Complainants are International Olympic Committee and Tokyo Organising Committee of the Olympic and Paralympic Games, Switzerland, represented by Bird & Bird LLP, Belgium.
Respondent is Contact Privacy Inc. Customer 1246395316, Canada / Daniel O'Hare, United Kingdom, represented by Denis I Finn Solicitors, Ireland. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2020. On April 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. That same day the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 9, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 14, 2020. 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 Respondent of the Complaint, and the proceedings commenced on April 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 5, 2020. The response due date was extended to May 15, 2020 pursuant to Respondent’s request and Respondent timely filed his response on that date. The Center appointed Harrie R. Samaras as the sole panelist in this matter on May 29, 2020. 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 Complainant International Olympic Committee (“IOC”) is an international, non-governmental organization that, since 1896, has supervised the organization of the Olympic Games. Complainant Tokyo Organising Committee of the Olympic and Paralympic Games (“TOCOG”) was designated by the Japanese National Olympic Committee and the Tokyo Metropolitan Government to undertake all the activities related to the planning, organizing, financing and staging of the Tokyo 2020 Olympic Games. The IOC owns all rights to the Olympic Games, the Olympic symbol, the Olympic flag, motto and anthem, the word Olympic, and its Host City Year trademarks. National Olympic Committees such as the Japanese National Olympic Committee, under by-laws to the Olympic Charter rules, are responsible to the IOC for protecting “Olympic properties” including trademarks and other intellectual property rights related to the Olympic Games, in their territory. Moreover, according to the Host City Contract, the IOC retains responsibility for the protection/enforcement and exploitation of the TOKYO 2020 Mark outside Japan while TOCOG is responsible to the IOC of the protection/enforcement and exploitation of the TOKYO 2020 Mark in Japan. To designate and differentiate each of the Olympic Games, the IOC has a long history of using Host City & Year (“Host City Year”) trademarks in connection with the Olympic Games (e.g., ATHENS 1896, BEIJING 2008, LONDON 2012, SOCHI 2014, RIO 2016, and PEYONGCHANG 2018). For the Olympic Games planned for Tokyo this year, Complainants have secured protection across multiple national jurisdictions for “TOKYO 2020” word and design marks, either combined or not with the Olympic Symbol (i.e., the five rings) or the Tokyo 2020 emblem (i.e., harmonized checkered emblem). These include: International trademark registration No. 1204991 (registered February 14, 2014); Japanese trademark registration No. 5626678 (registered November 1, 2013); and United States of America Registration No. 4,662,320 (registered December 30, 2014) each for the word mark “TOKYO 2020 Mark” (or the “Mark”). As part of the responsibilities entrusted to TOCOG, it retains in a fiduciary capacity on behalf of the IOC the domain names On September 7, 2013, the IOC announced that Tokyo had won the right to stage the 2020 Summer Olympics. This announcement garnered substantial media coverage and comment worldwide. Complainants have used the TOKYO 2020 Mark (either combined or not with the Olympic Symbol or with the Tokyo 2020 emblem) worldwide in promotional and advertising materials since 2013. Respondent identifies himself as a Cardiology Registrar in a prestigious London Hospital. On February 3, 2020, he registered the Domain Name using a privacy registration service. The Domain Name used to resolve to an active webpage organizing a golf trip from Ireland to Kasumigaseki Country Club, the planned golf venue for the 2020 Summer Olympics, to play the Olympic Golf course in 2021. That webpage included a message that the Domain Name was for sale. Since the time the Complaint was filed the Domain Name resolves to WordPress Domain page template with content on the postponement of Tokyo 2020 Summer Olympic Games. It also states under “Contact Details” in large type: “For further information, or domain enquires please contact tokyo2021golf@gmail.com.” The postponement of the Tokyo 2020 Summer Olympic Games was officially announced by the IOC President and the Prime Minister of Japan on March 24, 2020. By joint statement of Complainants it was agreed that the Games will keep the name Olympic and Paralympic Games Tokyo 2020. 5. Parties’ Contentions A. Complainant The Host City Year trademarks are used to promote the Olympic Games through extensive media and television coverage and broadcast of the Olympic Games (e.g., Host City Year trademarks are displayed on flags, banners, advertising banners, athlete bibs widely filmed and photographed throughout the 17 days of competition). Host City Year trademarks are also affixed on merchandising articles often in their word form or slightly stylized form. The Host City Year trademarks immediately gain considerable notoriety and distinctiveness through the announcement of the host city and are registered worldwide. Also, domain names containing the Host City Year trademarks are registered within various generic Top-Level Domain (“gTLD”) and country-code Top-Level Domains (ccTLDs) for each Olympic Games. People around the world have been exposed to the TOKYO 2020 Mark during and immediately after the announcement and they perceive the Mark as clearly identifying the organization of a sports competition. A search on Google picture on “TOKYO 2020” displays only links related to the Olympic Games organized by Complainants. The goodwill associated with Complainants’ Host City Year trademarks, including the TOKYO 2020 Mark, is a valuable asset needed to ensure the IOC’s long-term ability to help fund the Olympic Movement. The IOC receives no government funding; its revenues are derived primarily from the sale of television rights for broadcasting the Olympic Games and from marketing, licensing, and sponsorship programs related to use of Olympic Intellectual Property Rights. The Domain Name is confusingly similar to Complainants’ TOKYO 2020 Mark. It reproduces the Mark in its entirety, apart from the number “1” instead of “0” and the elimination of the space between the two terms. Altering the Mark by one number does not make the name different in any substantive way and does nothing to minimize the risk of confusion. The number “2021” may be perceived as a direct reference to the new year venue of the Tokyo Olympic Games, thus Internet users may believe that the website associated with the Domain Name (“Respondent’s website”) is the official website of the 2021 Tokyo Olympic Games when in fact it is not. The extension “.org” is not to be taken into consideration when examining the identity or similarity between the Mark and the Domain Name as it is viewed as a standard registration requirement. Respondent is neither affiliated with Complainants nor has Respondent been authorized by Complainants to use and register, or to seek registration of any domain name or trademark containing the TOKYO 2020 Mark. Respondent is not commonly known by the Domain Name or the Mark. Complainants are not aware of any trademarks in which Respondent may have rights that are identical or similar to the Domain Name. Respondent is also not residing in Japan and does not appear to have any connection whatsoever with the geographical locality Tokyo. Respondent cannot assert that he was using or had made demonstrable preparations to use, the Domain Name, or a name corresponding to it, in connection with a bona fide offering of goods and services. The Domain Name used to resolve to a webpage entitled “TOKYO 2021” organizing a golf trip from Ireland to Kasumigaseki Country Club, the planned golf venue for the 2020 Summer Olympics, to play the Olympic Golf course in 2021. The website also provided an email link: “Tokyo2021@gmail.com” (the Complaint omitted that the email address included the term “golf” (i.e., “Tokyo2021golf@gmail.com”). As such, according to the Complainant, there might be a risk that Respondent could possibly be engaged in a phishing scheme, a practice intended to defraud consumers into revealing financial information. Currently, the Domain Name resolves to a WordPress blog relating to the postponement of the Tokyo 2020 Summer Olympic Games and which allows Internet users to post comments which requires the visitor to enter their name and email before their comment will be posted. Users searching for Complainants who visit Respondent’s website could be deceived into entering their user information in the belief they are dealing with Complainants, due to the use of the Mark in the Domain Name. This provides Respondent with user information which potentially can be used or sold for commercial gain. Finally, Respondent wishes to sell the Domain Name. Indeed, if someone is interested in it they can send an email inquiry via a link that is provided at the bottom of the website in the Contact Details section. The Host City Year trademarks are famous and recognized worldwide. The planned Summer Olympic Games in the year 2020 are a well-known event. Hence, it is an incontrovertible fact that Respondent registered the Domain Name knowing that if the Tokyo 2020 Summer Olympic Games were to be postponed, Complainants would potentially be acquiring rights in respect of any designation indicating association with the Tokyo 2021 Olympic Games, “Tokyo 2021” being an obvious example. Respondent’s purpose in registering the Domain Name was to take commercial advantage of the rights that he knew would be developed in respect of the term, “Tokyo 2021”. There is no doubt that if Respondent would have had a good-faith interest in “Tokyo 2021”, he would have registered the Domain Name a long time ago and not just when it is known that Complainants are considering to postpone the Tokyo 2020 Olympic games. That is very clear from Respondent’s interviews with the Japan Times. As described above, Internet users searching for Complainants who visit Respondent’s website could be deceived into entering their user information believing they are dealing with Complainants, due to the use of the Complainants’ Mark in the Domain Name. This provides Respondent with user information which is potentially able to be used or sold for commercial gain. Such risk has been recognized by prior UDRP panels. Respondent’s alteration of the content of the Domain Name to a website which is more generally orientated is in itself also indicative of bad faith and gives rise to a reasonable suspicion that Respondent is attempting to “cover its tracks”. The second factor supporting a finding of use in bad faith is that Respondent’s webpage mentions the possibility of someone purchasing the Domain Name. Therefore, Respondent acquired the Domain Name to sell it to Complainant or others, or to use it as means of pressure, which is an unlawful pattern of conduct. Finally, the concealment of Respondent’s identity is an indication of bad faith, as the use of a privacy filter service was not inspired by a legitimate need to protect Respondent’s identity but solely to make it difficult for Complainants to protect its trademark rights. B. Respondent Complainant’s assertion about rumors in January and February 2020 concerning the potential postponement of the 2020 Summer Olympics is inaccurate. The IOC executive board on March 12, 2020, over a month after the Domain Name was registered, expressed its full commitment to the success of the Olympic Games Tokyo 2020, then taking place from July 24, 2020 to August 9, 2020. Further, the President of the Organizing Committee for the 2020 Summer Olympics had specifically stated that the 2020 Summer Olympics will still be known as Tokyo2020. Thus, under the circumstances Respondent does not accept that the Domain Name is likely, or capable of causing confusion in circumstances where Senior Executives of Complainant have stated that the 2020 Summer Olympics will still be known as Tokyo2020. Respondent clearly had and retains legitimate interests in the Domain Name. The site was initially set up to plan a trip to the Kasumagaseki Golf Club in 2021 for colleagues and associates. It is envisaged that the trip will proceed subject to interest and any travel restrictions that may apply at the time. The website was being used for noncommercial reasons on March 17, 2020, 28 days before this proceeding commenced. The Domain Name has never at any time attempted to mislead or represent the Olympics. It clearly states on the home page that the site is “Not affiliated with the Tokyo 2020 Olympics”. Respondent is a Cardiology Registrar in a prestigious London Hospital and is deeply concerned at the manner in which he has been portrayed by Complainant. The reference to a twitter account is wholly unconnected to Respondent. Respondent is not aware of, associated with nor does he have any contact with “Michael Beattie” and the reference to the same is misleading. Furthermore, the reference to articles appearing in the Japanese press is extremely selective. Respondent will make available a full transcript of the communication should the need arise. Respondent rejects the bizarre assertion that the provision of an email address on the website associated with the Domain Name is indicative of the Domain Name being connected to a phishing scheme. This ludicrous position is wholly unsustainable, misleading and mischievous. The Domain Name was registered for legitimate purposes and is being used as such. It is noteworthy that the website is headed: “This site is not affiliated with the Tokyo 2020 olympics.” This was the case at the time of registration and remains the case to date. 6. Discussion and Findings A. Identical or Confusingly Similar It is uncontroverted that Complainants have rights in the TOKYO 2020 Mark by virtue of the trademark registrations mentioned above and the extensive worldwide use of the Mark. Respondent argues that because the President of the Organizing Committee for the 2020 Summer Olympics specifically stated that the 2020 Summer Olympics will still be known as Tokyo 2020, it cannot be concluded that the Domain Name Finally, the mere use of a gTLD such as “.org” is irrelevant as it is well established that it is insufficient to avoid a finding of confusingly similarity. See L’Oréal v Tina Smith,WIPO Case No. D2013-0820. For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests Complainants maintain: (1) Respondent is neither affiliated with them nor have they authorized Respondent to use and register the Domain Name or to seek registration of a domain name or trademark containing the TOKYO 2020 Mark; (2) Respondent is not commonly known by the Domain Name or “TOKYO 2021”; (3) Respondent does not own any trademarks that are identical or similar to the Domain Name; and (4) Respondent is not residing in Japan and does not appear to have any particular connection with Tokyo. These assertions stand uncontested. Complainants also maintain Respondent was not using nor had he made demonstrable preparations to use the Domain Name or a name corresponding to the Domain Name, in connection with a bona fide offering of goods and services before these proceedings commenced. They point out that the Domain Name previously resolved to a webpage entitled “TOKYO 2021” that purported to organize a golf trip from Ireland to Kasumigaseki Country Club, the planned golf venue for the 2020 Summer Olympics, to play the Olympic Golf course in 2021. Similarly, Complainants argue that currently the Domain Name resolves to a WordPress blog relating to the postponement of the Tokyo 2020 Summer Olympic Games that allows Internet users to post comments requiring the visitor to enter their name and email before their comment will be posted. Complainants posit that this provides Respondent with user information which can be used or sold for commercial gain and that Internet users searching for Complainants who visit Respondent’s website could be deceived into entering their information believing they are dealing with Complainants because of the reference in the Domain Name to the Mark. Moreover, Complainants argue that Respondent lacks rights or legitimate interests because he is using the Domain Name to attract Internet users to his website to sell the Domain Name. Complainant has set forth a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Once this occurs, the burden of production shifts to Respondent to come forward with specific facts establishing rights or legitimate interests. See World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306. Respondent counters that his website was being used for noncommercial purposes before this proceeding commenced insofar as he initially set it up to plan a trip to the Kasumigaseki Golf Club in 2021 for colleagues and associates and that the trip will proceed subject to interest and any travel restrictions that may apply at the time. Although (as confirmed by a visit to the Internet Archive Wayback Machine) Respondent’s initial website purported to advertise “a trip from Ireland to Kasumigaseki Country Club to play the Olympic Golf course in 2021” and “More details to follow…”, it also had a prominent message box in the middle of the page stating that the Domain Name was for sale and next to that: “Please contact tokyo2021golf@gmail.com.” The current website is modified by removing mention of the golf trip and adding links to various news articles relating to golf and the Tokyo 2020 Olympic Games, but the website continues to mention sale of the Domain Name: “For further information, or domain purchase enquires please contact tokyo2021golf@gmail.com.” Thus, while an argument could be made that Respondent registered the Domain name for a fair use purpose of organizing a golf trip to a soon-to-be-famous golf course (a point Complainants did not address in their Complaint), Respondent has consistently manifested his intent on both iterations of his website to offer the Domain Name for sale. Indeed, Respondent’s purpose for registering the Domain Name is further manifested in an online article of The Japan Times dated March 27, 2020 relating to the Domain Name in which he was quoted as stating: “I purchased [the Domain Name] several weeks ago, before the pandemic.” “I would be willing to sell the domain if someone else is interested in it.” “I have already received offers to purchase the domain, but I do not want to rush into any decision and so have not sold yet.” “I have a lot of interest since the official decision (on the postponement of the Olympics), and so I am waiting to choose the best offer.” Respondent claims that he is a Cardiology Registrar in a prestigious London Hospital and is deeply concerned by the manner in which Complainant has portrayed him noting as one example that “the reference to articles appearing in the Japanese press is extremely selective. Respondent will make available a full transcript of the communication should the need arise”. Respondent has not denied making the quoted statements and he had the opportunity in this proceeding to rebut Complainants’ case with the full transcript of the interview, but he chose not to. In any event, based on the entirety of the evidence of record, the Panel finds that Respondent was neither using the Domain Name in connection with a bona fide offering of goods or services as contemplated under the Policy, nor was he making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain. Respondent further claims his website has never attempted to mislead or misrepresent the Olympics and that it clearly states on the home page that the site is “Not affiliated with the Tokyo 2020 Olympics”. In the Panel’s view (see further discussion below), Respondent selected the Domain Name for commercial reasons, with the 2020 Tokyo Olympic Games in mind and knowing that the Domain Name would serve as a reference to those Games. Even if, as Respondent claims, it was not his intention to use the Domain Name for the purpose of misleading or misrepresenting the Olympics or an affiliation with the Games, in the Panel’s view, Respondent should have known that any business conducted using the Domain Name would be enhanced by the association with the Tokyo Olympic Games that the Domain Name necessarily brings to mind. For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith It is uncontested that the IOC has continuously used Host City Year trademarks for over one hundred years in connection with the Olympic Games (e.g., ATHENS 1896, BEIJING 2008, RIO 2016), they are recognized worldwide, and they are well publicized through a variety of media. The TOKYO 2020 Mark used in conjunction with the Summer Olympic Games for the year 2020 was no exception. Since September 7, 2013, when the IOC announced that Tokyo had won the right to host the 2020 Summer Olympics, there was substantial worldwide media coverage and commentary about that announcement (e.g., CNN, CBS News, NBC Sports, SportsLogos.Net News, Dagbladet.no, The Guardian, Francetv.info, Reuters, CubaDebate), which included use of the TOKYO 2020 Mark (e.g., in media and extensive licensing efforts). Respondent does not claim he was unaware of the announcement back in 2013 or of the TOKYO 2020 Mark before registering the Domain Name. In fact, his first website is entitled “Tokyo 2021”, shows a flag of the country of Japan, and states “Planning a trip from Ireland to Kasumigaseki Country Club to play the Olympic Golf course in 2021”. Considering: the long-standing tradition of Host City Year trademarks for Olympic Games; the use and publicity since 2013 of the TOKYO 2020 Mark and the Domain Name mimics the naming tradition for the Tokyo games; that Respondent included the Mark in its entirety in the Domain Name (with one obvious substitution); that Respondent does not have any rights or legitimate interests in the Domain Name; it was predictable with the COVID pandemic occurring in early 2020 that the Tokyo Olympic Games could be postponed (indeed there was wide media speculation about this before Respondent registered the Domain Name); and, that Respondent used the traditional naming convention with the following year, the Panel finds that Respondent registered the Domain Name in bad faith. Respondent objects to Complainant’s assertion that he registered the Domain Name Complainants made of record a series of online articles in January and February of this year discussing how COVID-19 was raising concerns about holding the 2020 Summer Olympic Games as planned and the potential postponement of the Games (see, e.g., Reuters, January 30, 2020/ “Japan hopefully has time to build virus defenses before Olympics”; Inside the games, January 30, 2020/ “Nancy Gillen: Olympic déjà vu as coronavirus crisis hits Tokyo 2020”; Associated Press, January 31, 2020/ “Tokyo Olympic organizers try to dampen cancellation rumors”; Sydney Morning Herald, January 31, 2020/ “Coronavirus outbreak poses a lingering threat to Tokyo 2020”; and The Japan Times, February 7, 2020/ “Tokyo Olympics organizers ‘extremely worried’ that coronavirus may hit games”. If Respondent was aware of the news items (see (1) and (2) above) that occurred after he registered the Domain Name, it is more likely than not that he was aware (as a private citizen and/or as a Cardiology Register in a hospital) before registering the Domain Name in early February 2020 of the concerns being reported in January 2020 about holding the Summer Olympic Games in 2020 and, anticipating a possible postponement, he modified the Mark by one year – 2021 – for registering the Domain Name. Even ignoring the pre-registration news events to which Respondent objects, the result does not change. Respondent’s initial website prominently displayed a text box with a message that the “Domain Name was for sale juxtaposed to an email address to contact Respondent. Thus, it appears that Respondent surmised even in the absence of any definite pronouncement rescheduling the Games that if the Tokyo 2020 Summer Olympic Games were postponed until 2021 because of COVID-19 concerns and Complainants would be acquiring rights in marks reflecting that change (i.e., Tokyo 2021), then obtaining a Domain Name embodying that change might be valuable. The timing of when Respondent registered the Domain Name coupled with how he commercially exploited it on his website (both his initial website and the current one) provide a strong indication that he would not have registered the Domain Name but for the fact that he believed that it was about to be used as a trademark by Complainants. Registering the Domain Name to take commercial advantage of the rights that Respondent knew or thought would be developed in respect of the term, “Tokyo 2021” (see Glasgow 2014 Limited v. Tommy Butler,WIPO Case No. D2012-2341) is evidence of bad faith. Respondent’s bad faith in registering (and using) the Domain Name is reinforced in the interview mentioned above that Respondent gave to the Japan Times in which he stated: “I purchased this several weeks ago, before the pandemic”; “I would be willing to sell the domain if someone else is interested in it”; “I have a lot of interest since the official decision (on the postponement of the Olympics), and so I am waiting to choose the best offer”. Respondent is using the Domain Name for commercial purposes. Further, with regard to bad faith use, Complainants allege that because Internet users must enter their name and email to post comments on Respondent’s website that information may be used or sold for commercial gain (e.g., a phishing scheme). Respondent considers this assertion bizarre, “wholly unsustainable, misleading and mischievous”. While Complainants’ allegations are serious, they are wholly unsupported by evidence in the record (in the Panel’s experience, it is not uncommon for a website to require an email address for comment postings). Thus, the Panel cannot find bad faith use based on such allegations. For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied. 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 Domain Name Harrie R. Samaras
Sole Panelist
Date: June 12, 2020
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