Online Brand Protection is No Game for the Olympic Brand
August 5, 2016
Online brand protection is an ever-present concern for all name brands. Interestingly, in spite of the extra protections available to it, the International Olympic Committee (IOC) faces the same sets of challenges that we regularly outline in our UDRP-focused blog posts on brand trademark defense cases. So, while the Olympics is primarily about athleticism, clearly, online brand protection and promotion have become an important part of the event too.
Online Brand Protection Isn’t Just For the Athletes and Sponsors
There are many “brands” present at the Olympics events, but they are not all the same in the eyes of cybersquatters.
Gold medal-winning athletes, such as Michael Phelps, Simone Biles, and Usain Bolt, are the victims of only very minimal infringement of their personal brands via cybersquatting in new gTLDs containing their names. According to our research, these athletes all have their official sites at .com, as do the major Olympic sponsors, some of which are also new gTLD owners, such as Samsung (.SAMSUNG), Bradesco (.BRADESCO) and Bridgestone (.BRIDGESTONE). For example, Michael Phelps’ name is registered as an address in .rocks, .xyz, , and .vip; Simone Biles’ name is registered as an address in .ninja and .news; and Usain Bolt’s name is registered as an address in .land, .paris, .vip, and .xyz. Despite this, the athletes in question do not own any of these domains; fortunately, none of these domains show evidence of commercial use as the pages either don’t resolve or are simply parked with a standard homepage provided by the registrar. They’re registered, likely, in the event that the legitimate athlete might want to purchase these domains. Official Olympic Brand sponsors, meanwhile, predominantly publicize their Olympic affiliation at the event itself and not on custom websites, thus are not subject to any such cybersquatting.
On the other hand, the IOC’s concerns about online brand protection and promotion are more substantial. Fearful of “ambush marketing,” that is, when entities not officially affiliated with another entity or event puts out unofficial or misleading information that suggests a legitimate commercial relationship—and a lucrative one at that—the IOC has become notorious for policing illegitimate use of its trademarked terms, which include “Olympic,” “Olympiad,” “Citius Altius Fortius,” “Paralympic,” “Paralympiad,” “Pan-American,” “America Espirito Sport Fraternite,” plus any combination of these terms.
Limits on Olympic Brand Hashtags Might Improve Online Brand Protection
The IOC is concerned not only with domain registrations containing their trademarked terms and related phrases, but also with misuse of these on social media, in written and photo form. Indeed, in the lead up to Rio, the IOC ruffled some feathers by announcing in a letter that “Commercial entities may not post about the trials or games on their corporate social media accounts” and that “This restriction includes the use of USOC’s trademarks in hashtags such as #Rio2016 or #TeamUSA.” A Twitter search revealed that while other, recognizable brands obeyed this prohibition, both hashtags were nonetheless widely used by individual users not subject to the ban. Given that these individual users are not using these hashtags for commercial activity, their use of them is permitted in the United States, for example, under First Amendment free speech rights.
Special Online Brand Protection Tools Protect Olympic Brand
A typical brand pursuing reclaim of offending domain names will head to the World Intellectual Property Organization (WIPO) or other similar venue to pursue the Uniform Dispute Resolution Policy (UDRP), the IOC has unique tools at its disposal and to its advantage. These include:
- A U.S. statute specific to them, the Amateur Sports Act of 1978, which also established the US Olympic Committee.
- The 1981 Nairobi Treaty on the Protection of the Olympic Symbol, an international treaty administered by WIPO.
- Specific national legislation that protects the Olympic brand trademarks, such as China’s “Regulations on the Protection of Olympic Symbols,” and the 1946 Lanham Act, which, while not specific to the Olympics, serves as the major federal trademark statute of law in the United States and therefore offers protection for the Olympic brand.
It is highly unusual for a trademark to have such special protection via a statue; the only other trademarks that receive similar treatment are the Red Cross and the Red Crescent names and logos.
Online Brand Protection Still a Challenge
Still, as with other brand owners, proving illegitimate and infringing use of a mark requires proof of commercial use. As an example, one individual has, over the years, registered some 150+ domain names based on city name/year combinations that sometimes mirror an Olympics event, such as the upcoming 2020 Olympics in Tokyo (“Tokyo2020.com”). The U.S. District Judge who ruled on this recent case dismissed most of the IOC’s claims as there was no explicit evidence that the registrant was using the domain names for “trade or to induce the sale of goods or services, or for use in commerce.” Reminiscent of the rationale behind the controversial .SUCKS new gTLD, the registrant argued that the website was hosted solely to permit “A Balanced Discussion” on the event associated with the domain name in question.
The Olympic Games, a 121-year-old celebration of athleticism (while ancient, the first games held under the auspices of the IOC were in 1896), have been successfully commercialized over recent decades to the point where the Olympics brand is a highly valuable sponsorship opportunity for other companies. Though it may not be the stated purpose of the protective statutes, the practical effect of the statutes is clearly an enhanced ability of the various Olympic committees to derive revenue from these famous trademarks. In comparison, private companies, though lacking the benefit of such extraordinary trademark protection, are not left out in the cold and still have the usual enforcement tools at their disposal such as the UDRP, the URS, and traditional courtroom litigation.