The Complainant is The London Organising Committee of the Olympic Games and Paralympic Games Limited, London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Demys Limited, United Kingdom.
The Respondent is H&S Media Ltd, London, United Kingdom.
The disputed domain name <mylondon2012.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 18, 2010. On March 18, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On March 18, 2010, GoDaddy.com, Inc. 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 March 22, 2010. In accordance with the Rules, Paragraph 5(a), the due date for Response was April 11, 2010. The Response was filed with the Center on April 12, 2010.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on April 19, 2010. 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.
On July 6, 2005, the International Olympic Committee announced that the City of London's bid which had been co-ordinated by the Complainant's predecessor, London 2012 Limited had won the right to stage the 2012 Olympic Games. As a result of the Host City Contract for the Games executed by the International Olympic Committee, the Mayor of London and the British Olympic Association on July 6, 2005, the Complainant was entrusted with preparing and staging the 2012 Games, including protecting the brand LONDON 2012 and to ensure that sufficient funding for the Games might be raised from sponsorship, broadcasting rights and the sale of merchandise and tickets.
The Complainant indicates that further information as to its activities and details of its responsibilities and duties, is available on the Complainant's website at “www.london2012.com”.
The Complainant's rights arise as a result of a Licence Agreement dated August 14, 2009 granted by the International Olympic Committee. Under the terms of the Licence, the International Olympic Committee retains responsibility for the protection and exploitation of the brand LONDON 2012 outside the United Kingdom. Within the United Kingdom the International Olympic Committee granted a license to the Complainant to use the relevant trade mark and to take enforcement action in respect of infringement. The Licence dated August 14, 2009 relates to the European Community Trade Mark Registration No. E3422921 for the mark LONDON 2012. An equivalent license dated July 23, 2009 licenses the Complainant in relation to United Kingdom Trade Mark No. 2359105 for the word mark LONDON 2012. It should be noted that the marks are granted in respect of Classes 1 to 45.
The Complainant points out that there are a number of earlier decisions under the Policy in which the trade mark rights of the International Olympic Committee and Host Cities have been accepted in similar disputes.
Additionally, the Complainant is entitled to a sui generis statutory right under UK law created by the London Olympic Games and Paralympic Games Act 2006. This right is known as the London Olympics Association Right which confers exclusive rights in the UK upon the Complainant in relation to use of any representation (of any kind) in a manner likely to suggest to the public that there is an association between the London Olympics and goods or services, or a person who provides goods or services. The Complainant submits that this is a statutory right akin to registered trade mark rights. A similar right was accepted by a three member Panel in Federal Court of Canada v. federalcourtofcanada.com, eResolution Case No. AF-0563.
Under the terms of Paragraphs 3(3) and (4) to Schedule 4 of the 2006 Act, two groups of words are provided, combinations of which may be considered by a court in examining the question of infringement of the right. The combinations concerned are any of the expressions in the first group with another expression in the first group (for example, “games” with “2012”) or any expressions in the first group with any in the second group (for example either “games” or “2012” with “London”).
On the basis of the above evidence, the Complainant asserts that it has rights in the term “London 2012” consisting of the licensed trade mark rights and the statutory right granted by the 2006 Act.
The Respondent is incorporated in the United Kingdom. The domain name was registered on July 6, 2005 which was the same day as London was announced as Host City of the 2012 Games. A WhoIs search dated September 26, 2005 and set out at Annex 4 to the Complaint shows that the Respondent allocated the domain name to the parking service provided by Sedo GmbH at some point between the date of registration of the domain name and September 26, 2005. Sedo GmbH claims to be the world's only global domain marketplace. Making use of the parking service means using a domain name as the Url for a web page that consists mainly of “pay-for-click” advertising. Whenever an internet user clicks the link, the advertiser pays a small fee to the parking space owner which, in turn, passes on a portion of that fee to the domain name parker. It is described as a “simple way to earn money from your domain's natural traffic”. It is also used for the purposes of offering a domain name for sale.
The Complainant exhibits a demand letter which was sent to the Respondent by its representatives. The letter is set out at Annex 12 to the Complaint together with a Post Office proof of delivery receipt. The letter requests that the Respondent arrange for the domain name to be transferred free of charge to the Complainant. It would appear that there was no response to that letter.
The Response consists of an email dated April 12, 2010 to the Center. It states as follows:
Sorry for delay to reply as i was in holiday and just back today.
Regarding the complain against us for domain mentioned in attached documents i would like to inform you mylondon2012.com been registered for personal use and it supposed to be a daily blog and report by some citizen journalist during london olympic. we are planing to have a place for every londoner to have their say about this event.
it will not be official website of london olympic as its name MY London 2012 do mentioned that it is personal website.
H&S Media Ltd […]@handsmedia.com…”
1 Identical or Confusingly Similar
(i) The Complainant has trade mark and statutory rights in the mark LONDON 2012.
(ii) The domain name is confusingly similar to the mark LONDON 2012.
2 Rights of legitimate interests
(i) The Respondent has no rights or legitimate interests in respect of the domain name.
(ii) The Respondent is not commonly known by the domain name because:
(a) The domain name is not used for bona fide offering of goods and services
(b) The Respondent is not making a legitimate non-commercial or fair use of the domain name.
(c) Given the global nature of the Complainant's marks and its statutory rights in the United Kingdom the Respondent has no conceivable legitimate interest in the domain name.
3 The domain name is registered and is being used in bad faith.
(i) The Respondent acquired the domain name purely for the purpose of selling it.
(ii) The Respondent has an intention to attract internet users through confusion between the mark and the domain name.
The Respondent's contention is that it registered the domain name for personal use as a daily blog.
Taking into account the evidence adduced by the Complainant of the licensed United Kingdom trade mark LONDON 2012 and the equivalent European Community trade mark LONDON 2012, the Panel is satisfied that the Complainant is licensed to use the marks LONDON 2012 and that the marks pre-date the domain name.
In addition, it is satisfied that the Complainant is entitled to a United Kingdom statutory right, i.e. London Olympics Association right for combinations of the mark LONDON and 2012. This right is a sui generis right statutory right akin to a registered trade mark right and is sufficient to ground a finding under the first element of the Policy in the Complainant's favor.
The Panel also accepts that a licensee of a trade mark is entitled to “rights in a trade mark” for the purposes of Paragraph 4(a)(i) of the Policy. Authority for this, by way of example, is DigiPoll Ltd v. Raj Kumar, WIPO Case No. D2004-0939, where the Panel stated:-
“It is also clear that the Complainant need not establish that it is the owner of the trademark, although this will often be the case where the Complainant alleges an interest or a right in a trademark. It is sufficient if the Complainant has what the law recognises as “rights” in the trade mark, even if such rights fall short of actual ownership. Such a right will often arise from a license granted by the legal owner of the trade mark to another party so that the latter may use the mark”.
The Complainant's submits that the disputed domain name is confusingly similar to the mark LONDON 2012. It points out the distinctive component of the domain name is the Complainant's trademark LONDON 2012 which renders it confusingly similar. It also submits that the use of the prefix “my” in the domain name is capable of intensifying this confusion.
In the Panel's view, the use of the pronoun “my” does not detract from the overall significance of LONDON 2012 within the domain name. Accordingly, the Panel finds that the Complainant has trademark rights in the mark LONDON 2012 and that the disputed domain name is confusingly similar to the mark LONDON 2012.
The Complainant submits that there is no evidence that the Respondent has any rights or legitimate interests in respect of the domain name. It submits that the fact that the Respondent failed to respond to the demand letter is evidence of this.
The Complainant also makes the following specific representations:
(i) The Respondent is not commonly known by the domain name. There is no evidence that the Respondent is trading by reference to LONDON 2012 or is commonly known by the name “London 2012”. The Complainant also confirms that the Respondent is not a licensee or use the domain name under the Complainant's permission or consent. In the absence of any evidence to the contrary from the Respondent, the Panel accepts this submission.
(ii) The domain name is not used for a bona fide offering of goods and services.
The Complainant points out that the Respondent has made no demonstrable preparations to use the domain name in connection with a genuine offering of goods and services other than for pay-per-click advertising or offering it for sale on the Sedo service.
It also submits that the placing of the domain name with Sedo within three months of the date of registration makes it reasonable for the Panel to infer that the Respondent intended to generate consumer confusion by reflecting the Complainant's trade mark and the domain name in order to capture consumer confusion.
The Panel accepts that there is no evidence of a bona fide offering of goods and services by the Respondent and that in those circumstances it is entitled to accept that the domain name is not used for a bona fide offering of goods or services.
(iii) The Complainant also submits that the Respondent is not making legitimate non-commercial or fair use of the domain name. It asserts that the Respondent's use of the domain name cannot be construed as non-commercial in any way. It contends that the early allocation of the domain name to the Sedo Parking Service and later allocation to a GoDaddy.com in an advertising links page shows that it intends to make a commercial use of the domain name. This is contrary to the point made by the Respondent in its Response that it intended personal use only.
In the Panel's view, looking at the evidence of the Respondent's use of the domain name and, in particular, the fact there is no evidence of any nexus between the Respondent and the Olympics, it is entitled to find, which it does, that the Respondent has no rights or legitimate interests in respect of the domain name.
The Complainant relies upon the fact that the Respondent registered the domain name the same day that London was awarded the right to host the Games in 2012. It observes that it would be “incredible” that the Respondent registered the domain name without having the Complainant's rights “at the forefront of its mind”. It also relies upon the fact that there was no response to the demand letter.
The Complainant submits that the Respondent cannot use the domain name to sell Olympic tickets or anything of a commercial nature with the 2012 Olympics, because the only entity which is entitled to do so is the Complainant or a person licensed by the Complainant. It submits that this leads to the inference that the domain name was acquired for the purpose of selling, for valuable consideration in excess of out-of-pocket expenses within Paragraph 4(b)(i) of the Policy. In support of this submission it argues that it can be inferred by the fact that the Respondent placed the domain name at the Sedo Parking Service at an early stage after registration.
The Complainant submits that the Respondent has registered and has been using the domain name to intentionally attempt to attract, for commercial gain, Internet users by creating a likelihood of confusion within Paragraph 4(b)(iv) of the Policy. It argues that it is reasonable for the Panel to infer this on the balance of probabilities given the nature of the Complainant's rights and the Respondent's use of the domain name in connection with pay-per-click parking pages.
In the Panel's view these submissions, when taken together, are evidence of bad faith. The Panel therefore finds the domain name was registered and is being used in bad faith.
The Panel therefore finds that the Complainant has satisfied all three elements within the Policy. It notes that the Respondent would have been able to deal in detail with the submissions made by the Complainant in its Complaint but has chosen not to respond other than briefly in the email of April 12, 2010 referred to above.
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 <mylondon2012.com> be transferred to the Complainant as requested by the Complainant.
Clive Duncan Thorne
Dated: April 29, 2010