The Olympic mark is world famous and the International Olympic Committee (IOC) is very protective of its brand and heritage.
That being said, the UDRP it filed against the domain Soccerstore.cc was mostly based on the claim that soccer is the most popular Olympic sport:
“The disputed domain name is confusingly similar to the Complainant’s trademark THE OLYMPIC STORE. The disputed domain name not only incorporates the element STORE, but also substitutes the element “OLYMPIC” with the most popular sport and an Olympic discipline, namely “SOCCER”.”
While the Complainant has its own “Olympic Store” the domain does not incorporate any trademark elements; however, the Complainant claimed that a very similar logo was used, incorporating the Olympic rings.
Regardless of what was on the web site at the time, the domain itself does not violate the Complainant’s rights, said the WIPO panelist:
In the circumstances of this case, while the content of the Respondent’s website targets the Complainant that is not sufficient in itself to affirm let alone make a finding of confusing similarity, as the dominant elements of the Complainant’s trademarks are not recognizable within the disputed domain name. Accordingly, the Panel finds that the disputed domain name is not identical or confusingly similar to the Complainant’s THE OLYMPIC STORE trademark.
Despite the lack of a response by the Respondent, the final decision was to deny transfer of the domain name Soccerstore.cc to the Complainant.
The domain transfer was denied.
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The International Olympic Committee (IOC) v. Domain Administrator, See PrivacyGuardian.org / Kilibuy Jin Xin
Case No. DCC2021-0010
1. The PartiesThe Complainant is The International Olympic Committee (IOC), Switzerland, represented by Bird & Bird LLP, Belgium.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America / Kilibuy Jin Xin, China.
2. The Domain Name and Registrar
The disputed domain name is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2021. On August 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 9, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 24, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 24, 2021.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 16, 2021. The Center notified the Respondent’s default on October 6, 2021. On October 9, 2021, the Respondent sent several emails to the Center, but did not submit any formal response.
The Center appointed John Swinson as the sole panelist in this matter on December 1, 2021. 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 Complainant is a non-profit organization organized under the laws of Switzerland. The Complainant has supervised the organization of the Olympic Games. The Complainant has conducted 23 Olympic Winter Games and 28 Olympic Summer Games.
The Complainant is the owner of several THE OLYMPIC STORE trademarks. These include Swiss figurative trademark THE OLYMPIC STORE with registration No. P-486092, registered on December 21, 2000 and Australian word trademark THE OLYMPIC STORE with registration No. 705026, registered on March 21, 1996.
The Respondent did not submit a formal response, so little is known about the Respondent.
The disputed domain name was registered on March 25, 2021, and at one time resolved to an active website that sells replica Olympic medals.
At the time of this decision, the disputed domain name was directed to a website at that sells trophies and medals.
5. Parties’ Contentions
A. Complainant
In summary, the Complainant makes the following submissions:
The Olympics Games bring together athletes from across the globe for one of the world’s most well-known and celebrated sporting, cultural and entertainment events.
The Olympic properties, as defined by the Olympic Charter in its rules 7-14, include among others all trademarks and other intellectual property rights related to the Olympic Games.
In order to designate and differentiate each Olympic Games, the Complainant has a long history of using “Host City & Year” trademarks in connection with the Olympic Games since 1896 (e.g. ATHENS 1896, BEIJING 2008, LONDON 2012, SOCHI 2014, RIO 2016, and PEYONGCHANG 2018). It is widely recognized that the Host City Year trademarks immediately gain considerable notoriety and distinctiveness through the announcement of the host city.
On September 7, 2013, the Complainant announced that the City of Tokyo’s bid which had been coordinated by the Japanese Olympic Committee, had won the right to stage the 2020 Summer Olympics.
The Respondent displays on its website, at several places, the TOKYO 2020 trademarks of which the Complainant is the owner. The Complainant holds several TOKYO 2020 verbal and semi-figurative trademarks, either combined or not with the Olympic Symbol (i.e. the five rings) or the Tokyo 2020 emblem (i.e. harmonised chequered emblem).
The Complainant is the owner of several THE OLYMPIC STORE trademarks.
The disputed domain name is confusingly similar to the Complainant’s trademark THE OLYMPIC STORE. The disputed domain name not only incorporates the element STORE, but also substitutes the element “OLYMPIC” with the most popular sport and an Olympic discipline, namely “SOCCER”.
Taken in combination with the use of the Complainant’s TOKYO 2020 trademarks on the web page to which the disputed domain name resolves, the term “soccer” rather strengthens the association with the Complainant as it corresponds with one of the most famous Olympic disciplines.
The Respondent is neither affiliated with the Complainant in any way nor has the Complainant licensed, authorized or permitted the Respondent to use and register, or to seek registration of any domain name or trademark incorporating abovementioned trademarks and in particular the OLYMPIC or the TOKYO 2020 trademarks.
The Respondent is not commonly known by the disputed domain in accordance with Paragraph 4(c)(ii) of the Policy.
The disputed domain name resolves to an active website offering Internet users to buy replica Olympic medals and where several references are being made to the TOKYO 2020 trademarks of which the Complainant is the owner. This offering is directly competing with the services offered by the Complainant, and is an attempt at extracting a profit from Internet users presumably looking for the Complainant’s products and/or services.
At the time of registration of the disputed domain name, the Respondent already knew, or at least should have known, of the existence of the Complainant and of the Complainant’s trademarks.
B. Respondent
The Respondent did not submit a formal reply to the Complainant’s contentions.
An email was received from the email address “[…]@soccerstore.cc” in response to communication from the Centre, that said:
“which domain?
Just buy it on Namesilo.”6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant, even where the Respondent does not file a formal response.
An asserting party needs to establish that it is more likely than not that the claimed fact is true. An asserting party cannot meet its burden by simply making conclusory statements unsupported by evidence. To allow a party to merely make factual claims without any supporting evidence would essentially eviscerate the requirements of the Policy as both complainants or respondents could simply claim anything without any proof. For this reason, UDRP panels have generally dismissed factual allegations that are not supported by any bona fide documentary or other credible evidence. Snowflake, Inc. v. Ezra Silverman, WIPO Case No. DIO2020-0007.
Paragraph 15(a) of the Rules directs the Panel to decide the 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.
A. Identical or Confusingly Similar
The first element of the Policy requires the Complainant to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
As stated above in Section 4, the Complainant owns registered trademarks for THE OLYMPIC STORE.
Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name. See, for example, Consumer Reports, Inc. v. Wu Yan, Common Results, Inc., WIPO Case No. D2017-0371; and Sonorous Ses Ve Goruntu Sistemleri Sanayi Ticaret Anonim Sirketi v. Oguzhan Aksu, Sonorous Audiovisual Furniture GmbH – Deutschland, WIPO Case No. D2018-2951.
It is well-established that the content of the Respondent’s website is generally disregarded when assessing confusing similarity under the first element of the Policy. The test is typically conducted by way of a side-by-side comparison of the Complainant’s trademark and the disputed domain name. Harry Winston Inc. and Harry Winston S.A. v. Jennifer Katherman, WIPO Case No. D2008-1267. As stated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7: “In specific limited instances, while not a replacement as such for the typical side-by-side comparison, where a panel would benefit from affirmation as to confusing similarity with the complainant’s mark, the broader case context such as website content trading off the complainant’s reputation, or a pattern of multiple respondent domain names targeting the complainant’s mark within the same proceeding, may support a finding of confusing similarity.” See also WIPO Overview section 1.15. In all events, while the content of the website may in limited instances affirm a finding of confusing similarity, this affirmation by reference to the website content serves to support but not replace a side-by-side comparison of the relevant mark and domain name.
The disputed domain name does not include the Complainant’s THE OLYMPIC STORE trademark.
Moreover, the dominant feature of the Complainant’s trademark is OLYMPIC. This word does not appear in the disputed domain name. Contrast United States Olympic Committee v. MIC, WIPO Case No. D2000-0189; and The Canadian Hockey Association and The Canadian Olympic Committee v. Lin Lin, WIPO Case No. D2016-0322.
The dominant feature of the disputed domain name – if there can be said to be one – is “soccer”.
The term that is common between the disputed domain name and the Complainant’s trademark is the word “store”. The Complainant has no trademark rights in the word “store” alone. In fact, in the Canadian Hockey Association and The Canadian Olympic Committee v. Lin Lin, supra case cited above, which involved the domain name , the Complainants submitted that the term “store” was generic, and the panelist in that case agreed.
In the circumstances of this case, while the content of the Respondent’s website targets the Complainant that is not sufficient in itself to affirm let alone make a finding of confusing similarity, as the dominant elements of the Complainant’s trademarks are not recognizable within the disputed domain name. Accordingly, the Panel finds that the disputed domain name is not identical or confusingly similar to the Complainant’s THE OLYMPIC STORE trademark.
The Complainant fails to meet the first element of the Policy.
B. Rights or Legitimate Interests
In view of the finding above, the Panel does not need to make a decision under the second element of the Policy.
C. Registered and Used in Bad Faith
In view of the finding above, the Panel does not need to make a decision under the third element of the Policy.
For the record, the Panel notes that the allegations the disputed domain name resolves to a site offering unauthorized products by reference to the Complainant’s marks is clearly not legitimate and may give rise to a cause of action in another fora such as court – which the Complainant remains free to pursue; at the same time there is no standing under the first element to proceed to a full determination on the merits.
7. Decision
For the foregoing reasons, the Complaint is denied.
John Swinson
Sole Panelist
Date: December 11, 2021
