As the London Olympics juggernaut grinds inexorably near approaches, legal disputes about lucrative Games-related advertising language are on the rise. Recently, these crossed into cyberspace when The London Organising Committee for the Olympic Games brought a complaint under the UDRP seeking the transfer of the domain name mylondon2012.com.
My London? Not in 2012
The Respondent, H&S Media Ltd., had registered the domain name mylondon2012.com on 6 July 2005, the same date as the International Olympic Committee announced that London's bid to host the Games in 2012 had been successful.
Shortly after registration, the Respondent parked the domain name with a parking service provider, Sedo GmbH. The latter linked the disputed domain name to a landing site, featuring links to third-party websites that generated pay-per-click advertising revenue for the Respondent.
When the Complainant learned about the registration, it sent a demand letter to the Respondent, seeking the transfer of the domain name to it on the basis that only the London Organising Committee and entities licensed by it were permitted to use representations likely to suggest an association between traders and their goods and services and the London Olympics, under the London Olympic Games and Paralympic Games Act 2006. Paras. 3 (3) and (4) and Schedule 4 of the Act identified certain combinations of words that were likely to create such an impression, including "London" and "2012".
The Respondent never replied to the Complainant's demand letter, and in March 2010 the Complainant filed a UDRP complaint before WIPO. The Respondent did not reply to the complaint, other than to file a short letter before WIPO claiming that the domain name had been registered for personal use, and was intended to host a forum for Londoners' views on the 2012 Olympics.
The London Olympic Games legislation is new territory for the UDRP, which requires that a successful complainant prove that it has rights in a trademark which is identical or confusingly similar to the disputed domain name.
The Act does not create a new form of trademark right, but rather a right to prohibit the unauthorised commercial use of certain words and combinations of words which are likely to create an association with the London Olympics. The right is in the nature of a trademark right, but is not actually one.
In this case, the panel could have avoided the point by simply finding for the Complainant on the basis that it had proved its status as a licensee of the International Olympic Committee's registered CTM and UK registrations for LONDON 2012. Panels have already accepted that a license confers a right in a trademark sufficient to found a UDRP action (see, among others, DigiPoll Ltd. v Raj Kumar, WIPO Case No. D2004-0939).
Instead, though, the Panel found that the Complainant had rights in the LONDON 2012 trademark both on the basis of its license and its rights under the Act, which it described as "a sui generis statutory right akin to a registered trade mark right" sufficient to found a UDRP action. The Panel considered that the prefix "MY" did not "detract from the overall significance of LONDON2012 within the domain name." He concluded that the domain name was confusingly similar to the LONDON 2012 trademark, in which the Complainant had rights.
The panel further found that the Respondent had no rights or legitimate interests in the domain name, and that its use of it for a pay-per-click landing page was, moreover, not bona fide commercial use because it attracted Internet users by generating consumer confusion.
From there it was no great leap to find that the domain name had been registered and used in bad faith, given its registration on the date of the London 2012 Games announcement. The Panel found that the domain name had been used intentionally to attempt to attract, for commercial gain, Internet users to its PPC landing site by creating a likelihood of confusion with the Complainant. Since the Complainant had the exclusive right to use and to license others to use the LONDON 2012 trademark, the Panel also appeared to accept that the disputed domain name had been registered for the purpose of selling it to the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket expenses related to the domain name.
The Panel therefore ordered the transfer of the domain name to the Complainant.
The domain name in this case was registered in 2005 and the action was only brought 5 years later, in 2010. It is not clear from the decision when the Complainant learned about the domain name or when its demand letter was sent.
Nevertheless, even if there had been a delay, the outcome is likely to have been the same given the Respondent's registration on the date of the announcement of London's successful bid, the use of the domain name only for a PPC landing site, and the absence of any evidence of use, or preparations to use, in respect of the alleged forum for Londoners' views on the Games.
Had there been any such evidence of use for such a forum, then the UDRP claim may well have failed, since the UDRP is intended to deal with clear cases of cybersquatting and not infringement of trademarks and other rights. The London Organising Committee, in that case, would have had to bring its action under the London Olympic Games and Paralympic Games Act before the courts.
The Panel did not address in detail the Complainant's argument that the Respondent registered the domain name for the purpose of sale to the Complainant. Indeed, the argument that the domain name must have been registered for that purpose since only the Complainant had the right to use or license use of LONDON 2012 would apply to virtually any UDRP claim brought on the basis of a registered trademark, which is in essence an exclusive right. Whether such an argument would succeed in all UDRP cases, however, is doubtful; often something more is needed to prove the Respondent's subjective intention to register for the purpose of sale.
In any event, this decision shows that the UDRP is flexible enough to accommodate something other than conventional trademark rights as a basis for a complaint. Rights in the nature of trademark rights, that work in the same way without requiring registration, are likely to be rare, though, except where common law rights are concerned.
The real significance of this decision is that it shows that the Internet is no safe harbour for those who use protected Olympic Games-related terms without authorisation. Indeed, under the UDRP, it may be easier for the London Organising Committee to enforce rights against domain names that are confusingly similar to protected terms than it would be against a trader on the High Street.
Until the Games are over, the game is likely to be over quickly for many Olympics-minded opportunistic domain name registrants.