United States Olympic Committee v. MIC

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."

Decision

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

Panelist

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

More cases by this complainant

• United States Olympic Committee v. Tri- B-U-N Eco. Project — D2000-0435 · olympiconlinestore.com, usaolympiconlinestore.com · Transfer · 13 Jul 2000