national arbitration forum

 

DECISION

 

March Madness Athletic Association, LLC and National Collegiate Athletic Association v. E-Desarrollo Web S.A.

Claim Number: FA0908001281462

 

PARTIES

Complainant is March Madness Athletic Association, LLC and National Collegiate Athletic Association (“Complainant”), represented by Nathan J Hole, of Loeb & Loeb LLP, Illinois, USA.  Respondent is E-Desarrollo Web S.A. (“Respondent”), Costa Rica.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <marchmadnesscontest.com>, <march-madness-contest.com>, <finalfourcontest.com>, and <final-four-contest.com>, registered with Network Solutions, LLC.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Tyrus R. Atkinson, Jr., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 25, 2009; the National Arbitration Forum received a hard copy of the Complaint on August 26, 2009.

 

On August 26, 2009, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <marchmadnesscontest.com>, <march-madness-contest.com>, <finalfourcontest.com>, and <final-four-contest.com> domain names are registered with Network Solutions, LLC and that Respondent is the current registrant of the names.  Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 2, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 22, 2009 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@marchmadnesscontest.com, postmaster@march-madness-contest.com, postmaster@finalfourcontest.com, and postmaster@final-four-contest.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On September 28, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <marchmadnesscontest.com> and <march-madness-contest.com> domain names are confusingly similar to Complainant’s MARCH MADNESS mark.

 

Respondent’s <finalfourcontest.com> and <final-four-contest.com> domain names are confusingly similar to Complainant’s FINAL FOUR mark.

 

2.      Respondent does not have any rights or legitimate interests in the <marchmadnesscontest.com>, <march-madness-contest.com>, <finalfourcontest.com>, and <final-four-contest.com> domain names.

 

3.      Respondent registered and used the <marchmadnesscontest.com>, <march-madness-contest.com>, <finalfourcontest.com>, and <final-four-contest.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The NCAA’s MARCH MADNESS Men’s and Women’s Basketball Tournaments culminate in the FINAL FOUR championship games.  Complainant, March Madness Athletic Association, LLC (“MMAA”), currently has at least thirteen registrations with the United States Patent and Trademark Office (“USPTO”) of the MARCH MADNESS mark or marks incorporating the MARCH MADNESS mark.  (See, e.g., Reg. No. 2,425,958 issued February 6, 2001.)  Complainant, National Collegiate Athletic Association (“NCAA”), has registered the FINAL FOUR mark with the USPTO and currently holds at least fourteen registrations for, or incorporating the FINAL FOUR mark.  (See, e.g., Reg. No. 1,488,836 issued May 17, 1988.)  Complainant MMAA has granted Complainant NCAA license to use the MARCH MADNESS mark.

 

Respondent, E-Desarrollo Web S.A., registered the <marchmadnesscontest.com> and <finalfourcontest.com> domain names on January 14, 2005 and the <march-madness-contest.com> and <final-four-contest.com> domain names on March 5, 2006.  Respondent uses the disputed domain names to resolve to websites that promote Respondent’s <bracketcontest.com> domain name, which appears to be sponsored by an offshore casino.  The websites resolving from the disputed domain names all mention Complainant’s basketball tournaments and use various marks of Complainant in its content.  On the resolving website, Respondent states that the words FINAL FOUR refer only to college basketball.

 

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 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.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant has established rights in the FINAL FOUR and MARCH MADNESS marks under Policy ¶ 4(a)(i) via its registration of the marks with the USPTO (Reg. No. 2,425,958 issued February 6, 2001 and Reg. No. 2,425,958 issued February 6, 2001, respectively).  See 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).”); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).

 

The <marchmadnesscontest.com> and <march-madness-contest.com> domain names contain Complainant’s MARCH MADNESS mark, the word “contest,” and the generic top-level domain (“gTLD”) “.com.”  The Panel finds that omission of a space in the <marchmadnesscontest.com> domain name from Complainant’s MARCH MADNESS mark is irrelevant to an analysis under Policy ¶ 4(a)(i) since spaces are not allowed characters in domain names.  See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).  The Panel also finds that the addition of hyphens in the <march-madness-contest.com> domain name is insignificant in an analysis under Policy ¶ 4(a)(i).  See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”).  Likewise, the Panel finds that the addition of a gTLD is also irrelevant to a Policy ¶ 4(a)(i) analysis because a top-level domain is a required part of every domain name.  See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).  Respondent addition of the word “contest” does nothing to diminish the confusing similarity that results from using Complainant’s MARCH MADNESS mark.  Complainant uses its mark in connection with a college basketball tournament, so Respondent’s addition of “contest” has an obvious relationship to Complainant’s business.  Therefore, the Panel finds that the <marchmadnesscontest.com> and <march-madness-contest.com> domain names are confusingly similar to Complainant’s MARCH MADNESS mark pursuant to Policy ¶ 4(a)(i).  See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”).

 

The <finalfourcontest.com> and <final-four-contest.com> domain names contain either Complainant’s FINAL FOUR mark, the word “contest,” and the generic top-level domain (“gTLD”) “.com.”  The Panel finds that omission of a space in the <finalfourcontest.com> domain name from Complainant’s FINAL FOUR mark is irrelevant to an analysis under Policy ¶ 4(a)(i) since spaces are not allowed characters in domain names.  See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., supra.  The Panel also finds that the addition of hyphens in the <final-four-contest.com> domain name is insignificant in an analysis under Policy ¶ 4(a)(i).  See Health Devices Corp. v. Aspen S T C, supra.  Likewise, the Panel finds that the addition of a gTLD is also irrelevant to a Policy ¶ 4(a)(i) analysis because a top-level domain is a required part of every domain name.  See Gardline Surveys Ltd. v. Domain Fin. Ltd., supra.  Respondent addition of the word “contest” does nothing to diminish the confusing similarity that results from using Complainant’s FINAL FOUR mark.  Complainant uses its mark in connection with a college basketball tournament, so Respondent’s addition of “contest” has an obvious relationship to Complainant’s business.  Therefore, the Panel finds that the <finalfourcontest.com> and <final-four-contest.com> domain names are confusingly similar to Complainant’s FINAL FOUR mark pursuant to Policy ¶ 4(a)(i).  See Whitney Nat’l Bank v. Easynet Ltd, supra.

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Pursuant to Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent has no rights or legitimate interests in the <marchmadnesscontest.com>, <march-madness-contest.com>, <finalfourcontest.com>, and <final-four-contest.com> domain names.  If the Panel finds that Complainant’s allegations establish such a prima facie case, the burden shifts to Respondent to show that it does indeed have rights or legitimate interests in the disputed domain names pursuant to the guidelines in Policy ¶ 4(c).  The Panel finds that Complainant’s allegations are sufficient to establish a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).  Since no response was submitted in this case, the Panel may presume that Respondent has no rights or legitimate interests in the disputed domain names.  However, the Panel will still examine the record in consideration of the factors listed in Policy ¶ 4(c).  See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also 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).”). 

 

The Panel finds no evidence in the record suggesting that Respondent is commonly known by any of the <marchmadnesscontest.com>, <march-madness-contest.com>, <finalfourcontest.com>, and <final-four-contest.com> domain names.  Complainant asserts that Respondent has no license or agreement with Complainant authorizing Respondent to use the MARCH MADNESS or FINAL FOUR marks, and the WHOIS information identifies Respondent as “Desarrollo Web S.A.”  Thus, Respondent is not commonly known by any of the disputed domain names under 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 Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (“Given the Complainants’ established use of their famous VICTORIA’S SECRET marks it is unlikely that the Respondent is commonly known by either [the <victoriasecretcasino.com> or <victoriasecretcasino.net>] domain name.”).

 

Respondent is using the disputed domain names to promote the website resolving from the <bracketcontest.com> domain name, which appears to be sponsored by a casino, and provides a venue of gambling on the college basketball tournament conducted under Complainant’s MARCH MADNESS and FINAL FOUR marks.  The Panel finds this use is not in connection with 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 Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)); 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).

 

Additionally, the disputed domain names use Complainant’s MARCH MADNESS and FINAL FOUR marks on the website resolving from the disputed domain names.  The Panel finds that the overall impression is that the resolving website is part of Complainant’s official effort to promote its college basketball tournament.  The Panel finds that Respondent is passing itself off as Complainant.  The Panel finds that this is further evidence that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii), respectively.  See Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”); see also Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

The Panel finds that due to the confusingly similar nature of the disputed domain names and Respondent’s use of Complainant’s marks Internet users are likely to become confused about Complainant’s association or sponsorship of the resolving website.  The Panel infers that Respondent is attempting to profit from this confusion.  Therefore the Panel finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv).  See Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (WIPO Sept. 6, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by using the domain name <britannnica.com> to hyperlink to a gambling site); see also ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where the respondent linked the domain name to another domain name, <iwin.com>, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain).

 

Additionally, on the websites resolving from the disputed domain names, Respondent used Complainant’s MARCH MADNESS, FINAL FOUR, and other marks, giving the impression that the gambling services are actually those of Complainant when they are not.  The Panel finds that Respondent is attempting to pass itself off as Complainant.  The Panel finds that the act of Respondent passing itself off as Complainant is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”).

 

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 relief shall be GRANTED.

 

Accordingly, it is Ordered that the <marchmadnesscontest.com>, <march-madness-contest.com>, <finalfourcontest.com>, and <final-four-contest.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  October 9, 2009

 

 

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