The National Collegiate Athletic Association v. Brian Donaghy
Claim Number: FA1012001365156
Complainant is The National Collegiate Athletic Association (“Complainant”), represented by Rupen R. Fofaria of Loeb & Loeb LLP, Illinois, USA. Respondent is Brian Donaghy (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ncaasocialnetwork.com>, <ncaasocialnetworkonline.com>, <thencaasocialnetwork.com>, <ncaasocialnetwork.info>, <ncaasocialnetworkonline.info> and <thencaasocialnetwork.info>, registered with GoDaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 28, 2010; the National Arbitration Forum received payment on January 4, 2011.
On December 28, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <ncaasocialnetwork.com>, <ncaasocialnetworkonline.com>, <thencaasocialnetwork.com>, <ncaasocialnetwork.info>, <ncaasocialnetworkonline.info> and <thencaasocialnetwork.info> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 11, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 31, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@ncaasocialnetwork.com, postmaster@ncaasocialnetworkonline.com, postmaster@thencaasocialnetwork.com, postmaster@ncaasocialnetwork.info, postmaster@ncaasocialnetworkonline.info, and postmaster@thencaasocialnetwork.info. Also on January 11, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 4, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <ncaasocialnetwork.com>, <ncaasocialnetworkonline.com>, <thencaasocialnetwork.com>, <ncaasocialnetwork.info>, <ncaasocialnetworkonline.info>, and <thencaasocialnetwork.info> domain names are confusingly similar to Complainant’s NCAA mark.
2. Respondent does not have any rights or legitimate interests in the <ncaasocialnetwork.com>, <ncaasocialnetworkonline.com>, <thencaasocialnetwork.com>, <ncaasocialnetwork.info>, <ncaasocialnetworkonline.info>, and <thencaasocialnetwork.info> domain names.
3. Respondent registered and used the <ncaasocialnetwork.com>, <ncaasocialnetworkonline.com>, <thencaasocialnetwork.com>, <ncaasocialnetwork.info>, <ncaasocialnetworkonline.info>, and <thencaasocialnetwork.info> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The National Collegiate Athletic Association, was founded in 1905 as an association of colleges and universities governing intercollegiate athletics in the United States. Complainant owns the NCAA mark and has been using the mark since 1911 in connection with its athletic association services and products. Complainant also owns numerous domain names containing its NCAA mark. Complainant holds trademark registration for its NCAA mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 976,117 issued Jan. 1, 1974).
Respondent, Brian Donaghy, registered the <thencaasocialnetwork.info>, <ncaasocialnetworkonline.info>, and <ncaasocialnetwork.info> domain names on June 9, 2007 and the <ncaasocialnetwork.com>, <thencaasocialnetwork.com>, and <ncaasocialnetworkonline.com> domain names on June 8, 2007. Respondent initially used the disputed domain names to resolve to <sportsgist.com>, an online social media website for athletes. Respondent’s disputed domain names currently resolve to a directory website featuring third-party links which relate to colleges, collegiate athletics, and social networking. Some of these third-party websites directly compete with Complainant’s business and college athletics association.
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 alleges that it has established right in its NCAA mark. Previous panels have determined that a complainant can establish rights in a mark through federal trademark registration. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”). Here, Complainant holds trademark registration for its NCAA mark with the USPTO (e.g. Reg. No. 976,117 issued Jan. 1, 1974). Therefore, the Panel finds that Complainant has established rights in its NCAA mark through trademark registration according to Policy ¶ 4(a)(i).
Complainant contends that Respondent’s disputed domain names are confusingly similar to Complainant’s NCAA mark. The disputed domain names incorporate Complainant’s entire mark and differ simply by adding generic words such as “the,” “social,” “network,” and “online,” and adding the generic top-level domain (“gTLD”) “.com” or “.info.” The Panel finds that the addition of such generic words do not distinguish the disputed domain names from Complainant’s mark enough to avoid a finding of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark). The Panel also finds that the addition of a gTLD does not properly differentiate the disputed domain names from Complainant’s mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel concludes that Respondent’s disputed domain names are confusingly similar to Complainant’s NCAA mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain names. Previous panels have found that once a complainant presents a prima facie case, the burden shifts to the respondent to prove it has rights and legitimate interests under Policy ¶ 4(a)(ii). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). Here, Complainant has established a prima facie case in support of its allegations. Due to Respondent’s failure to submit a response to the Complaint, the Panel is free to assume that Respondent lacks rights and legitimate interests. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). However, the Panel will first examine the record to determine whether Respondent has rights or legitimate interests under Policy 4(c) before making a determination.
Complainant contends that Respondent is not commonly known by the disputed domain names. The WHOIS information identifies Respondent as “Brian Donaghy,” which is not similar to the disputed domain names. Complainant has never authorized Respondent to use its NCAA mark in the disputed domain names and nothing in the record indicates that Respondent is commonly known by the disputed domain names. Therefore, the Panel finds that Complainant is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Respondent previously used the disputed domain names to resolve to <sportsgist.com>, an online social media website for athletes. This site requires Internet users to create an account and provide certain personal information. The Panel finds that Respondent’s use of the confusingly similar disputed domain names to redirect Internet users to a site which competes with Complainant in the area of social networking among college athletes and Complainant’s followers is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii). See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding no rights or legitimate interests where “Respondent initially used the domain name at issue to resolve to a website where educational services were offered to the same market as that served by Complainant and only altered that use following a complaint by Complainant”); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
Respondent currently uses the disputed domain names to host a directory website with links to third-party sites, some of which directly compete with Complainant’s athletic association and services. Respondent likely receives click-through fees from these links. The Panel finds that Respondent’s use of the confusingly similar disputed domain names to post sponsored links and direct Internet users to competing websites is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
Complainant argues that Respondent attempted to sell the disputed domain names to Complainant in excess of out-of-pocket costs and attempted to work with Complainant to commercialize the domain names. Complainant alleges that once it offered to pay no more than the registration fees for the disputed domain names, Respondent indicated that he would not transfer the names. The Panel finds that Respondent’s offer to sell the disputed domain names in excess of out-of-pocket costs is evidence that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Complainant asserts that Respondent attempted to sell the disputed domain names to Complainant for more than out-of-pocket costs. Complainant maintains that via a phone conversation with Respondent, Complainant offered to purchase the disputed domain names for the price of registration fees and that Respondent refused to accept this offer, indicating that the disputed domain names were worth much more. The Panel finds that Respondent’s attempt to sell the disputed domain name to Complainant in excess of out-of-pocket costs is evidence of bad faith use and registration under Policy ¶ 4(b)(i). See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale); see also Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name).
Complainant alleges that Respondent’s use of the disputed domain names disrupts its business. Previously, the disputed domain names resolved to <sportsgist.com>, which is a social media website for college athletes. Internet users searching for Complainant might have found the <sportsgist.com> website as a result of Respondent’s use of the disputed domain names. Users may have utilized the website under the impression that the site was sponsored by Complainant, therefore potentially distracting from Complainant’s interest in generating its own social network. The Panel finds that Respondent’s use of the confusingly similar disputed domain names does disrupt Complainant’s business and is evidence of bad faith use and registration under Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”)
The disputed domain names currently resolve to a directory website featuring third-party sponsored links, some of which directly compete with Complainant’s business of college athletics. Internet users searching for Complainant’s services may find Respondent’s website as a result of the confusingly similar disputed domain names and use similar services from a competitor instead of Complainant. The Panel finds that Respondent’s use of the disputed domain names does disrupt Complainant’s business and is further evidence of Respondent’s bad faith use and registration under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Respondent uses the disputed domain names to operate a website featuring a directory of third-party links, some of which compete with services offered by Complainant’s athletic association. The Panel infers that Respondent receives click-through fees from these links. Internet users searching for Complainant’s website may instead find Respondent’s site due to the confusingly similar disputed domain name and then become confused as to Complainant’s sponsorship of, or affiliation with, the disputed domain name, resolving site, or third-party links. Respondent capitalizes from this confusion through the receipt of click-through fees. The Panel finds that Respondent’s use of the disputed domain names for profit constitutes bad faith use and registration under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ncaasocialnetwork.com>, <ncaasocialnetworkonline.com>, <thencaasocialnetwork.com>, <ncaasocialnetwork.info>, <ncaasocialnetworkonline.info>, and <thencaasocialnetwork.info> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: February 9, 2011
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