Olympic bodies win largest-ever anti-cybersquatting award
In US Olympic Committee v 2000Olympic.com, US District Court Judge Claude M Hilton has issued an order affirming a May 2002 magistrate report and recommendation, cancelling 36 domain names and transferring another 818 to the plaintiffs - the US Olympic Committee, the International Olympic Committee and the Salt Lake Organizing Committee for the Olympic Winter Games of 2002. The decision is the largest transfer award ever issued under the Anti-cybersquatting Consumer Protection Act (ACPA).
In July 2000 the plaintiffs filed a lawsuit in the US District Court for the Eastern District of Virginia against 1,800 domain names registered by entities located outside of the United States. The plaintiffs invoked the in rem provision of the ACPA, which provides trademark owners with a remedy against domain name registrants when personal jurisdiction is not available. Under the in rem provision, a trademark owner may bring an action for transfer or cancellation of a domain name in the federal district where the registrar or registry operator is located. The plaintiffs also sued under the Ted Stevens Olympic and Amateur Sports Act, a statute granting exclusive control over OLYMPIC symbols and marks to the US Olympic Committee.
Nearly two years after the filing of the lawsuit, Magistrate Judge Welton C Sewell issued a report and recommendation that granted default judgment against 854 of the domain names. The owners of the domain names resided in 53 different countries. According to Sewell, the domain names falsely suggested an association with the OLYMPIC marks and confusion could ultimately harm the goodwill associated with those marks. Further, he found that "considering the fame, value and importance of the [Olympic marks], a mere analysis of the domain names themselves reveals that a bad-faith intent existed on the part of the registrants".
One registrant, Michael Dircks, filed an objection to Sewell's report. Under a de novo review of the evidence, Hilton adopted the findings and recommendation of Sewell. Of the 1,800 domain names originally named in the lawsuit, only 45 domain names remain.
The case, possibly the most complex domain name dispute proceeding filed in federal court, demonstrates that trademark owners can successfully use the in rem provision of the ACPA to bring a single action against a large number of domain names owned by entities located outside of the United States.
James L Bikoff and Patrick L Jones, Silverberg Goldman & Bikoff LLP, Washington DC
Copyright © Law Business ResearchCompany Number: 03281866 VAT: GB 160 7529 10