The Complainant is the United States Olympic Committee (USOC) of Colorado Springs, Colorado, United States of America, represented by Howard Rice Nemerovski Canady Falk & Rabkin, United States.
The Respondent is Alan Bachand of Fort Pierce, Florida, United States.
The disputed domain name <olympicsbesthotels.com> (the “Domain Name”) is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2009. On October 28, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 30, 2009, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 November 2, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 22, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 24, 2009.
On November 24, 2009, the Respondent sent an email to the Center saying he had not received any earlier “warning” about this proceeding and asking how he could respond. The Center replied, “If you wish to make a late Response to the Complaint, the Center will bring the Response to the Panel's attention (when appointed), and it will be at the sole discretion of the Panel to consider it.” On November 25, 2009, the Respondent asked the Center for an additional 20 days to submit a Response, indicating that his attorney had just returned from vacation. The Respondent also gave his current “business location” in Canada. The Center reiterated that the Respondent could submit a late Response, but that the Panel would decide whether to consider it. No such Response has been filed.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on December 4, 2009. 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.
The Complainant is a federally chartered corporation headquartered in Colorado Springs, Colorado, United States of America. It is the legal entity created by the United States Congress to serve as the National Olympic Committee (NOC) of the United States and participate in the International Olympic Committee (IOC) based in Lausanne, Switzerland, which has organized the international Olympic Games since 1894. Since 1950, the Complainant has been charged with promoting the Olympic Games and organizing and supporting United States teams for Olympic Games and other international amateur athletic competitions.
The Complainant, which receives very limited financial aid from the federal government, is also authorized to commercialize products and services related to the Olympic teams and Olympic Games in order to raise funds to pursue its chartered mission. Under United States federal law (currently the Olympic and Amateur Sports Act, “OASA”), the Complainant has the exclusive right to commercial use of the OLYMPIC mark in the United States, with some limited exceptions for pre-existing and geographic marks. OASA authorizes USOC to bring legal actions to enjoin any use of the OLYMPIC name “for the purposes of trade” or “to induce the sale of any goods or services” (36 U.S.C. secs. 220506(a)(4), 220506(c)(3)). Moreover, the United States Supreme Court has ruled that OASA does not require evidence of a likelihood of confusion, as is generally required in United States trademark law under the Lanham Act (San Francisco Arts & Athletics, Inc. v. United States Olympic Committee, 483 U.S. 522, 531 (1987)).
The Complainant has registered OLYMPIC as a trademark in the United States, Trademark Registration Nos. 968566 (Sep. 18, 1973), 2311493 (Jan. 25, 2000) and 2777890 (Oct. 28, 2003), as well as UNITED STATES OLYMPIC COMMITTEE (and design) (Reg. No. 980734, Mar. 26, 1974), and OLYMPIC MANAGEMENT SYSTEM (Reg. No. 2988886, Aug. 30, 2005).
The IOC operates a website on the Olympic Movement at “www.olympic.org”. The principal website operated by the Complainant at “www.teamusa.org” promotes national, Olympic, Pan American, and Paralympic teams and events. It includes an online shopping facility (chiefly offering branded apparel), and it also advertises “official” products and services and “host hotels” associated with various amateur athletic events.
The Respondent registered the Domain Name on November 10, 2008. The Domain Name resolves to a website operated by the Respondent that offers online booking for hotels, condominiums, and other lodgings in connection with the 2010, 2012, and 2014 Olympic Games, as well as for the annual American football Super Bowl games, the American NCAA college basketball “Final Four” games, and the PGA professional golf tournaments. The website reproduces figurative marks used by USOC and other NOCs for upcoming Olympic Games.
The contact information on the website gives a telephone number and postal address in Magog, Québec, Canada. The operator of the website is not otherwise identified, and there is no disclaimer of affiliation with IOC, USOC, or any other NOC.
The parties exchanged email correspondence in April 2009. The Respondent removed some OLYMPIC and VANCOUVER 2010 marks from the website associated with the Domain Name and a similar website operated by the Respondent, “www.superbowl-rooms.com”. The Complainant asserted that USOC marks were still displayed on the websites, however, and asked the Respondent to select a domain name that did not include the OLYMPIC mark. The parties did not reach an agreement, and this proceeding followed.
The Complainant contends that the Domain Name is confusingly similar to its registered OLYMPIC mark and that the Respondent has no rights or legitimate interests in the name.
The Complainant argues that the Domain Name was registered and used in a bad-faith attempt to mislead Internet users (at least initially) as to source or affiliation, for the Respondent's commercial gain.
The Respondent did not submit a Response or reply directly to the Complainant's contentions. However, the Respondent commented on its use of the Domain Name in communications with the Complainant and in an email to the Center that is described below in connection with its request for additional time to prepare a Response. In these communications, the Respondent does not deny deliberately using the OLYMPIC mark in the Domain Name but suggests that this is not inappropriate for a website advertising accommodations for Olympic Games and other sporting events.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the Domain Name, the Complainant must demonstrate each of the following:
(i) the 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 are being used in bad faith.
Under paragraph 15(a) of the Rules,
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
As noted in the Procedural History above, the Respondent contacted the Center after being notified of its default and asked for an additional 20 days to submit a Response. The Center informed it that it could submit a late Response, but the Panel would decide whether to consider any such submission if received.
The Respondent did not submit a Response. On November 26, 2009, however, the Respondent sent an email to the Center including some substantive remarks about its use of the Domain Name:
“Even though we are using the word Olympics in the domain name, we have taken down ALL logos and other terms on our site. As you probably know, we sell hotel and accommodations for world wide events, not only during the Olympics and are willing to put a BIG disclaimer on all our pages. We are not trying to portrait that we are an approved sponsor or that we are affiliated with the IOC or other Olympics committees, we simply offer accommodations during world wide events and the Olympics is one of the events we cater too.”
The Center replied, as before, that the Respondent could submit a late-filed Response for the Panel's consideration.
The Respondent does not offer a compelling excuse for failing to submit a timely Response or a sufficient reason to delay the proceeding for several additional weeks. Proceedings under the UDRP are designed to offer limited but speedy remedies where a complainant satisfies the elements of a UDRP complaint, and the remedies may be suspended by promptly filing a judicial complaint. Therefore, the Panel declines to extend the time period for a Response but will take into account statements found in the Respondent's email communications with the Center, as well as the earlier email communications between the Complainant and the Respondent.
The Complainant holds registered OLYMPIC trademarks, both in the form of standard-character marks and as figurative marks in which the OLYMPIC name is a prominent feature.
The Domain Name includes the OLYMPIC mark in its entirety, adding a plural “s” (the Olympic Games are commonly called “the Olympics” in English-speaking countries) and the dictionary words “best hotels”. This generic addition does not avoid confusing similarity with the mark, particularly since the Complainant has long held exclusive rights to commercialize the OLYMPIC mark and advertises “host hotels” for various international amateur sports events promoted on its own website.
The Panel concludes that the Domain Name is confusingly similar to the Complainant's OLYMPIC mark for purposes of the first element of the Complaint, which requires only a simple comparison of the Domain Name and the mark.
The Complainant asserts, without contradiction, that the Complainant has not authorized the Respondent's use of any domain name that incorporates the Complainant's OLYMPIC mark. The Respondent has also not suggested in any of his communications that he has been authorized by the IOC, USOC, or any other NOC to use the OLYMPIC mark in a domain name.
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which the Respondent could nevertheless demonstrate rights or legitimate interests in the Domain Name, including the following:
“(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 noncommercial 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 website associated with the Domain Name is clearly commercial, advertising hotels and other lodgings in cities where Olympic Games and other sporting events are hosted. It does not appear that the Respondent is known by a name corresponding to the Domain Name.
The remaining question is whether it can be determined on this record that the Respondent's use of the Domain Name is “in connection with a bona fide offering of goods or services”. The Respondent is in the presumably lawful business of advertising and reselling hotel accommodations, but that alone does not give the Respondent the right to use another party's mark in the Domain Name to attract customers to that business. If the Respondent used the Domain Name for a website devoted to reselling the Complainant's products or services, it is conceivable that the use of the OLYMPIC mark in the Domain Name could be justified under United States or Canadian trademark law as a descriptive or nominative fair use of the mark. See, e.g., National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin' Connection, Inc., WIPO Case No. D2007-1524. But there is no indication that the Respondent is a reseller of the Complainant's goods or services or those of the IOC or any other NOC authorized to use the OLYMPIC mark. Moreover, the Respondent's website sells accommodations in connection with many other sporting events as well as the Olympic Games.
These circumstances are similar to those in The Orange Bowl Committee, Inc. v. Front and Center Tickets, Inc / Front and Center Entertainment, WIPO Case No. D2004-0947, where the panel found that the respondent in that proceeding illegitimately used the ORANGE BOWL mark not only to describe the respondent's offering of tickets for the Orange Bowl football game but also to sell tickets for a variety of other sporting and entertainment events:
“We conclude that the Respondent's use of [orangebowltickets.com] fails to meet the test for fair use because the ORANGE BOWL mark is used . . . not merely to describe, but also as an attention-getting device to attract Internet users to Respondent's site to sell other products . . . that it does not describe . . .”.
Here, the Respondent's use of the OLYMPIC mark in the Domain Name, for a website selling accommodations in connection with a variety of athletic events, is similarly not a descriptive or nominative fair use of the mark. It is not, therefore, a use in connection with a bona fide offering of goods or services.
The Panel concludes that the Complainant has established the second element of the Complaint.
The Policy, paragraph 4(b), sets out a non-exhaustive list of circumstances evidencing bad faith in the registration and use of a domain name, including the following:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
In communications with the Complainant and the Center, the Respondent acknowledges that it was aware of the OLYMPIC mark and incorporated the mark in the Domain Name to attract consumers to a website selling accommodations for a variety of sporting events in addition to the Olympic Games. The Panel concludes that the Respondent chose to use a famous mark in his Domain Name, without a right or legitimate interest, to attract Internet users for commercial gain. This is sufficient to establish the third element of the Complaint.
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, <olympicsbesthotels.com>, be transferred to the Complainant.
W. Scott Blackmer
Dated: December 22, 2009