No. 886085, with priority filing date: February 3, 1998 (Complainantsí Exhibit 7);

- Swiss trademark registration No. 454584, filed on February 3, 1998 (Complainantsí Exhibit 8);

- USA trademark registration No. 75/529257, with priority filing date: February 3, 1998 (Complainantsí Exhibit 10); and

- International trademark registration No. 701296, filed on September 2, 1998 (Complainantsí Exhibit 5).

The Complainants also own the following application and registrations for the trademark "TORINO 2006":

- International trademark application No. 001580877, filed on March 29, 2000 (Complainantsí Exhibit 6);

- Swiss trademark registration No. 3442/2000, filed on March 22, 2000 (Complainantsí Exhibit 9);

- Swiss figurative trademark registration (TORINO 2006 Olympic Winter Games & Rings) No. 472634, filed on November 23, 1999 (Complainantsí Exhibit 11);

- International figurative trademark registration (TORINO 2006 Olympic Winter Games & Rings) No. 736269, filed on May 22, 2000 (Complainantsí Exhibit 12); and

- Italian trademark registration No. TO2000C2397, filed on July 18, 2000 (Complainantsí Exhibit 13).

TOROC is also the holder of the domain names <torino2006.org> and <torino2006.it> (Complainantsí Exhibits 14 and 15).

IOC asserts that it owns all rights on the Olympic symbols, flag, motto, anthem and Olympic Games.

B. The Respondent

The Respondent is Peter H. Hufschmid, an individual with residence in Switzerland.

The Respondent registered the domain name <torino2006.com> on February 27, 1998. The domain name does not resolve to a website (On several occasions, the Panel tried to visit the Respondentís website, but the requested URL: "http://www.torino2006.com" could not be retrieved). The domain name is offered for sale on GreatDomains.com.

The Complainants allege that the Respondent has also registered the domain name <torino2006.net>. However, according to the NSI Whois Information, the registrant of this domain name is: Will E., Jangmi-APT 402-1410, Sangin-Dong Dalseo-Gu, Daegu, Korea, and the Administrative, Technical and Billing Contact are: Eom, Sang Sik, email: "eom@kdns.com". The Panel does not see any connection or identity between the registrant of <torino2006.net> and the Respondent.

The Complainants also allege that the Respondent has registered other domain names referring to other candidate cities of the XXth Winter Olympic Games before the date on which the IOC entrusted the organization of the Games to the City of Torino and the Comitato Olimpico Nazionale Italiano. The Complainants only submitted evidence that the Respondent is the holder of <sion2006.org>, registered on April 30, 1998 (Complainantsí Exhibit 16).

 

5. Partiesí Contentions

A. The Complainants

The Complainants contend that each of the three elements specified in paragraph 4(a) of the Policy are applicable to the disputed domain name. More precisely, the Complainants submit that:

(1) the domain name <torino2006.com> is identical to the Complainantsí Trademarks and totally and exactly incorporates the Trademarks;

(2) the Respondent has no rights or legitimate interests in the domain name. The Complainants contend that "there is [no] evidence of the registrant's use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods of service" and that "Complainants have not licensed or otherwise permitted Respondent to use any of trademarks in any manner, including use of Respondent's domain name"; and

(3) the domain name was registered and is being used in bad faith. The Complainants assert that "the domain name was registered primarily for the purpose of selling for profit or otherwise transferring the domain name", and that "the domain name 'torino2006.net' (as the other domain names referring to the other candidate cities) was immediately registered in order to prevent the owners of the trademarks from reflecting the marks in a corresponding domain name".

The Complainants request the Administrative Panel to issue a decision that the domain name be transferred to the Complainants.

B. The Respondent

No Response has been submitted.

 

6. Discussion and Findings

Referring to paragraph 14 of the Rules, in the absence of a response to the Complainantsí allegations, the Panel may consider those claims in light of the unchallenged evidence submitted by the Complainant. While the Panel cannot decide in the Complainantsí favor solely based on the Respondentís default, it is entitled to draw, and in this case does draw, such inferences as it deems appropriate and just under the circumstances based on the Respondentís failure to respond.

Pursuant to paragraph 4(a), the Complainant must prove that each of the following three elements are present:

(i) the Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

(a) Identical or confusingly similar

By the registration date of the domain name, Complainants had registered trademark rights with respect to the trademark "TURIN 2006" (Complainantsí Exhibits 7, 8 and 10).

The only differences between the domain name and the trademark "TURIN 2006" are that: (1) the domain name eliminates the space between the two terms; (2) the domain name has ".com" at the end; and (3) the domain name uses the term "Turin", whereas the trademark contains the term "Torino".

The differences between Complainantsí trademark "TURIN 2006" and Respondentís domain name are minor and do nothing to distinguish the mark from the domain name.

The addition of the designation ".com" is non-distinctive because it is a gTLD required for registration of a domain name. (Footnote 1) Similarly, the elimination of the space between terms is without any significance since this change is dictated by technological factors and common practice amongst domain name registrants and users. (Footnote 2) Lastly, "Turin" is the English, French and German term to refer to the Italian city Torino. The terms "Turin" and "Torino" are nearly identical, and the public will immediately associate Turin with Torino. The Panel therefore finds that the names Turin and Torino are confusingly similar.

The Panel concludes that the Complainants satisfy the requirements of paragraph 4(a)(i) of the Policy.

(b) Rights or legitimate interests

Paragraph 4(c) of the Policy defines the circumstances required for the Respondent to demonstrate "rights to and a legitimate interest in the domain name". The Respondent is only required to demonstrate any one of the following circumstances (in particular and without limitation) to prove its rights to or legitimate interest in the domain name:

(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 non-commercial 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 Complainants assert that they have not licensed or otherwise permitted the Respondent to use the Trademarks or to use any domain name incorporating that marks.

There is no evidence in the record to support a finding of a legitimate right or interest in the domain name on behalf of the Respondent. The Respondent does not appear to have established a website connected to the domain name, does not appear to have made demonstrable preparations to use the website, does not appear to be making a bona fide offering of goods or services or a legitimate non-commercial use of the website, and does not appear to be commonly known by the name "torino 2006". Furthermore, the Respondent is not residing in Italy and does not appear to have any connection whatsoever with the geographical locality Torino. There is no evidence in the record of the applicability of any of the criteria in paragraph 4(c) of the Policy.

Under these circumstances, and taking into account the Respondentís failure to respond and to justify the use of the term "torino2006" in his domain name, the Panel finds that the Respondent has no rights or legitimate interests in the domain name.

(c) Bad faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove use in bad faith as well as registration in bad faith.

Paragraph 4(b) of the Policy sets forth a non-exclusive list of circumstances which shall be evidence that the registration and use of a domain name is in bad faith:

(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 Complainantsí 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.

The Complainants seem to rely on both the first and the second element, alleging, first, that the domain name was registered and used in bad faith because the Respondent is attempting to sell the domain name <torino2006.com>, and, second, that the Respondent registered the domain name <torino2006.net> in order to prevent the Complainants from reflecting Trademarks in a corresponding domain name.

By not submitting a response, the Respondent has failed to address these allegations.

The Complainants own gTLD domain name <torino2006.org> and ccTLD <torino2006.it. It has been noted above that there is no proof that the Respondent has registered the domain name <torino2006.net>. The Panel finds that the Respondentís registration of <torino2006.com> cannot be considered as preventing the Complainants from reflecting their marks in a corresponding domain name, and that there is no evidence that the Respondent has engaged in a pattern of such conduct. Therefore, the bad faith criteria of paragraph 4(b)(ii) of the Policy are not fulfilled.

However, in the case at hand, the following circumstances lead the Panel to conclude that the Respondent is acting in bad faith:

a) The Respondent listed the domain name for sale with Greatdomains.com, a company that specializes in selling domain names for more than out-of-pocket expenses. Complainantsí Exhibit 17 reveals that no price is listed for the disputed domain name - instead the phrase "Make Offer" appears. Had the Respondent merely sought out-of-pocket expenses, these expenses would have been listed. The Panel finds that by seeking an offer on Greatdomains.com, the Respondent is holding out for more than out-of-pocket expenses. This should come as no surprise given the likely value of this domain name to the Complainants. Further, it is not necessary that there be evidence of a specific offer to the Complainants (or their competitors). (Footnote 3) Although the Respondent has not directly contacted the Complainants to sell the domain name, use of the services of a third party vendor, Greatdomains.com, is sufficient. This is a clear example of bad faith within the meaning of paragraph 4(b)(i).

b) The domain name was registered on February 27, 1998. The Respondent does not seem to have used the domain name. It may be expected that a bona fide registrant establish his good faith by preparing and using a site in a way which leaves no doubt that he does not intend to take any undue (commercial or otherwise economical) advantage of a trademarkís reputation. In the present case, the Respondent has not made any effort to prove his good faith - to the contrary, by offering the domain name for sale, he showed that he had no personal interest in the domain name, except to obtain some financial advantage.

c) The Respondent does not seem to have any relation with the location Torino, nor with the Complainants, nor with any other person or enterprise bearing the name "Torino2006".

d) The planned Winter Olympic Games in the year 2006 are a well-known event. According to the Complainant, both Torino and Sion were candidate cities for the Winter Games. The fact that the Respondent not only registered the domain name <torino2006.com>, but also registered <sion2006.org>, suggests that the Respondent sought to acquire marketable domain names for cities vying for the 2006 Winter Olympics.

e) The Respondent has failed to respond to the Complaint and to demonstrate any good faith use. (Footnote 4)

f) The Panel cannot conceive any plausible actual or contemplated active use of the domain name by the Respondent that would not violate or infringe the Complainantsí trademark rights, or would otherwise be legitimate.

Based on the above, the Panel finds that the Complainants have satisfied their burden of proving bad faith registration and use of the domain name.

 

7. Decision

The Panel decides that:

1) the domain name <torino2006.com> is confusingly similar to the trademark "TURIN 2006" and identical with the trademark "TORINO 2006" in which the Complainants have rights;

2) the Respondent has no rights or legitimate interest in respect of the domain name; and

3) the domain name has been registered and is being used in bad faith by the Respondent.

Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel requires that the Registrar, Network Solutions, Inc., transfer the name <torino2006.com> to the Complainants.

 


 

Kamen Troller
Sole Panelist

Dated: June 14, 2001

 


Footnotes:

1. See: Gateway, Inc. v. James Cadieux (WIPO Case No. D2000-0198); The Journal Newspapers, Inc. v. DomainForSale 980dollars (FA95395) and Koninklijke Philips Electronics NV v. Ramazan Goktas (WIPO Case No. D2000-1638). (back to text)

2. See: Bruce Springsteen v. Jeff Burgar and Bruce Springsteen Club (WIPO Case No. D2000-1532); Real Madrid Club de Futbol v. Lander W.C.S. (WIPO Case No. D2000-1805) and Margaret Drabble v. Old Barn Studios, Ltd. (WIPO Case No. D2001-0209). (back to text)

3. See: The Journal Newspapers Inc. v. DomainForSale 980dollars (FA95395). (back to text)

4. See: Pharmacia & Upjohn AB v. Dario H. Romero (WIPO Case No. D2000-1273), at p.6; Telstra Corporation, Ltd. v. Nuclear Marshmallows (WIPO Case No. D2000-0003), at p.8. (back to text)