National Collegiate Athletic Association v. My Team Rivals
Claim Number: FA1002001308235
Complainant is National Collegiate Athletic Association (“Complainant”), represented by Rupen
R. Fofaria, of Loeb & Loeb LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <ncaacomplete.com>, registered with Tucows 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 16, 2010; the National Arbitration Forum received a hard copy of the Complaint on February 17, 2010.
On February 17, 2010, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <ncaacomplete.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows Inc. 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 February 24, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 16, 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@ncaacomplete.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 24, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant has registered its NCAA mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 976,117, issued January 1, 1974).
Complainant uses the mark in connection with various intercollegiate athletic association services and related products since as early as 1911.
Complainant also uses the mark in connection with athletic programs at the collegiate level and to disseminate information with reference to collegiate sports and athletic activities.
Complainant operates numerous websites, including, but not limited to, <ncaa.com>, <ncaa.org>, <ncaasports.com>, <ncaafootball.com>, <ncaafootball.net>, <ncaafinalfour.com>, and <ncaafinalfour.org>.
Respondent is not licensed or otherwise authorized to use the NCAA mark.
Respondent registered the disputed domain on August 25, 2009.
The disputed domain name resolves to a website with posted articles and blogs from third parties, including sports media websites, news and discussion of Complainant’s sports.
Respondent’s website posts also include betting odds, or lines, for football games, which information is often used to place wagers for sporting events.
Respondent’s <ncaacomplete.com> domain name is confusingly similar to Complainant’s NCAA mark.
Respondent does not have any rights to or legitimate interests in the domain name <ncaacomplete.com>.
Respondent registered and uses the <ncaacomplete.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant’s registrations of its NCAA mark with the USPTO is sufficient to establish its rights in the mark pursuant to Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding that a complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that a complainant had established rights in its asserted marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO).
Respondent’s <ncaacomplete.com> domain name is confusingly similar to Complainant’s NCAA mark because the domain name incorporates the dominant features of Complainant’s mark, and merely adds the generic term “complete” and the generic top-level domain “.com.” Such minor alterations to the mark do not avoid confusing similarity between the mark and the domain name under Policy 4(a)(i). See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Nat. Arb. Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter a disputed domain name to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to a complainant’s DISNEY mark because it incorporated the entire mark and merely added two generic terms to it).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights to or legitimate interests in the disputed domain name. The burden to establish that Respondent has rights to or legitimate interests in the disputed domain name shifts to Respondent once Complainant has made out a prima facie case in support of allegations to the contrary. 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 pursuan to paragraph 4 (a)(ii) of the
Policy.
Complainant has established a prima facie case under this head of the Policy, thus shifting the burden to the Respondent. In light of Respondent’s failure to respond to the Complaint in these proceedings, we are free to conclude that Respondent has no rights or interests in the contested domain name. See G.D. Searle v Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):
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).
Nonetheless, we will examine the evidence of record, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has any rights to or interests in the contested domain name which are cognizable under the Policy.
We begin by observing that the WHOIS information for the <ncaacomplete.com> domain name lists the registrant only as “My Team Rivals”, which does not resemble the subject domain name. Further, Complainant asserts, and Respondent does not deny, that Respondent is not licensed or otherwise authorized to use the NCAA mark. There being no other pertinent evidence in the record, we are constrained to conclude that Respondent is not commonly known by the disputed domain name, nad therefore has no claim to rights or interests in the disputed domain within the meaning of Policy ¶ 4 (c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights or legitimate interests in the domain name <emitmortgage.com> where that respondent was not authorized to register domain names featuring a complainant’s mark and failed to submit evidence that it was commonly known by the domain name); see also Foot Locker Retail, Inc. v. Gibson, FA 139693 (Nat. Arb. Forum Feb. 4, 2003): “Due to the fame of Complainant’s FOOT LOCKER family of marks . . . and the fact that Respondent’s WHOIS information reveals its name to be ‘Bruce Gibson,’ the Panel infers that Respondent was not ‘commonly known by’ any of the disputed domain names prior to their registration, and concludes that Policy ¶ 4(c)(ii) does not apply to Respondent.”
We also note that there is no dispute as to Complainant’s assertion that the disputed domain name resolves to a web directory containing links to Respondent’s blogs and to third-party websites which include sports media websites providing news and discussion of Complainant’s sports, as well as posts of betting odds, or lines, for wagering on football games played under the auspices of Complainant. Respondent’s use of the <ncaacomplete.com> domain name, as alleged, is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain under Policy ¶ 4(c)(iii). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent failed to offer goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that a respondent’s diversionary use of a complainant’s marks to send Internet users to a website which displayed links, some of which resolved to that complainant’s business competitors, was not a bona fide offering of goods or services).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
The disputed domain name resolves to a website containing links to third-party websites unrelated to the business of Complainant, but also displays posts of betting odds, or lines, for wagering on football games played under the auspices of Complainant. Internet users interested in Complainant and Complainant’s services, may thus become confused as to the possibility of Complainant’s sponsorship of or affiliation with the resolving websites. Respondent evidently attempts to profit from this confusion by including gambling-related content, presumably receiving referral fees for redirecting traffic to third-party sites. Respondent’s registration and use of the <ncaacomplete.com> domain name for this purpose creates a likelihood of confusion with the Complainant’s mark and evidences bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that a respondent’s use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because that respondent presumably benefited commercially by receiving click-through fees for diverting Internet users to unrelated third-party sites); see also Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003): “Respondent has attempted to commercially benefit from the misleading <qwestwirless.com> domain name by linking the domain name to adult oriented websites, gambling websites, and websites in competition with Complainant. Respondent’s attempt to commercially benefit from the misleading domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”
In addition, it appears that Respondent registered the <ncaacomplete.com> domain name
with at least constructive knowledge of Complainant’s rights in the NCAA trademark
by virtue of Complainant’s prior registration of that mark with the United
States Patent and Trademark Office.
Registration of a confusingly similar domain name despite such
constructive knowledge is, without more, evidence of bad faith registration and
use of the domain name pursuant to Policy ¶ 4(a)(iii). See Digi
Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb.
Forum Oct. 4, 2002).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <ncaacomplete.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 7, 2010
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