March Madness Athletic Association, LLC and National Collegiate Athletic Association v. E-Desarrollo Web S.A.
Claim Number: FA0908001281462
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”),
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.
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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On
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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
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.
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
Respondent, E-Desarrollo Web
S.A., registered the <marchmadnesscontest.com>
and
<finalfourcontest.com> domain names on
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
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.
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
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.
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.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
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
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
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
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.
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
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
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
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 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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