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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
United States Olympic Committee v. MIC
Case No. D2000-0189
Complainant United States Olympic Committee (USOC), on March 20, 2000, submitted a complaint to the WIPO Arbitration and Mediation Center for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation of Assigned Names and Numbers (ICANN) on August 26, 1999 ("Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy. An Amendment to the Complaint was received by WIPO on March 24, 2000.
Respondent, MIC, failed to respond to the complaint and a "Notification of Respondent’s Default," dated April 17, 2000, was forwarded by WIPO to Respondent. In an April 18, 2000, e-mail from Respondent's administrative contact, Syed Hussain, to WIPO, Mr. Hussain noted that "[f]acts remain same as described in complaint."
Complainant USOC is a non-profit, Congressionally charted corporation pursuant to 36 USC 220502. It is entrusted with the responsibility for coordinating and developing amateur athletic activity in the U.S. directly related to international amateur athletic competition.
Pursuant to U.S. law 1, USOC has the exclusive right to use the term "Olympic" in the U.S. USOC owns a number of U.S. registrations for the "Olympic" mark, either alone or as part of a composite mark. These registrations include: No. 2,311,493 for the mark OLYMPIC for selecting and obtaining athletes to represent the U.S. in international athletic competitions and events; No. 968,566 for the mark OLYMPIC for a wide variety of goods and services, including jewelry, glassware, stationery, publications and souvenirs; and No. 2,246,999 for the mark U.S. OLYMPIC SPIRITS for retail store services featuring a wide variety of goods. USOC also owns the domain name "usolympicstore.org". USOC licenses these and other marks to obtain the funding necessary to fulfill its responsibilities 2.
On February 2, 2000, USOC issued a press release announcing that it and the National Broadcasting Company (NBC) had agreed to the online sale of official USOC and Sydney Organising Committee for the Olympic Games merchandise. According to the press release, NBC and USOC "plan to open the doors to the online `U.S. Olympic Store’ in the second quarter of 2000." See Annex C to Complaint. On that same day, February 2, 2000, Mr. Hussain registered the domain name "usolympicstore.com."
On February 29, 2000, a staff attorney for USOC, Kelly Maynard, contacted Mr. Hussein and notified him that his action in registering the domain name violated U.S. law. During the course of this conversation, Mr. Hussain informed Ms. Maynard that he subscribes to a variety of news services and obtains press releases and then searches the Internet to see whether there are domain names available that he believes would be useful to the companies issuing the press releases. Mr. Hussain admitted that that was exactly what had happened in this situation. Mr. Hussain also indicated that he had no plans to use the mark commercially himself and that he would be willing to transfer the domain name to complainant for $1,000.
Complainant agreed to arrange for this payment 3. However, two days later, Mr. Hussain, after consulting with counsel and being advised that his action in registering the domain name was not unlawful, given that Complainant did not own a federal registration for "usolympicstore", withdrew his offer to sell the domain name for $1,000. Ms. Maynard then said, "So you’re basically asking for more money, how much more?" Mr. Hussain responded, "Oh, it’s hard to say, but in other cases, such marks have sold for anywhere from $10,000 to $3 million."
On March 21, 2000, upon receipt of USOC’s complaint, Mr. Hussain sent an e-mail to Ms. Maynard stating as follows: "If I lose with WIPO, there would be appeal in court by my attorney. You know very well time is key here. Summer Olympics are round the corner unless you want to set up web site for 2004. NBC and others have deep pockets. You can have this domain in no time if you come up with reasonable offer not 1000 dollars."
Based upon my review of all the evidence, it is clear that Complainant has proven each of the elements set forth in Paragraph 4(a) of the Policy. The domain name is confusingly similar to Complainant’s "Olympic" marks, Respondent has not established any rights or legitimate interest in respect of the domain name under any of the circumstances set forth in Paragraph 4(c) of the Policy, and the facts support a determination that the domain name was registered and is being used in bad faith.
While it is true that USOC does not own an U.S. trademark registration for "usolympicstore" 4, the domain name in issue is confusingly similar to USOC’s "Olympic" marks. The dominant portion of the domain name – the term "olympic" – is identical to a number of USOC’s registered marks.
It also appears that Respondent has no rights or legitimate interests in respect of the domain name. There is no evidence, for example, that Respondent has been licensed or otherwise permitted by USOC to use the domain name in issue. Further, none of the grounds set forth in Paragraph 4(c) of the Policy applies.
With respect to the issue of registration and use in bad faith, it is now well established that the act of registering a trademark as a domain name and then offering to sell the name to the rightful trademark owner constitutes commercial use. See Robert Ellenbogen v. Mike Pearson, Case No. D00-0001; Intermatic Inc. v. Toeppen, 947 F. Supp. 1127 (ND Ill. 1996); Panavision International v. Toeppen, 141 F.3d 1316 (9th Cir. 1998). Further, as the WIPO Panel found in Ellenbogen and as set forth in Paragraph 4(b)(i) of the Policy, the act of registering and then offering to sell a domain name supports a determination of "bad faith."
In view of the above, it is ordered that the domain name "usolympicstore.com" be transferred from Respondent to Complainant.
Jeffrey M. Samuels
May 4, 2000
1. See Ted Stevens Olympic and Amateur Sports Act, 36 U.S.C. 220501, et seq.
2. Unlike the majority of other National Olympic Committees, the USOC receives no government subsidies.
3. It appears from the record that Ms. Maynard prepared the necessary transfer agreement but that the Registrar, Alabanza, Inc. d/b/a Bulkregister.com, indicated that it lacked the capacity to transfer domain name ownership and would be unable to do so until approximately May 2000.
4. Indeed, it appears clear that this mark has not yet been "use[d] in commerce" in the U.S. and, thus, no registration could issue. See 15 U.S.C. 1127