National Collegiate Athletic Association
v. 3Finteractive a/k/a Fermin Aguilar
Claim Number: FA0205000114413
PARTIES
Complainant
is National Collegiate Athletic
Association, Indianapolis, IN (“Complainant”) represented by James L. Bikoff, of Silverberg Goldman & Bikoff LLP. Respondent is Fermin
Aguilar a/k/a 3Finteractive, Albuquerque, NM (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <ncaafinalfour.org>,
registered with eNom.
PANEL
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.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on May 24, 2002; the Forum received a hard copy of the Complaint
on May 28, 2002.
On
May 28, 2002, eNom confirmed by e-mail to the Forum that the domain name <ncaafinalfour.org> is registered
with eNom and that Respondent is the current registrant of the name. eNom has verified that Respondent is bound
by the eNom 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
May 30, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of March 11,
2001 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@ncaafinalfour.org by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
June 26, 2002, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed the Honorable Charles K. McCotter,
Jr. (Ret.) as Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the 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 Forum’s Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <ncaafinalfour.org>
domain name is confusingly similar to Complainant’s registered NCAA and
FINAL FOUR marks.
2. Respondent has no rights or legitimate
interests in the <ncaafinalfour.org> domain name.
3. Respondent registered and used the <ncaafinalfour.org>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant holds U.S. Patent and
Trademark Office (“USPTO”) Reg. Nos. 976,117; 1,790,366; and 1,483,616, among
others, for the NCAA mark as listed on the Principal Register. Complainant also
owns USPTO Reg. Nos. 2,377,720; 1,792,749; and 1,786,019, among others, for the
FINAL FOUR mark as listed on the Principal Register.
Complainant has used the NCAA and FINAL
FOUR marks in tandem since at least 1977. Complainant uses its NCAA FINAL FOUR
combination of marks in conjunction with one of the premier sporting events in
the world, namely, the NCAA college basketball tournament. Complainant uses the
NCAA and FINAL FOUR marks in national and international broadcasting, licensing
and marketing promotions, and sells millions of dollars of merchandise annually
bearing the NCAA and FINAL FOUR marks. The 2000 Men’s FINAL FOUR games were
broadcast to an estimated 141 million households outside the U.S. in 119
countries while capturing nearly 40 million viewers in the U.S. alone.
Complainant operates from a large number
of websites containing the NCAA marks (e.g., <ncaafinalfour.com>,
<ncaa.org> and <finalfour.net>, among others). During the 2002 NCAA
FINAL FOUR tournament, Complainant’s website received approximately 49.6
million successful hits.
By virtue of the aforementioned extensive
use and recognition, Complainant’s marks are distinctive, famous and
internationally renowned.
Respondent registered the disputed domain
name on March 11, 2001 and directs Internet visitors to the “N.C.A.A. National
Chicano America Association” website accompanied by the words “Uniting the
Final Four” as positioned beneath the flags of the U.S., Spain, Mexico and
Puerto Rico. Complainant’s investigation has revealed that Respondent has
previously registered domain names corresponding to other well-known marks,
such as, <nmscorpions.com> (identical to the name of a minor league
hockey team in New Mexico) and <artesiadailypress.com> (identical to the
name of the Artesia, New Mexico newspaper). Respondent is not authorized or
licensed to use Complainant’s NCAA or FINAL FOUR marks.
DISCUSSION
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 the 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.
Paragraph
4(a) of the Policy requires that the 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 the
Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant has rights; and
(2) the 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 its rights in the NCAA and FINAL FOUR marks through
registration with the USPTO and subsequent continuous use.
Respondent’s <ncaafinalfour.com>
domain name is confusingly similar to Complainant’s NCAA and FINAL FOUR
marks. Respondent merely combines Complainant’s registered marks, which fails
to make a separate and distinct mark. See Nintendo
of Am. Inc v. Pokemon,
D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where the
Respondent combined the Complainant’s POKEMON and PIKACHU marks to form the
<pokemonpikachu.com> domain name); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000)
(finding that the suffix ‘.com’ fails to detract from the overall impression of
the dominant part of the name in the present case, namely the trademark SONY
and thus Policy ¶ 4(a)(i) is satisfied).
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
Because Respondent has not submitted a
Response in this proceeding, the Panel may presume it has no rights or
legitimate interests in respect of the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to
respond can be construed as an admission that they have no legitimate interest
in the domain names). Furthermore, Respondent’s failure to respond allows all
reasonable inferences made by Complainant to be deemed true. See 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”).
Respondent registered a combination of
Complainant’s famous marks, leading Internet users to a “placeholder” web page
for the “National Chicano America Association,” which provides no links or
information besides the initial picture and accompanying slogan. Due to the
famous nature of Complainant’s NCAA and FINAL FOUR marks, Respondent does not
have a legitimate interest in using the domain name <ncaafinalfour.org>
to suggest a connection with Complainant that does not exist. Respondent has
not provided the Panel with evidence of its rights or legitimate interests in
the disputed domain name, which implies that Respondent registered the domain
name in order to divert Internet users searching for Complainant’s website to
Respondent’s website. Respondent’s purported use of the domain name is
obviously pretextual. Such use is not in connection with a bona fide offering
of goods or services under Policy ¶ 4(c)(i), nor is it a legitimate
noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See
Caterpillar Inc. v. Quin,
D2000-0314 (WIPO June 12, 2000) (finding that Respondent does not have a
legitimate interest in using the domain names <caterpillarparts.com> and
<caterpillarspares.com> to suggest a connection or relationship, which
does not exist, with Complainant's mark CATERPILLAR); see also AltaVista v. Krotov, D2000-1091 (WIPO
Oct. 25, 2000) (finding that use of the domain name to direct users to other,
unconnected websites does not constitute a legitimate interest in the domain
name); see also Household Int’l,
Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (inferring
that Respondent registered the domain name <householdbank.com>, which
incorporates Complainant’s HOUSEHOLD BANK mark, with hopes of attracting
Complainant’s customers and thus finding no rights or legitimate interests).
Respondent is not an authorized agent of
Complainant, nor is it licensed to use Complainant’s NCAA or FINAL FOUR marks
in conjunction with its website. Respondent has not come forward with
information that would support an finding that it is commonly known as
“NCAAFINALFOUR” or <ncaafinalfour.org> pursuant to Policy ¶
4(c)(ii). In fact, because of the fame associated with Complainant’s NCAA and
FINAL FOUR marks, a presumption is created against Respondent being known by
these established marks. See Gallup
Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001)
(finding that Respondent does not have rights in a domain name when Respondent
is not known by the mark); see also Nike,
Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights
or legitimate interests where one “would be hard pressed to find a person who
may show a right or legitimate interest” in a domain name containing
Complainant's distinct and famous NIKE trademark).
Accordingly, the Panel finds that Policy ¶
4(a)(ii) has been satisfied.
The
strength of Complainant’s marks supports a finding of bad faith. Because
Complainant’s marks are internationally recognized, are listed on the Principal
Register of the USPTO and have been in continuous use since 1977, Complainant
had notice of Complainant’s rights in the NCAA and FINAL FOUR marks.
Respondent’s registration and use of the disputed domain name, despite
knowledge of Complainant’s preexisting rights, represents bad faith under
Policy ¶ 4(a)(iii). See Victoria’s Cyber Secret
Ltd. P’ship v. V Secret Catalogue, Inc.,
161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register
registration [of a trademark or service mark] is constructive notice of a claim
of ownership so as to eliminate any defense of good faith adoption” pursuant to
15 U.S.C. § 1072); see also Samsonite
Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding
that evidence of bad faith includes actual or constructive knowledge of a
commonly known mark at the time of registration); see also Exxon Mobil Corp. v. Fisher, D2000-1412
(WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive
knowledge of Complainant’s EXXON mark given the world-wide prominence of the
mark and thus Respondent registered the domain name in bad faith).
There
is also a general element of opportunistic bad faith present in Respondent’s
registering such famous and established marks. The NCAA and FINAL FOUR marks
are so closely associated with Complainant that it is difficult to imagine how
Respondent could have registered and used the disputed domain for anything
other than opportunistically trading on Complainant’s established marks,
thereby evidencing bad faith 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’”); see
also Sony Kabushiki Kaisha v. Inja,
Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use
where it is “inconceivable that the respondent could make any active use of the
disputed domain names without creating a false impression of association with
the Complainant”).
Additionally, Complainant’s investigation revealed
that Respondent habitually registers infringing domain names that emulate
famous marks. Respondent’s registration of domain names in order to prevent the
trademark owner from reflecting the mark in a corresponding domain name is bad
faith under Policy ¶ 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ
Assoc., FA 95234 (Nat.
Arb. Forum Aug. 17, 2000) (finding that the Respondent violated Policy ¶
4(b)(ii) by registering multiple domain names that infringe upon others’ famous
and registered trademarks); see also Am.
Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000)
(finding a bad faith pattern of conduct where Respondent registered many domain
names unrelated to its business which infringe on famous marks and websites).
The
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
should be hereby GRANTED.
Accordingly, it is Ordered that the <ncaafinalfour.org>
domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: July 3, 2002
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