London Olympics Association Right plays role in cybersquatting case

United Kingdom
In The London Organising Committee of the Olympic Games and Paralympic Games Ltd v H&S Media Ltd (Case D2010-0415, April 29 2010), a World Intellectual Property Organization (WIPO) panel has ordered the transfer of the domain name 'mylondon2012.com' to The London Organising Committee of the Olympic Games and Paralympic Games Ltd (LOCOG). This cybersquatting case is significant in that it is based on the London Olympics Association Right, as well as trademark rights.
 
H&S Media Ltd registered the domain name 'mylondon2012.com' on the day London won the bid to host the 2012 Olympics. The domain name was parked with a revenue-generating parking site. LOCOG requested that the domain name be transferred from H&S Media to it free of charge. H&S Media contended that the domain name was registered for personal use and intended as a daily blog by a 'citizen journalist' during the London Olympics.

LOCOG lodged a domain name complaint with WIPO under the Uniform Domain Name Dispute Resolution Policy, but H&S Media made no formal response. The complaint was based on the rights licensed by the International Olympic Committee to use its Community and UK registrations in respect of LONDON 2012. In addition, LOCOG is entitled to the London Olympics Association Right, which is a sui generis statutory right under the London Olympic Games and Paralympic Games Act 2006 to prevent the use of any representation that is likely to suggest an association between the London Olympics on the one hand, and goods or services on the other.
 
On the issue of confusing similarity, the panel accepted LOCOG's right to use and earlier rights in the LONDON 2012 marks. The sui generis London Olympics Association Right was also held to be sufficient basis for a complaint. When comparing 'mylondon2012' with the LONDON 2012 marks, the addition of the word 'my' did not detract from the overall significance of LONDON 2012. The domain name was thus confusingly similar to LONDON 2012.

LOCOG further submitted that H&S Media was not commonly known by the domain name 'mylondon2012' and that it was not using the domain name for a good-faith offering of goods or services, nor had it made any preparations to do so. There was no nexus between H&S Media and the Olympics and, therefore, H&S Media had no rights or legitimate interest in the domain name.                               
                                                               
On the balance of probabilities, the fact that H&S Media had directed the domain name to a pay-per-click site inferred intention to attract internet users for commercial gain, which amounted to bad faith. The panel thus ordered the transfer of the domain name to LOCOG.
 
Cheng Tan, McDermott Will & Emery UK LLP, London

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