The Complainant is International Olympic Committee (IOC), Switzerland, represented Bird & Bird (Belgium) LLP, Belgium.
The Respondent is Token Launch, Canada.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2021. On July 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 27, 2021, the Registrar transmitted by email to the Center its verification response:
(a) confirming it is the Registrar for the 1st disputed domain name;
(b) the disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint; and
(c) confirming that the language of the registration agreement is English.
The Center sent an email communication to the Complainant on July 30, 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 July 30, 2021.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .IO Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .IO Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IO 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 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 26, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 31, 2021.
On September 2, 2021, the Complainant sent an email to the Center requesting the suspension of the proceeding for purposes of settlement discussions concerning the disputed domain name. On September 6, 2021, the Center confirmed that the administrative proceeding was suspended until October 6, 2021.
On October 4, 2021, the Complainant requested to consolidate the present case withWIPO Case No. DIO2021-0014. On October 13, 2021, the Complainant requested the reinstitution of the proceeding, and filed a supplemental filing on October 14, 2021.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on October 26, 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.
On November 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response:
(a) confirming it is the Registrar for the 2nd disputed domain name;
(b) the disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint; and
(c) confirming that the language of the registration agreement is English.
4. Factual BackgroundThe Complainant is the organizer of the Olympic Games. Since 1894, it has conducted 28 Summer Olympic Games and 23 Winter Olympic Games.
It is estimated that half the world’s population watched the 2016 Summer Olympic Games held in and around Rio de Janeiro in Brazil.
In September 2013, the Complainant announced that Tokyo in Japan would host the 2020 Summer Olympic Games. In the event, the COVID-19 pandemic led to the postponement of the games. Eventually, the Summer Olympic Games were held between July 23 and August 8, 2021. Although held in 2021, these games were extensively promoted as and called the Tokyo 2020 Games. They were followed shortly after by the Tokyo 2020 Paralympic Games.
The announcement in 2013 that Tokyo was to host the 2020 Summer Olympic Games attracted a wide range of media coverage around the world. Further promotion and reference took place all around the world on an enormous scale in the lead up to and during the Games themselves.
The Complainant’s Facebook account has over 780,000 followers and its Twitter account over 6.1 million followers; its Olympics Instagram account has over 2 million followers. The Complainant’s #Tokyo2020 Twitter account has some 220,000 followers and its Instagram account 341,000 followers.
As is no doubt well-known, the motto used by the Complainant in connection with its activities and events was for many years “Citius – Altius – Fortius” (Latin for, in English, Faster - Higher - Stronger). On July 20, 2021, the Complainant announced a change to its Olympic motto to “Faster – Higher – Stronger – Together”.
Prior to the Tokyo 2020 Olympic Games, the Complainant issued, or authorised the issue of, Olympic pins – Olympic-themed trade collectibles in connection with its events. These games pins featured the name of the games; so, for example, Rio 2016 or London 2012. As the Tokyo 2020 Summer Olympic Games were conducted without live audiences from the general public, the Complainant did not issue Olympic pins for this event. Instead, it announced it would be providing Olympic-themed non-fungible tokens (NFTs) available for purchase through “nWayPlay.com”.
The Complainant owns numerous registered trademarks for OLYMPIC. Examples included in the Complaint are among others:
(a) Swiss Registered Trademark No. 621700 which was filed on September 16, 2011;
The Complainant also owns registered trademarks for TOKYO 2020 including:
(a) International Registration No. 1204991, which was registered on February 14, 2014 and designated numerous countries around the world;
(b) United States Registered Trademark No. 4662320, which was registered on December 30, 2014; and
(c) Canadian Registered Trademark No. 0925221, which was advertised on June 27, 2018.
These trademarks are all registered in International Classes 1 to 45.
The Respondent registered the 1st disputed domain name on July 18, 2021. When the Complaint was filed it resolved to an active website which offered for sale crypto tokens designated ($TKYO) and which redirected to a web page which NFTs denominated as “Tokyolympics” were being sold. Amongst other things, the website featured a banner headline “CRYPTO OLYMPIC” above the strap-line “Faster – Higher – Stronger – Together”. The banner heading is superimposed over an images of athletes bursting out of the starting blocks such as one might see in a 100 metres race. There is a depiction of a medal bearing “1”, a crown of laurel leaves and the words “World Championship”.
The Respondent registered the 2nd disputed domain name on July 27, 2021; that is, after the Complaint was filed. According to the Complainant, entering the 1st disputed domain name into a browser then redirected to a website at the 2nd disputed domain name essentially of the kind described above. At the time this decision is being prepared, the website to which the 2nd disputed domain name resolves has been altered to remove the “CRYPTO OLYMPIC” banner headline and the strap-line. Instead, there is a heading “Together We Are STRONGER” under a “button” to “Claim Rewards”, both of which are superimposed on the image of athletes bursting out of the starting blocks.
On both versions of the website, the FAQ for “What is $TKYO” stated:
“This is the people’s crypto currency as the First Crypto Champions.
Everyone should have a chance to win a gold medal, right? Now you can!
$TKYO is the people’s Crypt Champions currency token with a great NFT collection that any hodler can win!
Go for GOLD
TOGETHER we are STRONGER.”
5. Discussion and FindingsNo response has been filed. The Complaint and Written Notice have been sent, however, to the Respondent at the electronic and physical coordinates confirmed as correct by the Registrar in accordance with paragraph 2(a) of the Rules. Bearing in mind the duty of the holder of a domain name to provide and keep up to date correct WhoIs details, therefore, the Panel finds that the Respondent has been given a fair opportunity to present his or its case.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:
(a) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(c) the disputed domain name has been registered and is being used in bad faith.
A. Request for consolidationThe Complainant has requested consolidation of its Complaints against both disputed domain names now that it has emerged that both are held by the same person.
Paragraph 3(c) of the Rules expressly permits a complaint to relate to more than one domain name where all the domain names are registered by the same domain name holder.
Given the 2nd disputed domain name was only registered after the Complaint was filed and the identity of the registrant was not disclosed until the Registrar verifications were provided, the Panel considers it appropriate to permit consolidation in this case. There is no prejudice to either party by consolidation and it would not be efficient to require two separate proceedings.
B. Identical or Confusingly SimilarThe first element that the Complainant must establish is that the disputed domain names are identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of registered trademarks for OLYMPIC and TOKYO 2020. There can also be no doubt that at this point in time both trademarks are very well-known as are cognate expressions like Tokyo Olympic.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain names to the proven trademarks. This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0) , section 1.7. 1
In undertaking that comparison, it is permissible in the present circumstances to disregard the country code Top-Level Domain (“ccTLD”) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11.
1st disputed domain nameDisregarding the “.io” ccTLD, the first disputed domain name consists of the Complainant’s registered trademark OLYMPIC and the prefix “toky”. As the Complainant’s trademark remains visually and aurally recognisable within the 1st disputed domain name, this is sufficient for a finding of confusing similarity.
2nd disputed domain nameThere can be little doubt that most people seeing the 2nd disputed domain name would recognise it as a misspelling of the word “Tokyo”.
Although that is obviously a very well-known place name and does not include the “2020” element of the Complainant’s TOKYO 2020 trademarks, the Panel considers a finding of confusing similarity is in order in this case too.
As a general rule, the comparison is to be undertaken without reference to the content of the website (if any) to which the disputed domain name resolves. In cases of doubt, however, it is permissible to reference the website to ascertain if it appears that the Respondent is targeting the Complainant and its trademark. See e.g. WIPO Overview 3.0, sections 1.7, and 1.15. Having regard to the broader circumstances of the case, including the fact that the Respondent has registered another domain name clearly reproducing the Complainant’s OLYMPIC trademark (i.e.: the 1st disputed domain name), the timing of the registration of the 2nd disputed domain name, the redirection of the 1st disputed domain name to the website of the 2nd disputed domain name and the content of that website, there can be no doubt that the Respondent did register the 2nd disputed domain name to take advantage of the Complainant’s trademark. In addition, the Panel notes that the website does not have any content directed to Tokyo in Japan apart from its hosting of the Tokyo 2020 Summer Olympics.
Accordingly, the Panel finds that the Complainant has established that both disputed domain names are confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.
C. Rights or Legitimate InterestsThe second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain names.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See e.g., WIPO Overview 3.0, section 2.1.
The Complainant states that it has not authorised the Respondent to use either disputed domain name. Nor is the Respondent affiliated with the Complainant in any way.
The disputed domain names are not derived from the Respondent's name or, so far as the record in this case shows, some other name by which the Respondent is commonly known from which the disputed domain name could be derived.
Assuming in the Respondent’s favour that the Respondent (or any other person) could legitimately offer for sale cryptocurrency under or by reference to “Tokyo” without the Complainant’s permission, the 1st disputed domain name clearly seeks to convey an association with or endorsement by the Complainant as the arranger of the Tokyo Olympic Games.
Similarly, the way the 2nd disputed domain name has been used and the way the Respondent markets its product are obviously intended to convey a false representation of association with or endorsement by the Complainant and its trademarks.
This conduct does not qualify as a good faith offering of goods or services under the Policy.
Accordingly, the Panel finds that the Respondent does not have rights or legitimate interests in either disputed domain name and, as a result, the Complainant has established the second requirement under the Policy in respect of both disputed domain names also.
D. Registered or Used in Bad FaithUnder the third requirement of the Policy, the Complainant must establish that the disputed domain names have been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey LtdWIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The Panel readily infers that is the case. The 1st disputed domain name was registered shortly before the commencement of the Complainant’s Tokyo 2020 Olympic Games when media attention and public interest was increasing greatly. Furthermore, the 1st disputed domain name almost immediately started resolving to a website which blatantly sought to associate itself with the Complainant’s Tokyo 2020 Olympic Games. As noted above, the 2nd disputed domain name appears to have been registered in response to the filing of the Complaint against the 1st disputed domain name, and has been used in a similar manner to the one of the 1st disputed domain name. The inference is irresistible that the Respondent registered both disputed domain names to take advantage of the Complainant’s trademarks and reputation. The way both have been used continues that conduct by creating a false impression of an association with the Complainant. As the Respondent is not authorised by the Complainant to use the Complainant’s trademarks and is not associated with the Complainant in any way, that use is use in bad faith.
In view of the above, and noting the Respondent has not sought to claim, let alone establish, that he or she has rights or legitimate interests in the disputed domain name, therefore, the Panel finds the Respondent has registered and used both disputed domain names in bad faith.
Accordingly, the Complainant has established all three requirements under the Policy.
6. DecisionFor 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,
Warwick A. Rothnie
Sole Panelist
Date: November 10, 2021
1 Noting the substantive similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel has referred to prior UDRP cases, and the doctrine reflected in the WIPO Overview 3.0 where appropriate.