National Collegiate Athletic Association v. Grand Slam Co.
Claim Number: FA0808001222410
Complainant is National
Collegiate Athletic Association (“Complainant”), represented by Sharon A. Ceresnie, of Loeb & Loeb LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <ncaaasports.com>, <ncaasprots.com>, <ncafootball.net>, <ncasports.com>, <wwfinalfour.net>, <wwncaasports.com>, <wwwfinal4.net>, <wwwfinalfour.net>, <wwwncaafootball.com> and <wwwncaafootball.net>, registered with Tucows Inc.
The undersigned certifies that has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 27, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 28, 2008.
On Auust 29, 2008, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <ncaaasports.com>, <ncaasprots.com>, <ncafootball.net>, <ncasports.com>, <wwfinalfour.net>, <wwncaasports.com>, <wwwfinal4.net>, <wwwfinalfour.net>, <wwwncaafootball.com> and <wwwncaafootball.net> domain names are registered with Tucows Inc. and that Respondent is the current registrant of the names. Tucows Inc. has verified that Respondent is bound by the Tucows Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On September 3, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 23, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@ncaaasports.com, postmaster@ncaasprots.com, postmaster@ncafootball.net postmaster@ncasports.com, postmaster@wwfinalfour.net, postmaster@wwncaasports.com, postmaster@wwwfinal4.net, postmaster@wwwfinalfour.net, postmaster@wwwncaafootball.com and postmaster@wwwncaafootball.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 30, 2008 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <ncaaasports.com>, <ncaasprots.com>, <ncafootball.net>, <ncasports.com>, <wwfinalfour.net>, <wwncaasports.com>, <wwwfinal4.net>, <wwwfinalfour.net>, <wwwncaafootball.com> and <wwwncaafootball.net> domain names are confusingly similar to Complainant’s NCAA or FINAL FOUR marks.
2. Respondent does not have any rights or legitimate interests in the <ncaaasports.com>, <ncaasprots.com>, <ncafootball.net>, <ncasports.com>, <wwfinalfour.net>, <wwncaasports.com>, <wwwfinal4.net>, <wwwfinalfour.net>, <wwwncaafootball.com> and <wwwncaafootball.net> domain names.
3. Respondent registered and used the <ncaaasports.com>, <ncaasprots.com>, <ncafootball.net>, <ncasports.com>, <wwfinalfour.net>, <wwncaasports.com>, <wwwfinal4.net>, <wwwfinalfour.net>, <wwwncaafootball.com> and <wwwncaafootball.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, National Collegiate Athletic Association, founded
in 1905, is an association of colleges and universities governing intercollegiate
athletics in the
Respondent registered the following disputed domain names on their respective dates: <ncafootball.net>, <wwwncaafootball.com> and <wwwncaafootball.net> on June 10, 2003; <wwwfinalfour.net>, <wwwfinal4.net> and <wwfinalfour.net> on January 3, 2003; and <wwncaasports.com>, <ncasports.com>, <ncaaasports.com> and <ncaasprots.com> on February 27, 2003.
Respondent has been the respondent in several other UDRP decisions wherein the disputed domain names were transferred from Respondent to the respective complainants in those cases. See InfoSpace, Inc. v. Grand Slam Co. c/o Jerry Stein, FA 223027 (Nat. Arb. Forum Feb. 23, 2004); see also Harrah's Las Vegas, Inc. v. Grand Slam Co., FA 114339 (Nat. Arb. Forum July 8, 2002).
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has established rights in the NCAA and FINAL FOUR marks through registration of the marks with the USPTO pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Respondent’s <ncaaasports.com>, <ncaasprots.com>, <ncafootball.net>,
<ncasports.com>, <wwncaasports.com>, <wwwncaafootball.com>
and <wwwncaafootball.net> domain names all incorporate
Complainant’s whole or misspelled NCAA mark, add the generic top-level domain
“.com,” and add generic words—spelled correctly or incorrectly—such as “sports”
and “football.” Some of the disputed
domain names also include the common prefix “www.” The Panel finds that none of the alterations
provide any meaningful distinction, since the NCAA mark is the dominant
feature, and the generic words describe activities under the mark. Therefore, the Panel finds that these
disputed domain names are confusingly similar to Complainant’s NCAA mark under
Policy ¶ 4(a)(i).
See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding
that the mere addition of the generic top-level domain “.com” is insufficient
to differentiate a disputed domain name from a mark); see also Neiman Marcus Group,
Inc. v. S1A, FA 128683 (Nat. Arb. Forum Dec. 6, 2002) (holding
confusing similarity has been established because the prefix “www” does not
sufficiently differentiate the <wwwneimanmarcus.com> domain name from the
complainant's NEIMAN-MARCUS mark); see
also Guinness UDV N. Am.,
Inc. v. Dallas Internet Servs., D2001-1055
(WIPO Dec. 12, 2001) (finding the <smirnof.com> domain name confusingly
similar to the complainant’s SMIRNOFF mark because merely removing the letter
“f” from the mark was insignificant); see
also Space Imaging LLC v.
Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where the respondent’s domain name combines the complainant’s mark
with a generic term that has an obvious relationship to the complainant’s
business).
Respondent’s <wwfinalfour.net>, <wwwfinal4.net> and
<wwwfinalfour.net> include some form of Complainant’s FINAL FOUR mark, add the generic top-level domain “.net,” and the
common prefix “www.” As mentioned
previously, none of the alterations provide any significant distinction,
since the FINAL FOUR mark is the dominant feature. Therefore, the Panel finds that these
disputed domain names are confusingly similar to Complainant’s FINAL FOUR mark
under Policy ¶ 4(a)(i). See
Katadyn N. Am. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights and
legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). This burden
requires Complainant to assert facts supporting this allegation in order to
obtain a sufficient prima facie case. Because the Panel finds that Complainant has
met this burden, Respondent is therefore compelled to prove its rights and
legitimate interests in the disputed domain names. See G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission
constitutes a prima facie case under the Policy, the burden effectively
shifts to Respondent. Respondent’s failure to respond means that Respondent has
not presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under
certain circumstances, the mere assertion by the complainant that the
respondent has no right or legitimate interest is sufficient to shift the
burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist).
The evidence before the Panel plainly works against
Respondent under Policy ¶ 4(c)(ii), in that nothing
suggests that Respondent is commonly known by the disputed domain names. The
WHOIS domain name registration information lists the registrant as “Grand Slam
Co.,” and there is no license or authority to use Complainant’s mark alleged by
Respondent. The Panel finds that Respondent
is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name
under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration
information, Respondent is not commonly known by the [<awvacations.com>]
domain name.”); see also Charles Jourdan
Holding AG v. AAIM, D2000-0403 (WIPO June 27,
2000) (finding no rights or legitimate interests where (1) the respondent is
not a licensee of the complainant; (2) the complainant’s prior rights in the
domain name precede the respondent’s registration; (3) the respondent is not
commonly known by the domain name in question).
Complainant asserts that all of the disputed domain names resolve to a website that features online wagering. The Panel finds that Respondent’s commercial use of the disputed domain name to resolve to an Internet gambling website fails as a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Imation Corp. v. Streut, FA 125759 (Nat. Arb. Forum Nov. 8, 2002) (finding no rights or legitimate interest where the respondent used the disputed domain name to redirect Internet users to an online casino).
Respondent’s <wwfinalfour.net> and <wwwfinalfour.net> domain
names include Complainant’s FINAL FOUR mark along with the common prefix
“www.” The Panel finds that this
constitutes typosquatting, in that Respondent has clearly intended to target
the Internet users who mistakenly omit the period between “www” and the domain
name. Therefore, the Panel finds that
Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(iii). See Diners Club Int’l Ltd. v.
Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum
June 23, 2003) (holding that the respondent’s <wwwdinersclub.com> domain
name, a typosquatted version of the complainant’s DINERS CLUB mark, was
evidence in and of itself that the respondent lacks rights or legitimate
interests in the disputed domain name vis á vis the complainant); see also Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum
Feb. 6, 2003) (finding no
rights or legitimate interests where the respondent merely redirected the
<wwwmedline.com> domain name to the complainant’s own website at
<medline.com>).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has been the respondent in several other UDRP
decisions wherein the disputed domain names were transferred from Respondent to
the respective complainants in those cases.
See InfoSpace,
Inc. v. Grand Slam Co. c/o Jerry Stein, FA 223027 (Nat. Arb. Forum
Feb. 23, 2004); see also Harrah's Las
Vegas, Inc. v. Grand Slam Co., FA 114339 (Nat. Arb. Forum July 8,
2002). The Panel finds that Respondent
has therefore engaged in a pattern of bad faith registration and use under
Policy ¶ 4(b)(ii).
See Australian Stock Exch. v.
Cmty. Internet (Australia) Pty Ltd, D2000-1384
(WIPO Nov. 30, 2000) (finding bad faith under Policy ¶ 4(b)(ii) where the
respondent registered multiple infringing domain names containing the
trademarks or service marks of other widely known Australian businesses); see also Caterpillar Inc. v. Miyar, FA 95623 (Nat. Arb. Forum Dec. 14, 2000)
(finding that registering multiple domain names in a short time frame
indicates an intention to prevent the mark holder from using its mark and
provides evidence of a pattern of conduct).
The Panel finds that Respondent’s hosting of an online
wagering site through the confusingly similar disputed domain names constitutes
a commercial activity that was intended by Complainant to create a likelihood
of confusion as to Complainant’s affiliation and endorsement of the disputed
domain names and corresponding website.
Therefore, the Panel finds that Respondent engaged in bad faith
registration and use under Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat.
Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its
diversionary use of the complainant's mark when the domain name resolves to
commercial websites and the respondent fails to contest the complaint, it may
be concluded that the respondent is using the domain name in bad faith pursuant
to Policy ¶ 4(b)(iv)); see also State Fair of
The Panel also finds that Respondent’s engagement in
typosquatting in regards to the <wwfinalfour.net> and <wwwfinalfour.net> domain
names constituted bad faith registration and use under Policy ¶ 4(a)(iii). See Vanguard Group, Inc. v. IQ
Mgmt. Corp., FA 328127
(Nat. Arb. Forum Oct. 28, 2004) (“By engaging in
typosquatting, [r]espondent has registered and used the <vangard.com>
domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”); see also RE/MAX Int’l, Inc. v. Seocho, FA 142046 (Nat. Arb. Forum
Feb. 25, 2003) (inferring that the respondent’s registration of the
<wwwremax.com> domain name, incorporating the complainant’s entire mark,
was done with actual notice of the complainant’s rights in the mark prior to
registering the infringing domain name, evidencing bad faith).
The Panel also finds that the clear connection between
Complainant’s collegiate sports activities and the online commercial gambling
website through the disputed domain names evidences Respondent’s opportunistic
bad faith in registering and using the disputed domain names under Policy ¶
4(a)(iii). See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221
(WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected
with the Complainants that the use or registration by anyone other than
Complainants suggests ‘opportunistic bad faith’”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <ncaaasports.com>, <ncaasprots.com>, <ncafootball.net>, <ncasports.com>, <wwfinalfour.net>, <wwncaasports.com>, <wwwfinal4.net>, <wwwfinalfour.net>, <wwwncaafootball.com> and <wwwncaafootball.net> domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: October 14, 2008
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum