Complainants are The Canadian Hockey Association of Ottawa, Canada and The Canadian Olympic Committee of Toronto, Canada, represented by Kestenberg Siegal Lipkus LLP, Canada.
Respondent is Lin Lin of Union, Missouri, United States of America / Beijing, China. 2. The Domain Names and Registrar
The disputed domain names and are registered with PDR Ltd. d/b/a PublicDomainR (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 17, 2016. On February 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 19, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing Respondent's 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 13, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 14, 2016.
The Center appointed David Perkins as the sole panelist in this matter on April 5, 2016. 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 4.A. The First Complainant
4.A.1 The First Complainant is The Canadian Hockey Association ("Hockey Canada"). It is a not-for-profit corporation based in Canada. It was formed by the Canadian government in 1968 to oversee all operations of ice hockey in Canada. Since 1994, when it merged with the Canadian Amateur Hockey Association, it has been the governing body for ice hockey in Canada.
4.A.2 Hockey Canada is engaged in the production, sale and licensing of men's and women's clothing, including hockey jerseys, which are associated with one or more of its trademarks. Its products are sold through Hockey Canada's own stores and through authorised dealers such as The Bay, Canadian Tire, Sport Check, National Sports, Hockey Experts, Sports Experts and Nike retail stores. The Hockey Canada Trademarks
4.A.3 Hockey Canada is the proprietor of the following official marks and registered trademarks (collectively, the "HOCKEY CANADA marks").
Territory
Application/ Registration no.
Mark
Classes of goods
Dates of application/ registration and services
United States
Reg. No. 3,608,924
HOCKEY CANADA
16 and 41
Filed: January 6, 2006; Registered: April 21, 2009
Canada
Reg. No. 828,220
TEAM CANADA HOCKEY
**
Filed: March 3, 2006; Registered: July 17, 2012
Canada
Reg. No. 781,093
HOCKEY CANADA FOUNDATION
**
Filed: December 1, 2008; Registered: October 28, 2010
Canada
App. No. 0906441
HOCKEY CANADA
**
Filed: November 30,1993
Canada
App. No. 0918378
TEAM CANADA HOCKEY
**
Filed: May 3, 2007
Canada
App. No. 0918377
TEAM CANADA
**
Filed: May 3, 2007
Canada
Reg. No. 461,663
CANADA and maple leaf logo
**
Filed: February 27, 1995
Registered: August 23, 1996
Canada
App. No. 0910119
CANADIAN HOCKEY ASSOCIATION
**
Filed: July 13, 1998
** Neither the Declaration of Dale Ptycia (Senior Manager, Licensing of Hockey Canada), nor Annex D (which contains copies of the above applications and registrations) fully identify the Classes of Goods and/or Services. Further, none of the above listed Applications in Annex D contain dates of registration. They do, however, bear the words "Prohibited Mark: Official Mark (Word)". Citing the Decision in Toronto Convention & Visitors Association v. This Domain is For Sale /Email Your Offers,WIPO Case No. D2001-1463, Complainants submit that official marks are to be treated as analogous in all respects to registered trademarks and service marks. The Hockey Canada Domain Name
4.A.4 Hockey Canada is the registrant of the domain name which Mr. Ptycia says has been used since its registration in November, 2000 for Hockey Canada's website which provides information about Hockey Canada's programs, products and services. Between September, 2007 and February, 2014 he says that website was visited 24.2 million times by more than 16 million unique viewers. Since 1994 he explains that Hockey Canada has extensively advertised and sold hockey jerseys in Canada, the United States and elsewhere using the HOCKEY CANADA marks and thereby generated millions of dollars in sales.
4.A.5 Mr. Ptycia states that Hockey Canada is also the registrant of the domain name . 4.B. The Second Complainant
4.B.1 The Second Complainant, The Canadian Olympic Committee (the "Committee"), is a registered Canadian amateur athletics association incorporated under the Canada Not-For-Profit Corporations Act, 2009. It is engaged in the production, sale and licensing of men's and women's merchandise, which have been associated with one or more of the trademarks identified in paragraph 4.B.2 (collectively, the "OLYMPIC marks") below since 1980. Mr. O'Born (Program Manager, Commercial Rights, Canadian Olympic Association) explains that the Committee entered into a licensing arrangement with Hockey Canada under which the latter was granted an exclusive and perpetual license to use the Team Canada Olympic hockey jerseys worn for the 2014 Winter Olympic Games, including the right to manufacture, distribute and sell replicas of such jerseys and other products. Mr. O'Born further states that the Committee also raises funds to support the Canadian Olympic Team, Canadian athletes and the Olympic movement by entering into licenses with other parties to use the OLYMPIC marks for various official merchandise. The Canadian Olympic Committee Marks
4.B.2 The Second Complainant is the proprietor of the following Canadian official marks.
Application/ Registration no
Mark
Classes of goods
Dates of Application/ Registration and services
App. No. 0901067
OLYMPIC
1 to 45
Filed: October 25, 1979**
App. No. 0910724
CANADIAN OLYMPIC TEAM
1 to 45
Filed: January 27, 1999**
App. No. 0910793
CANADA OLYMPIC PARK
1 to 45
Filed: February 25, 1999**
** These are "official marks" and, according to Complainants, are to be treated as analogous to registered trademarks: see, in this respect, paragraph 4.A.3 above. Complainants also submit that the OLYMPIC mark is protected by the Olympic and Paralympic Marks Act 2007 which precludes use of that mark by third parties in connection with a business. The Canadian Olympic Committee's Domain Name
4.B.3 The Second Complainant is the registrant of the domain name , which was registered on May 28, 2003. Mr. O'Born states that the Committee has used and continues to use this domain name to provide information about its programs and services. He says that over the years the Committee has expended millions of dollars promoting and advertising its programs and products under the OLYMPIC marks. He says that between January, 2014 and December, 2015 the website to which the domain name resolves received over 18.3 million page views. 4.C. Respondent
4.C.1 In the absence of a Response, what is known of the Respondent is contained in the Complaint and its exhibits.
4.C.2 The first disputed domain name was registered on February 17, 2014 to Respondent, Lin Lin, at an address in Union, Missouri. Respondent's email address is given as .
4.C.3 The second disputed domain name was registered on February 15, 2014 to Respondent, Lin Lin, at an address in Beijing, China. Respondent's given email address for that domain name is the same as that for the first disputed domain name.
4.C.4 The Complaint exhibits screen captures of the websites to which both disputed domain names resolve. Those websites are very similar, both offering clothing and bearing the CANADA and maple leaf logo trademark of Hockey Canada in the top left hand corner. They both use the same reference and image relating to their payment options and advertise the World Junior Hockey Championships in Toronto-Montreal. Both disputed domain names have the same Registrar and are hosted through the same ISP.
4.C.5 Mr. Ptycia states that Hockey Canada made sample purchases of jerseys from both of the websites to which the disputed domain names resolve and that the jerseys were found to be counterfeit. A fraud complaint was then made to VISA, who terminated the payment processing service for those accounts. Nevertheless, Complainants state that Respondent(s) have continued to offer the counterfeit goods on the two websites.
4.C.6 In the light of the facts summarised in paragraphs 4.C.2 to 4.C.5 above, Complainants say that Respondents are one and the same person. 5. Parties' Contentions 5.A. Complainants Identical or Confusingly Similar
5.A.1 Complainants assert trademark rights in the HOCKEY CANADA marks and the OLYMPIC marks summarised in sections 4.A. and 4.B. above, which have been used respectively since 1994 and 1980.
5.A.2 Complainants' case is that both the disputed domain names incorporate one or more aspects of their respective trademarks and, accordingly, are confusingly similar to those trademarks. As to the second disputed domain name, Complainants say that addition of the generic word "store" was likely chosen as Respondent is selling counterfeit merchandise from the website to which that disputed domain name resolves. Complainants cite decisions under the Policy where addition of a generic word to a complainant's trademark does not avoid a finding of confusing similarity. Rights or Legitimate Interests
5.A.3 In sum, Complainants' case is that Respondent cannot demonstrate any of the circumstances set out in paragraph 4(c) of the Policy.
5.A.4 Complainants say that, given the existence and extensive use of the OLYMPIC marks and the CANADA HOCKEY marks, respectively registered and used more than 30 and 15 years before creation of the two disputed domain names, it is inconceivable that Respondent can have any rights or legitimate interests in those domain names.
5.A.5 Further, Complainants say that use of the two disputed domain names to resolve to websites selling counterfeit merchandise cannot constitute either a bona fide offering of goods (Policy, paragraph 4(c)(i)) or a legitimate noncommercial or fair use of those domain names, (Policy, paragraph 4(c)(iii)). The Complaint cites further decisions under the Policy in support of this contention.
5.A.6 Nor, Complainants say, is there any evidence that Respondent is commonly known by either of the disputed domain names, (Policy paragraph 4(c)(ii)).
5.A.7 Finally, Complainants say that Respondent is not licensed or otherwise authorised to use either the CANADA HOCKEY marks or the OLYMPIC marks. Registered and Used in Bad Faith
5.A.8 Complainants' case is that the circumstance prescribed in paragraph 4(b)(iv) of the Policy applies. This is because Respondent is using the two disputed domain names, which are confusingly similar to the CANADA HOCKEY marks and the OLYMPIC marks, to sell counterfeit products through websites resembling the First Complainant's official website and thereby create confusion. The Complaint cites decisions under the Policy where such activity has been found to constitute bad faith under paragraph 4(b)(iv) of the Policy.
5.A.9 Furthermore, given the fame of their respective trademarks and the use to which Respondent is putting the disputed domain names, Complainants say that Respondent clearly registered those domain names in bad faith. Again, the Complaint cites decisions under the Policy where bad faith registration has been held in similar circumstances. 5.B Respondent
As noted, no Response has been filed. 6. Discussion and Findings
6.1 The Policy paragraph 4(a) provides that a complainant must prove each of the following in order to succeed in an administrative proceeding
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate a respondent's rights or legitimate interests in the disputed domain name in issue.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant to the requirements of paragraphs 4(a)(ii) and (iii) of the Policy. Multiple Complainants
6.5 The Panel refers to paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"). In the light of the facts summarised in paragraphs 4.C.2 to 4.C.4 above and of the relationship between Complainants described by Mr. O'Born (paragraph 4.B.1 above), the Panel concludes that a single consolidated complaint is justified. Identical or Confusingly Similar
6.6 The Panel is satisfied that Complainants have rights in the trademarks identified in paragraphs 4.A.3 and 4.B.2 above. The Panel also accepts that Complainants' "official marks" are analogous to trademarks.
6.7 The first disputed domain name incorporates the First Complainant's HOCKEY CANADA trade and official marks and the Second Complainant's OLYMPIC official mark. The Panel considers that combination is confusingly similar to at least the First Complainant's trademarks incorporating CANADA and HOCKEY.
6.8 The second disputed domain name combines "Canada Olympics" with the generic suffix "store". Considering sections 1.2 and 1.9 of the WIPO Overview 2.0, in the Panel's view, for the purposes of paragraph 4(a)(i) of the Policy, it is appropriate to discard the generic descriptor "store" and to compare that disputed domain name with the main elements of the Second Complainant's CANADA OLYMPIC PARK and CANADIAN OLYMPIC TEAM marks. Those elements are CANADA OLYMPIC and CANADIAN OLYMPIC. Approached in that way, the Panel considers that there is a real risk that Internet users may believe there is a connection between the second disputed domain name and the Second Complainant and/or to its goods. Accordingly, the Panel finds that the second disputed domain name is confusingly similar to the Second Complainant's said OLYMPIC marks.
6.9 Further, although when addressing this requirement of the Policy, it is usual to disregard the content of the website to which the disputed domain name resolves, in this case that content is - in the Panel's view - highly relevant to assessment of the intent to create confusion under the subsequent requirements of paragraphs 4(a)(ii) and (iii) of the Policy. Rights or Legitimate Interests
6.10 The Panel considers that Complainants' case summarised in paragraphs 5.A.3 to 5.A.7 above is well made out and does not require repetition here. Consequently, the Complaint meets the requirement of paragraph 4(a)(ii) of the Policy. Registered and Used in Bad Faith
6.11 Similarly, the case summarised in paragraphs 4.C.4 & 5 and 5.A.8 & 9 is well made out. Accordingly, the Complaint meets the requirement of paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names and be transferred to the Second Complainant, The Canadian Olympic Committee.
David Perkins
Sole Panelist
Date: April 17, 2016
Full & Egal Universal Law Academy