WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mr. Olympia, LLC, American Media Operations, Inc., International Federation of BodyBuilders v. Tim Harrington
Case No. D2005-1287
1. The Parties
The Complainants are Mr. Olympia, LLC, American Media Operations, Inc., and International Federation of BodyBuilders, American Media, Inc., United States of America.
The Respondent is Tim Harrington, of California, United States of America.
2. The Domain Name and Registrar
The disputed Domain Name <mrolympia.com> is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2005. On December 14, 2005, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On the same date, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 20, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was January 9, 2006. No response was filed. Accordingly, the Center notified the Respondent of his Default on January 11, 2006.
The Center appointed Mr. Craig Edward Stein as the sole panelist in this matter on January 17, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The following facts are derived from a review of the full record in this matter, which includes the unrebutted allegations contained in the Complaint that are supported by several attached exhibits.
A. The Complainants
The three named Complainants in this administrative proceeding are:
(i) Mr. Olympia LLC (“LLC”), a Delaware limited liability corporation, with its principal place of business in Woodland Hills, California;
(ii) International Federation of BodyBuilders (“IFBB”), a Canadian corporation with its principal place of business in Montreal, Quebec, Canada; and,
(iii) American Media Operations, Inc. (“AMOI”), a Delaware corporation with its principal place of business in Boca Raton, Florida.
B. Complainants’ Relationship to Each Other and the Mr. Olympia Trade and Service Marks
IFBB is the owner of the following trade and service marks that are registered at the United States Patent and Trademark Office (“USPTO”):
Goods and Services
November 28, 1995
September 2, 1974
November 6, 1984
LLC is a joint venture between IFBB and AMOI; the business of which is to produce and promote an annual professional bodybuilding competition known as “Mr. Olympia.” To promote its commercial activities, LLC has acquired the sole and exclusive license to use the MR. OLYMPIA marks from its owner and one of the two joint venture partners, the IFBB.
C. Registration of the Disputed Domain Name and the Website to which it Resolves
The disputed Domain Name was registered on June 22, 2001. The website to which the Domain Name at issue resolved at the time the Complaint was filed contained information concerning the 2005 Mr. Olympia competition, as well as references to the IFFB. In addition, the website included a hyperlink list of items related to the Mr. Olympia contest and that were presumably for sale at the website maintained by the Internet company, eBay.1 When the Panel visited the disputed Domain Name, the browser was redirected to <2005olympia.com>. The WHOIS database reveals that this Domain Name is registered to the Complainant AMOI.
5. Parties’ Contentions
Beginning in 1965, when the first Mr. Olympia body-building contest was held, Mr. Olympia has become both a well-recognized name and mark. The MR. OLYMPIA marks that are controlled by the Complainants now have worldwide recognition which was enhanced, in part, by the ascent of the most prominent Mr. Olympia champion, Arnold Schwarzenegger.2
The Respondent has not been granted any permission, authorization or license by any of the Complainants to use the MR. OLYMPIA marks in the disputed domain name. Moreover, the Respondent is not commonly known as MR. OLYMPIA.
So too, the Respondent is not making legitimate, non-commercial or fair use of the domain name in question. In fact, the Respondent’s purpose in registering and using the domain name <mrolympia.com> is to divert users from IFBB websites for the Respondent’s commercial gain. The deliberate deception of consumers tarnishes and dilutes the MR. OLYMPIA name and marks at issue.
The Complainants notified the Respondent by letter dated on September 8, 2005, that his use of the MR. OLYMPIA marks in the disputed Domain Name was an infringement and dilution of their respective rights.3 The Complainants demanded that the Respondent cease and desist use of the Domain Name in dispute. Respondent did not reply to this demand and continues to use <mrolympia.com>.
The Complainants have also attempted to contact the Respondent by both facsimile and telephone at the numbers listed on the Whois database. None of those phone numbers, however, were in service.
The Respondent did not reply to the Complainants’ contentions.4
6. Discussion and Findings
1. Multiple Complainants
Because the language of the Policy and the Rules is stated in the singular, rather than the plural,5 neither expressly addresses whether UDRP proceedings may be brought by multiple Complainants. While there is no settled practice as to whether companies that have some interest in the affected marks should, or must, join in a complaint, some UDRP panels have permitted multiple Complainants to seek common relief for a joint enterprise. This result recognizes that licensing arrangements may permit more than one entity to have either an ownership interest or substantial control of a particular mark. See Hunter Douglas Industries, BV and Hunter Douglas Window fashions, Inc. v. Erik Little, WIPO Case No. D2005-0460; Eli Lilly and Company, ICOS Corporation, and Lilly ICOS LLC v. RM-RS, LLC, WIPO Case No. D2005-1052.
So too here, there exists sufficient connections both between the marks for which the infringement is asserted and between the Complainants who are seeking relief. Accordingly, the Panel accepts the designation of the three entities as the Complainants.
2. Standards and Burden of Proof
Under Paragraph 4(a) of the Policy, the Complainant must prove each of the following:
i) the domain name in issue is identical or confusingly similar to the Complainant’s trademark or service mark; and
i) 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.
Paragraph 4(b) of the Policy sets out four illustrative, non-exclusive circumstances, which, if demonstrated by the Complainant, for the purposes of paragraph 4(a)(iii) shall be deemed evidence of a Respondent’s bad faith registration and use of a challenged domain name.
Paragraph 4(c) of the Policy sets out three descriptive, non-exclusive situations, any one of which, if proved by a Respondent, shall be considered as evidence of the Respondent’s rights to or legitimate interests in the domain name for the purpose of paragraph 4(a) (ii).
In light of the Respondent’s default, the Panel accepts as true all of the factual allegations contained in the Complaint. See Talk City, Inc. v. Robertson, WIPO Case No. D2000-0009. Those facts include the averments that the Complainants own or control the legal rights in the MR. OLYMPIA trade and service marks and acquired those rights before the Respondent’s registration of the Domain Name that is in dispute.
A. Identical or Confusingly Similar
The disputed Domain Name is not only confusingly similar with the Complainants’ marks-- it represents an exact duplication. For the purposes of the Policy, such replication is prohibited. See EAuto v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047 (“When a domain name incorporates, in its entirety, a distinctive mark, that creates sufficient similarity between the mark and the domain name to render it confusingly similar.”). Accordingly, the Complainants have satisfied the first prong of the test.
B. Rights or Legitimate Interests
i. Paragraph 4(c)(i)
The Complainant has satisfied its burden of proving that the Respondent has not used the Domain Name in connection with a bona fide offering of goods and services. At the time the Complaint was filed, the website was not being used to sell the Complainants’ products. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Rather, by posting links to the eBay auction site at which goods that contained the MR OLYMPIA marks were offered for sale but which were actually being sold by non-affiliated third-parties, the Respondent actively diverted Internet users who would otherwise have been directed to the Complainants’ websites. Such conduct does not constitute a bona fide offering of goods and services as those terms are employed in Paragraph 4(c) (i) of the Policy. See, Societe des Hotels Meridien v. Modern Limited -Cayman Web Development, WIPO Case No. D2004-0321.
ii. Paragraph 4(c)(ii)
The Complainants have also satisfied their burden of proving that the Respondent is not commonly known by the Domain Name. The Respondent is Tim Harrington. There is no evidence in the record submitted or even on the website to which the disputed Domain Name resolved when the Complaint was filed, or now, that in any manner demonstrates that the Respondent is commonly known as or is associated with the protected mark MR OLYMPIA. Accordingly, the Respondent does not have a right to the Domain Name pursuant to Paragraph 4(c)(ii). See Systima Ltd. v. Byrne, WIPO Case No. D2001-0300; Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A. v. ChinaVogue.com, WIPO Case No. D2005-0615.
iii. Paragraph 4(c) (iii)
In addition, the Complainants have satisfied its burden of proving that the Respondent is not making a non-commercial or fair use of the disputed Domain Name. By providing links to a third-party site at which products that are not offered for sale by the Complainants are promoted and sold, the Panel can and does infer that the Respondent profited from these sales, either through direct ownership of the items that were up for auction or through referral fees. See Lilly LICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750. Moreover, visitors to <mrolympia.com> would expect such the site to offer goods that were only authorized for sale by the Complainants; thus, the Respondent’s use of the disputed Domain Name is likely to confuse consumers and misleadingly divert them from the Complainants’ websites to that of the Respondent.
For the all reasons stated above, the Respondent does not have a right or legitimate interest in the disputed Domain Name.
C. Registered and Used in Bad Faith
Similarly, the Complainants have shown that the Respondent registered and used the Domain Names in bad faith. The Respondent has used the Domain Name to attract users to his websites for commercial gain. The Respondent also has created a likelihood of confusion with the Complainants’ marks as to the source, sponsorship, affiliation or endorsement of his website. Such conduct constitutes bad faith under the Policy. See, e.g., Nokia Corp. v. Holmes, WIPO Case No. D2002-0001 (bad faith found where “Respondent, by registering and using the domain name <eworldnokia.com> has created the (incorrect) impression of association with the Nokia Corporation, thereby creating a likelihood of confusion with that trademark.”).
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <mrolympia.com> be transferred to the Complainants.
Craig Edward Stein
Date: January 30, 2006
1 See, eBay Inc. v. SGR Enterprises, WIPO Case No. D2001-0259 (“ eBay claims ownership of several federal registrations for the mark EBAY, including U.S. Registration No. 2,218,732, issued January 19, 1999, and U.S. Registration No. 2,410,023, issued December 20, 2000, as well as numerous pending applications to register this mark in the United States for a variety of goods and services. eBay also claims ownership of numerous other trademark registrations for the EBAY mark, and has applied to register the mark, in many countries throughout the world.”)
2 The Complainants note that Mr. Schwarzenegger utilized his Mr. Olympia championships to build a career as a Hollywood actor and to eventually become the current Governor of California.
3 The letter was delivered to the mailing address maintained by the Respondent in the Registrar Verification and accepted by a “C. Harrington” on September 13, 2005.
4 Given the absence of a Response, the Panel has reviewed the record to ensure that the Center gave Respondent fair notice of the Complaint. See Nicole Kidman v. John Zuccarin, d/b/a Cupcake Party, WIPO Case No. D2000-1415. The Center sent the notification of the Complaint to Respondent by both courier and e-mail to the respective addresses listed in the Registrar Verification. Accordingly, the Panel finds that the Center has discharged its obligation to provide fair notice to Respondent under paragraph 2(a) of the Rules. Moreover, the courier notification was delivered and was accepted by a “C. Harrington.” The e-mail did not bounce back, thus supporting the conclusion that e-mail was actually delivered.
5 The Rules, paragraph 3(a), provide that “any person or entity may initiate a complaint”.