The Complainants are (i) International Olympic Committee (the “First Complainant” or “IOC”)), Switzerland and (ii) Winter Youth Olympic Games Gangwon 2024 Organising Committee (the “Second Complainant”), South Korea, jointly represented by Bird & Bird (Belgium) LLP, Belgium.
The Respondent is WhoisGuard, Inc., Panama / Patrick Baselier, Netherlands.
The disputed domain name <gangwon2024.com> is registered with Soluciones Corporativas IP, LLC (the “First Registrar”). The disputed domain name <gangwon2024.org> is registered with NameCheap, Inc. (the “Second Registrar”). These domain names are referred to collectively in this decision as the “Disputed Domain Names” and the First and Second Registrar are referred to as the “Registrars”.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2020. On November 27, 2020, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Disputed Domain Names. On November 27, and 30, 2020, the Registrars transmitted by email to the Center their verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 30, 2020, 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 December 4, 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 the Respondent of the Complaint, and the proceedings commenced on December 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 29, 2020. The Respondent did not submit any response. The Center received several emails from the Respondent which indicated he wanted to settle the dispute but the Complainants did not wish to proceed with a settlement. Accordingly, the Center notified the Parties of the Commencement of Panel Appointment.
The Center appointed Nick J. Gardner as the sole panelist in this matter on January 8, 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.
The First Complainant is an international, non-governmental organization that, since 1896, has supervised the organization of the well-known and famous Olympic Games.
The IOC has also established the Youth Olympic Games (YOG) which brings young elite athletes aged from 15 to 18 together to develop their sports skills, live out what is described by the Complainant as the Olympic values and share their experience with other young athletes from around the world. The first YOG were hosted by Singapore in 2010, and they have been held every four years since then, alternating successively every two years between the Summer and Winter Olympic Games. The 2024 Winter Youth Olympic Games are to be held in the province of Gangwon, South Korea.
The Second Complainant is the designated entity formed by the Korean Sport & Olympic Committee the Korean government and Gangwon Province to undertake all the activities related to the planning, organisation, finance and staging of the Gangwon 2024 Winter Youth Olympic Games.
To designate and differentiate each of the Olympic Games including Youth Olympic Games, the IOC has a long history of using <Host Location> <Year> trademarks in connection with the Olympic Games (e.g., ATHENS 1896, BEIJING 2008, LONDON 2012, SOCHI 2014, RIO 2016, and PEYONGCHANG 2018).
The IOC owns all rights to the Olympic Games, the Olympic symbol, the Olympic flag, motto and anthem, the word Olympic, and its <Host Location> <Year> trademarks.
There was extensive coverage in the media during 2019 as to the possible choice of Gangwon province as the venue for the 2024 Winter Youth Olympics. On January 10, 2020, the IOC announced that Gangwon province had won the right to stage the 2024 Winter Youth Olympic Games.
The Complainants own the domain names <gangwon2024.net>, <gangwon2024.co.kr> and <gangwon2024.sport>.
The First Complainant is the owner of several trademarks for a design which combines the words GANGWON 2024 YOUTH OLYMPIC GAMES with the Olympic Symbol (i.e., the five rings) – see for example international registration 1534950, registered on January 6, 2020. These trademarks are referred to in this decision as the “GANGWON 2024 trademark”.
The Disputed Domain Names were registered as follows – <gangwon2024.com>, registered on September 30, 2019, and <gangwon2024.org>, registered on November 28, 2020. They have been offered for sale at a price of USD 34,995 each.
The Complaint goes into very great detail and cites numerous previous UDRP decisions, many of which involve the First Complainant, but ultimately the Complainants’ case is straightforward and can be summarized as follows.
The Disputed Domain Names are each confusingly similar to the GANGWON 2024 Trademark.
The Respondent has no rights or legitimate interests in the term “Gangwon 2024”.
The Complainant alleges that the Disputed Domain Names were registered and are being used in bad faith. The Complainant says the fact that they were registered after it was publicly known that Gangwon was a candidate location for the 2024 Youth Olympic Games (<gangwon 2024.com>) or had been selected as the location (<gangwon2024.org>), and their subsequent offer for sale for USD 34,995 each clearly establishes bad faith, in that the Respondent clearly hoped to sell them at a price more than his acquisition costs and the most obvious and likely purchaser he would have had in mind would be the Complainants.
The Respondent did not file a Response. As indicated above he did communicate by email with the Center. The substance of that communication was set out in his email of December 20, 2020, stating as follows: “I never knew I was not allowed to register the domain names <www.gangwon2024.com> and <www.gangwon2024.org>. When I registered them I didn’t get any message of any trademark infringement. I never received a letter or email from any organization or person telling me this. Of course I am willing to cancel or transfer the domains to any complainant to avoid any administrative/financial proceedings. Just tell me how to do so?”
Preliminary Matters – no Response
The Panel notes that no Response has been received from the Respondent. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar, and in particular that a reaction was – as noted in the preceding paragraph – in fact received by the Respondent, then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any formal Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
Preliminary Matters – Respondent Identity
The Panel also notes this is a case where one Respondent (WhoisGuard, Inc.) appears to be a privacy or proxy service.
The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:
“Panel discretion
In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.
Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.”
In the present case the Panel considers the substantive Respondent to be Patrick Baselier and references to the Respondent are to that person.
Preliminary Matters – Joint Complainants
The Panel accepts the Complainants’ submission that for the purposes of this dispute that they have a specific common grievance against the Respondent and it is equitable and procedurally efficient to consolidate the claims of the Complainants. See WIPO Overview 3.0 at section 4.11.1 as follows:
“In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation.”
Preliminary Matters – multiple domain names
It is clear that the Disputed Domain Names are in the common ownership of the Respondent. It is therefore appropriate for them to be dealt with in the same complaint – paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.
Substantive Matters
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The Complainants have rights in the GANGWON 2024 trademark. Each of the trademarks is a device mark but each features prominently as part of the registered device the words GANGWON 2024 and in these circumstances the Panel concludes that each of the Disputed Domain Names is similar to GANGWON 2024 trademarks. Similarity between a domain name and a device mark which includes words or letters is a readily accepted principle where the words or letters comprise a prominent part of the trademark in question – see for example EFG Bank European Financial Group SA v Jacob Foundation WIPO Case No. D2000-0036 and Sweeps Vacuum & Repair Centre, Inc. v Nett Corp WIPO Case No. D2001-0031. It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com” and “.org”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 and WIPO Overview 3.0, section 1.11.
It does not matter for the purposes of this element that the Disputed Domain Name <gangwon2024.com> was registered before the GANGWON 2024 trademark existed – the Panel agrees with the consensus approach as explained in WIPO Overview 3.0 section 1.1.3:
“While the UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed.”
Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under the UDRP. The UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired rights. However, in such circumstances it may be difficult to prove that the domain name was registered in bad faith under the third element of the UDRP. See below as to bad faith issues.
Accordingly the Panel finds that the Disputed Domain Names are each confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Names or to use the GANGWON 2024 trademark. The Complainant has prior rights in the GANGWON 2024 trademark which precede the Respondent’s acquisition of the Disputed Domain Names. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Names and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Names (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the Disputed Domain Names – in fact, he has expressed his willingness to cancel or transfer them to the Complainant. Accordingly the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
In the present circumstances the Panel agrees with the Complainant that (i) above applies. The Respondent manifestly registered the Disputed Domain Names when the possibility of Gangwon as host location was known (<gangwon2024.co>) or had been announced (<gangwon2024.org>). He then offered them for sale at a price of USD 34,995 each which is clearly substantially more than his costs of acquisition. The Panel considers it more likely than not that he realised the Complainants invariably used the combination of “host location” “year” to identify a particular set of games, and realised that the Disputed Domain Names matched that combination and were available and hoped to sell them to the Complainants at a substantial profit, as reflected in the asking price. That is conduct as specified in paragraph 4(b)(i) of the Policy (above).
The Panel does not consider that it matters that the Disputed Domain Name <gangwon2024.com> was registered before the GANGWON 2024 trademark existed. See WIPO Overview 3.0 section 3.8.2 as follows:
“Domain names registered in anticipation of trademark rights
As an exception to the general proposition described above in 3.8.1, in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith.
Such scenarios include registration of a domain name: (i) shortly before or after announcement of a corporate merger, (ii) further to the respondent’s insider knowledge (e.g., a former employee), (iii) further to significant media attention (e.g., in connection with a product launch or prominent event), or (iv) following the complainant’s filing of a trademark application.”
The Panel considers the Respondent’s actions were manifestly in anticipation of the Complainants’ nascent trademark rights as Gangwon province had been publicly identified as a possible location for the 2024 Youth Olympic Games at the time he registered the Disputed Domain Name <gangwon2024.com>
Accordingly, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled.
In reaching this conclusion the Panel has had regard to the Respondent’s correspondence with the Center in which he says he did not realise there was anything wrong with what he did and offered to transfer the Disputed Domain Names. The Panel does not regard that correspondence as sufficient to avoid a finding of bad faith in circumstances where (a) the Respondent offered the Disputed Domain Names for sale at a very high price and (b) he has not provided a Response explaining in more detail his state of knowledge and the motivations for his actions.
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 <gangwon2024.com> and <gangwon2024.org> be transferred to the Complainant.
Nick J. Gardner
Sole Panelist
Date: January 22, 2021