National Collegiate Athletic Association v. 3Finteractive a/k/a Fermin Aguilar
Claim Number: FA0205000114413
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.
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 (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 firstname.lastname@example.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.
Complainant requests that the domain name be transferred from Respondent to 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.
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.
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.
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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