The Complainants are The International Olympic Committee (“IOC”), Switzerland and The Tokyo Organising Committee of the Olympic and Paralympic Games (“TOC”), Japan, represented by Bird & Bird (Belgium) LLP, Belgium.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / Frank Chan, Hong Kong, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2020. On September 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 8, 2020, 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 Complainants on September 10, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on September 15, 2020, and an amendment to the Complaint on September 17, 2020. On September 15, 2020, the Center received two email communications from the Respondent. The Center verified that the Complaint together with the amended Complaint and the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on September 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 18, 2020. On September 22, 2020, the Center received an email communication from the Respondent in which the Respondent expressed its willingness to explore settlement talks. On September 29, 2020, the Center suspended the administrative proceeding until October 29, 2020, for purposes of settlement discussions concerning the disputed domain name. On October 27, 2020, the Complainants requested that the proceedings be reinstituted. The proceedings were reinstituted on October 27, 2020. On October 29, 2020, the Respondent submitted a completed settlement form. Accordingly, the Complainants requested the suspension of the proceedings on November 4, 2020. On November 4, 2020, the Center suspended the administrative proceeding for the second time until December 4, 2020. On November 16, 2020, the Complainants informed the Center that they were no longer interested in exploring settlement talks. The proceedings were reinstituted on November 16, 2020. On November 19, 2020, the Center informed the Parties that it would proceed to appoint a panel. The Center appointed Steven A. Maier as the sole panelist in this matter on November 26, 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 The Complainant IOC is a non-profit organization registered under the laws of Switzerland. It is responsible for supervising the organization of the Olympic Games. The Complainant TOC is a non-profit organization registered under the laws of Japan. It is the designated entity for the planning, organization, finance and staging of the Tokyo 2020 Olympic Games. The Complainant IOC is the owner of numerous trademark registrations for marks comprising or including the term TOKYO 2020. Those registrations include, for example, International Trademark number 1204991 for TOKYO 2020, registered on February 14, 2014, for a wide variety of goods and services, including clothing in International Class 25. The disputed domain name was registered on October 28, 2019. According to evidence submitted by the Complainants, the disputed domain name has resolved to a website at “www.tokyo2020apparel.com”. The website was headed “Tokyo 2020 Apparel – A fun way to create your own Olympic memorabilia. Let your games begin!” The website offered items of clothing and other merchandise for sale online. 5. Parties’ Contentions A. Complainant The Complainants submit that the Complainant IOC has used what it calls “host city & year” trademarks since 1896, e.g. ATHENS 1896, BEIJING 2008, and LONDON 2012 and that this formulation is well known to the public. They state that the Tokyo 2020 Olympic Games were announced in September 2013 and that their trademark TOKYO 2020 has been used extensively around the world since that date in connection with the promotion of that event. They provide evidence that they have used the trademark for commercial purposes, including the sale of merchandise at their website at “www.tokyo2020shop.jp”. The Complainants submit that as a result of these matters there is valuable commercial goodwill associated with their TOKYO 2020 trademark. The Complainants submit that the disputed domain name is identical or confusingly similar to their TOKYO 2020 trademark. They contend that the disputed domain name incorporates that trademark in its entirely, together with the term “apparel”, which will merely lead consumers to believe that it designates the Complainants’ own products. The Complainants submit that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainants state that they have never authorized the Respondent to use their TOKYO 2020 trademark, that the Respondent has not commonly been known by that name, and that the Respondent is making neither bona fide commercial use nor legitimate noncommercial or fair use of the disputed domain name. The Complainants submit that the disputed domain name was registered and is being used in bad faith. They contend that their TOKYO 2020 trademark is so well known that it is inconceivable that the Respondent could have registered it without knowledge of that trademark. They submit that, on the contrary, it is obvious that the Respondent registered the disputed domain name with the Complainants’ trademark in mind and deliberately to create a likelihood of confusion with that trademark. They submit that the Respondent has misleadingly attracted visitors to its website by misrepresenting a connection with the Complainants and then attempting to sell third-party merchandise to those visitors. The Complainants request the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In order to succeed in the Complaint, the Complainants are required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have 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. A. Identical or Confusingly Similar The Complainants have established that they have extensive and longstanding registered trademark rights in the mark TOKYO 2020. The Panel is also satisfied that the mark is widely known and associated by the public with the Complainants and their services. The Complainants’ trademark is incorporated in the disputed domain name in its entirely, together with the dictionary term “apparel”, which does not prevent the Complainant’s trademark from being recognizable within the disputed domain name. The Panel finds therefore that the disputed domain name is confusingly similar to a trademark in which the Complainants have rights. B. Rights or Legitimate Interests In the view of the Panel, the Complainants’ submissions set out above give rise to a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has not filed a formal Response in this proceeding and has not submitted any explanation for its registration and use of the disputed domain name, or evidence of rights or legitimate interests on its part in the disputed domain name, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise. There being no other evidence before the Panel of any such rights or legitimate interests, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith The Panel finds the Complainants’ TOKYO 2020 trademark to be distinctive in nature and can conceive of no reason why the Respondent could have registered the disputed domain name otherwise than to refer to that trademark. Furthermore, the use of the disputed domain name for the purposes of the Respondent’s website referred to above makes it clear beyond doubt that the Respondent registered the disputed domain name in order falsely to create an association between the disputed domain name and the Complainants’ trademark and services. The Panel further accepts the Complainants’ submissions, which the Respondent has not denied, that the Respondent has used the disputed domain name misleadingly to attract Internet users to its commercial website, where it has offered third-party goods for sale, by misrepresenting an association between that website and the Complainants. Specifically, the Panel finds that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website (paragraph 4(b)(iv) of the Policy). The Panel therefore concludes that the disputed domain name has been registered and is being used in bad faith. 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 name, Steven A. Maier
Sole Panelist
Date: December 1, 2020
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