National Collegiate Athletic Association v. WW Web Ventures Inc.
Claim Number: FA1002001308393
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 <ncaashop.com>, registered with In2Net Network, Inc.
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.
Mr. Maninder Singh 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 19, 2010, In2Net Network, Inc. confirmed by e-mail to the National Arbitration Forum that the <ncaashop.com> domain name is registered with In2Net Network, Inc. and that the Respondent is the current registrant of the name. In2Net Network, Inc. has verified that Respondent is bound by the In2Net Network, 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, 2010 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on March 15, 2010.
An Additional Submission was received from Complainant on March 22, 2010. The Additional Submission was compliant with Supplemental Rule 7.
On 30.03.2010 the panelist has received the response dated 28.03.2010 of the respondent to the additional submissions filed on behalf of Complainant.
In the meanwhile, on 24.03.2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mr. Maninder Singh as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
It is the case set up by the Complainant that the National Collegiate Athletic Association (“NCAA”), founded in 1905, is an Association of Colleges and Universities governing Intercollegiate Athletics in the United States. The NCAA has been using its NCAA Marks since 1911 in connection with its various intercollegiate athletic association services and since then has expanded its use of the NCAA Marks to various kinds of related goods and services, including Internet services. In this regard, the Complainant has relied upon a Chart and a few registrations which have been marked as Exhibit D to the present Complaint. It has also been contended by the Complainant that many of its NCAA marks having been used since 1911 are incontestable, which also serve as conclusive evidence of its exclusive rights to use the marks such as registration no.976117, 1790366, 183616 and 1728508.
The Complainant contends that NCAA also owns several domains incorporating its NCAA Marks, including, but not limited to, (1) <ncaa.com>, (2) <ncaa.org>, (3) <ncaasports.com>, (4) <shopncaasports.com>, and (5) <ncaa.com/shop>. In its additional response, the complainant has also stated that it had registered <ncca.org> in 1994 and <ncca.com> in 1997, and has sold goods, including apparel, through these domains.
Complainant states that over the years, the NCAA, its licensees, and its
corporate partners have invested heavily in marketing products and services
under the NCAA Marks, devoting many millions of dollars marketing products and
services through a variety of media, including but not limited to, television,
radio, magazines, newspapers and the Internet. Consequently, the NCAA has sold many
millions of dollars worth of products and services under its NCAA Marks. As a
result of the NCAA’s marketing and sales success, the NCAA Marks are considered
to be famous trademarks which are immediately recognizable as identifying the
NCAA, its member institutions and corporate partners, as well as NCAA-licensed
goods and related products and services in the
The Complainant further contends that NCAA has recently learnt that Respondent herein had registered <ncaashop.com> (“Disputed Domain” or “Respondent’s Website”) and is using the site to link visitors to competitors of the NCAA and its corporate partners. Specifically, in addition to completely subsuming the NCAA mark in the domain itself, the Respondent’s Website prominently displays the “NCAA” mark as the largest and most prominent portion of the title of the NCAAShop.com website, called out in the top-left corner of the page (as well as throughout the website’s various links). In the website itself, visitors are told that they can “Buy Official NCAA Team Merchandise Now!” on the homepage of Respondent’s Website. In reality, when a visitor clicks a link on Respondent’s Website, the visitor is redirected to another site, such as <bigsportsshop.com> or <teamstore.com> (“Linked Sites”). Neither of the Linked Sites is owned or affiliated with the NCAA (or its licensees or corporate partners). Without authorization, Respondent also links to the NCAA’s media rights partner, CBS, as it sends visitors to the CBS Sports Store, including through the “College World Series,” “Final Four Gear,” and “Frozen Four Gear” links on its homepage. Finally, Respondent is linking to stubhub.com when visitors click the link for “tickets.” To substantiate, Complainant has attached as Exhibit-E certain print-outs demonstrating Respondent’s use of the Disputed Domain.
Respondent is monetizing the website for itself, including by making commissions as an affiliate for some of the sites to which it links, and is redirecting potential sales to competitors of the NCAA and its corporate partners.
The Complainant alleges that the Disputed Domain is confusingly similar to Complainant’s NCAA Marks. It completely subsumes Complainant’s NCAA mark, and merely adds the generic word “shop” and the .com top-level domain (“TLD”). Neither the addition of the generic word “shop” nor the addition of the generic TLD “.com” distinguishes the Disputed Domain from Complainant’s NCAA Marks. It is well-settled that the addition of a generic term to a trademark is insufficient to overcome a finding of confusing similarity, especially where that generic term is related to a complainant’s business. In this regard the Complainant relies upon the following decisions :
(i) Am. Int’l Group, Inc. v. santiventures.com c/o jan Wewell, FA 1298761 (Nat. Arb. Forum Jan. 28, 2010) (“The Panel finds that a disputed domain name that adds a generic term with an obvious relationship to Complainant’s business creates a confusing similarity between the disputed domain name and Complainant’s mark.”);
(ii) March Madness Athletic Ass’n, LLC and Nat’l Collegiate Athletic Association v. E-Desarrollo Web S.A., FA 1281462 (Nat. Arb. Forum Oct. 9, 2009) (“Respondent[‘s] 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.”);
(iii) 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 Complainant further contends that the Respondent is not authorized by it to register or use domain names that include the NCAA Marks, and it is clear from a review of the relevant facts that Respondent lacks rights or legitimate interest in the Disputed Domain.
It is the case of the Complainant that the Disputed Domain is an active website which confuses visitors into believing it is authorized by or affiliated with Complainant and offers links that drive traffic to websites that are competitive with Complainant. It is further the case of the Complainant that although the NCAA has recognized CBS as its official broadcast and online partner and the website <cbssports.com> as the official online partner website but the Respondent links to <cbssports.com> without its authorization. The NCAA has authorized RazorGator to resell NCAA tickets, yet Respondent links to a different entity for this service, <stubhub.com>.
It is further the contention of the Complainant in the Complaint that there is nothing to suggest that Respondent is currently known, or has ever been known, as “NCAA Shop” or any variation thereof. As indicated in the WHOIS records for the Disputed Domain, Respondent’s name is WW Web Ventures, Inc., not NCAA Shop. Given the fame and distinctive nature of Complainant’s NCAA Marks, it would be nearly impossible for Respondent to claim to be “commonly known by” any derivative of any of the NCAA Marks. In this regard, the Complainant has placed reliance upon the following decisions:
(i) March Madness Athletic Ass’n, LLC and Nat’l Collegiate Athletic Ass’n v. E-Desarrollo Web S.A., FA 1281462 (Nat. Arb. Forum Oct. 9, 2009) (finding no legitimate interest where respondent was not known as March Madness Contest or Final Four Contest but had registered domains comprised of those names);
(ii) 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);
(iii) Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 29, 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);
(iv) Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO March 17, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trade name).
The Complainant contends that the Respondent’s lack of legitimate interest in the mark is further established by the fact that its use of the Disputed Domain has been in bad faith. The Complainant further contends that Administrative panels in the following decisions have found that “bad faith use of a domain name does not establish rights or legitimate interests in terms of paragraph 4(a)(ii) of the Policy.”:
(i) March Madness Athletic Ass’n, LLC and Nat’l Collegiate Athletic Ass’n v. E-Desarrollo Web S.A., FA 1281462 (Nat. Arb. Forum Oct. 9, 2009); Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006). Specifically, Respondent is using the site to drive traffic to affiliate sites for its commercial gain. Such use is not in connection with a legitimate noncommercial or fair use.
(ii) Microsoft Corp. v. Prabhjot Singh, FA 1299084 (Nat. Arb. Forum Feb. 2, 2010) (“Respondent’s registration and use of the disputed domain name to link Internet users to websites featuring third-party links and [to] profit through the receipt of click-through fees, thus creating a strong likelihood of confusion with Complainant’s BING trademark, is evidence of bad faith);
(iii) 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));
(iv) 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 where that respondent presumably benefited commercially by receiving click-through fees for diverting Internet users to unrelated third-party websites).
It is the submission of the Complainant that the Respondent had registered the Disputed Domain with full knowledge of Complainant’s NCAA Marks. At the time Respondent registered the Disputed Domain, Complainant had been using the NCAA Marks for more than 50 years. The NCAA Marks of the Complainant were famous long before Respondent’s registration of the Disputed Domain. Respondent clearly and intentionally took Complainant’s NCAA Marks, added the word “shop” to the end, and registered the Disputed Domain. The Complainant relies upon the decision in the - March Madness Athletic Ass’n, LLC and Nat’l Collegiate Athletic Ass’n v. E-Desarrollo Web S.A., FA 1281462 (Nat. Arb. Forum Oct. 9, 2009) (“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.”); The Complainant has also placed reliance on the decision of WIPO in - Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith).
The Complainant states that it is a settled law that the registration and use of a domain name that is obviously connected to a complainant’s trademarks – as is the case here – by a respondent who has no connection to the complainant suggests “opportunistic bad faith.” The complainant places reliance on the decision of WIPO in - Glaxosmithkline Biologicals S.A. v. David Pfeffer, Jemm Prod., D2005-0441 (WIPO June 15, 2005) (quoting Motion Limited v. Dustin Picov, D2001-0492 (WIPO June 25, 2001)).
The Complainant alleges that the Respondent is using a domain that visitors would have no choice but to assume is connected or affiliated with, or sponsored or authorized by, Complainant, when that is not the case. Thus, Respondent is engaging in “opportunistic bad faith” through its registration and use of <ncaashop.com>.
It has contended that it has already been held that the registration and use of a domain name to redirect users, via use of links, to competitors of a complainant, is a bad faith use. To substantiate this, the Complainant relies upon the following decisions:
(i) Direct Line Ins. PLC v. Forsyte Corp., FA 295733 (Nat. Arb. Forum Jan. 15, 2010) (holding that respondent's registration and use of disputed domain name to link users to various commercial links, including to complainant's competitors, constitutes a disruption of complainant's business and bad faith registration and use pursuant to Policy 4(b)(iii));
(ii) Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982(Nat. Arb.Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a website containing commercial links to the websites of a complainant's competitors represents bad faith registration and use under Policy 4(b)(iii));
(iii) Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant's competitors);
Univ. of on
(v) Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant's mark to offer links to third-party websites that offered services similar to those offered by the complainant). Respondent’s practice of linking to competitors of Complainant, including sites which compete with <cbssports.com> and Razor Gator, is evidence of Respondent’s bad faith registration and use of the Disputed Domain.
The respondent in his response to the complaint has stated that:
The respondent in its response has contended that the complainant’s claims are unfounded, and the domain name should remain in the same ownership as it has been since it was first registered in 2002, as it has been used as a functioning website throughout its existence.
It is the case of the respondent that despite assumptions of the complainant (aka. the NCAA), the domain name in question was never registered for any reason other than it simply provides a valid description of what the website is, and what it does. To substantiate this, the respondent argued that it is a website for people to purchase college team merchandise, which is exactly what it has been since the day it was launched in 2002. While justifying as to why the website was so named, the respondent contends that since it is simply a website to SHOP for NCAA team merchandise, this name was chosen for the website.
The respondent claims that their website makes no attempt to portray itself as an “official NCAA website”. The respondent contends that the footer page of the website even states “This web site is not affiliated with the NCAA or any of the NCAA teams”.
The respondent admits that the website uses the line in the graphical header “Buy Official NCAA Team Merchandise Now”. The respondent claims that the website in fact offers officially licensed merchandise through its partner companies. The respondent further claims that the products which are available through the website are not knock-offs, they are made by officially licensed manufacturers and suppliers – the tag line is an applicable and valid description and that’s the only reason it’s there.
The respondent in his response contends that although in section 5 of the NCAA’s complaint, Complainant argues that the website in question links to the CBS Sport Store and StubHub “without authorization” but, as an APPROVED affiliate of those companies’ programs, the respondent claims to have the authorization from them to link and offer their products. Further, any internet website has the right to hyperlink anywhere that it chooses – that is the entire basis of the internet.
The respondent alleges that the complainant has attempted to infer that several of its web properties were copied or mimicked by NCAAShop in bad faith. The respondent alleges that while at pg.5 of the complaint, the complainant specifically lists “ncaasports.com”, “shopncaasports.com” and “ncaa.com/shop” as its web properties where they conduct ecommerce activities, however, it has chosen not to discuss that all these 3 websites were in fact not selling any merchandise in Nov. of 2002, when NCAAShop was launched. It claims that NCAASports.com was started in March of 2003, Shopncaasports.com in May 2003 and NCAA.com has sold merchandise only for the last few years. The respondent contends that seeing as NCAAShop pre-dated all NCAA online merchandising efforts, there is clearly no case of any attempts to mimic official NCAA e-commerce operations as it’s not possible to copy something that didn’t exist at the time.
The respondent claims that complainant’s contention that NCAAShop.com is utilizing the NCAA logo, is untrue. The website simply utilizes standard font style white letters, in conjunction with similar yellow letters for the word “shop” within the logo. The NCAA doesn’t have the ability to assume any and all white lettering and font style is the property of the NCAA. Further, the official NCAA logo is not utilized anywhere on the NCAAShop website. In order to substantiate this, the respondent has contended for comparison of the 2 logos for true appreciation of its argument.
The respondent claims that at no point of time they have we made any attempt to own or operate the NCAAShop domain in bad faith. The respondent contends that bad faith would involve one or all of the following:
(1) Parking the domain name and never building a functioning website around it. That is not the case here, as can be verified utilizing WaybackMachine.com where you can see a functioning website has constantly existed since 2002. Refer to the attached screenshots for further reference, outlining historical versions of the website.
(2) Making any attempt to sell the domain name to the NCAA. This has never been done. In fact, over the years, several email inquiries have been received with attempts to purchase the domain name. These requests were not responded to as the company never had any intention of selling the domain to the NCAA, or any other parties. If NCAAShop was operated in bad faith, the intention all along would have been to sell the domain name to the NCAA.
(3) Purposely purchasing a domain name that was similar to an existing NCAA online storefront. NCAAShop went online in November of 2002. Considering the NCAA never even sold online until the middle of 2003, there was clearly never an attempt to duplicate an existing NCAA ecommerce venture. NCAAShop online operations pre-date anything the NCAA ever did.
(4) Building a website design that emulates legitimate NCAA web properties. At no point in the website’s history was this done. NCAAShop has utilized 2 distinct designs over the course of its history, neither of which was or is similar to the designs and layouts of any official NCAA websites. Please refer to the various website views in the attached pages for reference. As you can see, our website layouts and designs never duplicated anything done by the NCAA.
C. Additional Submissions
In its additional submissions to the response of the complainant to the complaint, the Complainant has stated the following :
Respondent does not contest that Complainant has valid prior trademark rights in the NCAA Marks (as defined in Complainant’s Complaint), nor does it dispute that it had knowledge of Complainant’s NCAA Marks prior to the registration of <ncaashop.com>.
been using its famous NCAA mark since 1911 in connection with its annual
basketball tournaments and related merchandise, including apparel. As
previously detailed in Complainant’s Complaint, Complainant has obtained
Respondent attempts to avoid a finding of confusion similarity between <ncaashop.com> and Complainant’s NCAA Marks based on the inclusion of a disclaimer in, as Respondent terms it, a “website footer.” This inconspicuous notion is inadequate to avoid confusion. Respondent’s disclaimer appears in a font smaller than that of any other text on his website. Moreover, it does not appear on the initial screen when a viewer navigates to Respondent’s website. Instead, the viewer is first greeted with the large, bold-letter NCAAShop title and, in order to view the disclaimer, the viewer must scroll further down to the very bottom of the page.
Even if the disclaimer were larger and appeared at the top of the page, it would not mitigate confusion with Complainant’s NCAA Marks. Panels have frequently held that the addition of a disclaimer cannot resolve initial interest confusion and does not resolve questions in a visitor’s mind regarding sponsorship. See Am. Girl, LLC and Am. Girl Brands, LLC v. George Rau, FA 1271493 (Nat. Arb. Forum August 13, 2009) (finding that Respondent’s use of a disclaimer does not mitigate confusion as to Complainant’s sponsorship of the website); AOL LLC v. shayzone c/o Master User, FA 1241368 (Nat. Arb. Forum February 20, 2009) (“A disclaimer is something that Internet users find only after they have accessed the site. The Panel finds the disclaimer is irrelevant to the appropriate result here.”); Disney Enter., Inc. v. HB Concepts LLC, FA 1241904 (February 16, 2009) (finding that inclusion on Respondent’s site of a disclaimer stating that “disneyworld-rental-home.com is NOT affiliated with The Walt Disney Company in any way” did not detract from the confusing similarity between the mark and the domain name); AltaVista Co. v. AltaVisa, FA 95480 (Nat. Arb. Forum Oct. 31, 2000) (finding that since a disclaimer does not, and could not, accompany the domain name, then the “domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the disclaimer”); DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, when the domain name consists of the complainant’s well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by the complainant).
Respondent’s claims that it is not using the NCAA logo, while true, is of no import. Complainant has asserted, and Respondent does not dispute, that Respondent is using Complainant’s “NCAA” mark. Respondent is making such use within its domain name and at the top-left corner of its website, where the title “NCAAShop” appears. Respondent’s claim that “NCAA doesn’t have the ability to assume any and all white lettering and font style is the property of the NCAA” is misguided, as the use Respondent is making is clearly a trademark use that violates Complainant’s longstanding rights in its “NCAA” mark. The NCAA owns numerous standard character word mark registrations for its famous “NCAA” mark, and has every right – indeed, a duty imposed by law – to police unauthorized use, such as Respondent’s.
Respondent’s claim that “NCAAShop pre-dated all NCAA online merchandising efforts” is also false. As the U.S. Patent and Trademark Office records show (which were provided as Exhibit D to Complainant’s Complaint), Complainant has sold goods, including apparel, online since well before Respondent’s admitted November 2002 launch date. Complainant has made these sales under or in connection with its federally registered “NCAA” mark. Specifically, Complainant owns U.S. Trademark Reg. No. 3,460,675, covering “retail and online retail gift shop services”, which is conclusive evidence of Complainant’s online sales since at least 1994.
Respondent makes this erroneous priority claim to argue the irrelevant point that its website has not copied the look and feel of the NCAA’s numerous websites. Complainant does not make any such “plagiaristic” argument. Instead, Complainant provided the Board with its many prior uses of the NCAA mark, which includes uses online. As such, and as discussed herein, Respondent’s use of Complainant’s mark as the dominant part of the <ncaashop.com> domain tends to cause confusion with Complainant’s longstanding rights in the NCAA mark. This is all that is required for Complainant to prove.
Respondent’s assertion that he has a legitimate interest in the <ncaashop.com> domain is false and not supported by the record.
Respondent is not an authorized affiliate of the NCAA or any NCAA corporate partners, such as CBS. The NCAA has licensed to CBS Interactive (and <cbssports.com>) certain rights related to NCAA intellectual property, and as part of CBS Interactive’s business, it then authorizes affiliates to use such licensed intellectual property. Respondent has claimed that it is an “APPROVED affiliate” of the CBS Sports Store at <cbssports.com>. As explained in the Declaration of Michael T. Merhab, attached hereto as Exhibit 1, CBS Interactive Inc.’s sports division, which is the CBS business unit responsible for managing, controlling, and hosting <cbssports.com>, has affirmatively stated that it has no affiliation with WW Web Ventures, Inc. or <ncaashop.com>, and in fact WW Web Ventures, Inc. and <ncaashop.com> have never been an “APPROVED affiliate” of <cbssports.com>.
Similarly, Respondent’s argument that the domain is registered simply to provide a “valid description of what the website is, and what it does” is unsupported by Respondent’s own conduct and contrary to the well-settled law of this Forum. Respondent is using Complainant’s registered “NCAA” trademark in connection with a domain that necessarily suggests to viewers that it is a legitimate or authorized domain that is connected or affiliated with Complainant. Respondent’s claimed need to use NCAA is undermined by Respondent’s own ability to provide a description of its services without using the “NCAA” mark. Specifically, Respondent explains of its website: “Namely, a website for people to purchase college team merchandise ….” Respondent seems to acknowledge that “college” or “college team” is a more appropriate descriptive term throughout the website. The fact that Respondent could use a term other than Complainant’s “NCAA” trademark is further supported by uses throughout Respondent’s website. For instance, at the top right of the site, Respondent states “Merchandise for All College Teams.” In the links appearing along the left column, Respondent offers “College Team Gear” and “All College Products.” Additionally, the descriptions appearing above the group headings for actual goods are: “College Jerseys”, “College Hats”, “College Sweatshirts”, “College T-Shirts”, “College Kids Gear” and “College Ladies Gear.”
Respondent’s argument also fails as a matter of law because it concedes it is using the domain for commercial gain, which preludes reliance on a fair use defense. See e.g., Disney Enter., Inc. v. HB Concepts LLC, FA 1241904 (February 16, 2009) (“Respondent’s principal contention appears to be that it uses the term “disneyworld” fairly to describe the geographic location in central Florida where its rental home is located, and not to refer to the Disney World theme park. However,… in order to fall within the “fair use” provision of paragraph 4(c)(iii) of the Policy, such use must be ‘without intent for commercial gain to misleadingly divert consumers.’”).
The undisputed facts demonstrate that Respondent registered and “used” the domain – which completely subsumes Complainant’s registered “NCAA” mark – in bad faith.
Respondent’s false claim that it is an approved affiliate obviously indicates Respondent intends to communicate to users that it indeed is an authorized affiliate of the CBS Sports Store. However, given that Respondent’s claim that it is an “APPROVED affiliate” is clearly false, Respondent’s actions – which communicate authorization – are illegitimate, intended to cause confusion, and are therefore done in bad faith.
does not dispute that it had full knowledge of Complainant’s famous NCAA Marks
at the time it registered the <ncaashop.com>
domain. Respondent’s registration and use of <ncaashop.com>, despite knowledge of Complainant’s
preexisting rights, represents bad faith under Policy 4(a)(iii). See, e.g.,
Danka Holding Co. v. Thomas Generalli and Sharp Office Systems (“SOS”) of
Apart from Respondent’s intent, its use of a Complainant’s mark, in a confusingly similar manner, in connection with an enterprise for commercial gain, is bad faith use. See Am. Girl, LLC and Am. Girl Brands, LLC v. George Rau, FA 1271493 (Nat. Arb. Forum August 13, 2009) (finding that Respondent’s appropriation of Complainant’s mark for commercial profit constitutes bad faith registration and use of the disputed domain name under Policy 4(b)(iv)). This is the case even when Respondent’s motives may not have been deceptive, but simply opportunistic. Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy 4(b)(iv), because Respondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”). Here, Respondent does not dispute that it uses Complainant’s “NCAA” mark and does not dispute Complainant’s rights in the “NCAA” mark. Further, Respondent admits that the “NCAA” mark appears in a domain name for a website used for commercial gain (“a website for people to purchase college team merchandise … since the day it was launched in 2002”). Moreover, as explained above, Respondent prominently emphasizes the “NCAA” mark on its website, which is further evidence that Respondent is attempting to commercially gain from using Complainant’s mark.
Respondent is not just selling “college team merchandise” via the
<ncaashop.com> domain. In fact, through the domain, Respondent sells
merchandise from Major League Baseball (MLB), the National Football League
(NFL), the National Basketball Association (NBA), the National Hockey League
(NHL), the National Association for Stock Car Auto Racing (NASCAR), the Arena
Football League (AFL), and the New York Fire Department (NYPD), none of
which have anything to do with Complainant. When a disputed domain name
evokes a mark and uses it in connection with a complainant’s competitor or a
third-party unrelated to complainant, such use is further evidence of bad
faith. Philosophy, Inc. v. Askmysite.com, LLC, FA 1297667 (Nat. Arb.
Forum Jan. 21, 2010) (use of Complainant’s trademark for unrelated products was
evidence of bad faith); The Ass'n of Junior Leagues Int'l Inc. v. This
Domain Name My Be For
Respondent made the following additional submissions contradicting the additional submissions on behalf of the Complainant :
The respondent contended that the complainant has submitted a letter from Michael Merhab, claiming WW Web Ventures has no business relationship with the CBS Sports affiliate program. It contended that WW Web Ventures has been an APPROVED member of the CBS Sports affiliate program through Linkshare since early 2007. The respondent contended that its company had applied to that program in late 2006 and was promptly approved, and has remained an active member of that affiliate program to this very day.
While relying upon certain documents attached from WW Web Ventures’ Linkshare account proving this point, including the showing that the company has been an affiliate since 2007, it further placed its reliance on an attached small sampling of reports showing various affiliate payments made to WW Web Ventures from CBS Sportsstore, including check stubs corresponding to those earnings reports.
As an APPROVED member of the CBS Sports affiliate program, it is entitled to link to the website in question. WW Web Ventures has been an active member of the CBS affiliate program certainly indicates that CBS Sports store had no issues with that relationship at any point in time prior to now. Inferring a different message now is disingenuous.
The respondent admitted the contention of complainant that NCAAShop.com utilizes both the terms “ncaa” and “college” on respondent’s website is true for the reason of being a search engine optimization. According to respondent, for the majority of the general public, the two terms are interchangeable: some people use “ncaa” when searching, some people use “college” when searching. The utilization of both terms on the NCAAShop website allows for greater opportunity for the website to appear in relevant search results by potential website visitors. The two different terms are not used for any other reason.
With regard to Complainant’s contention that respondent is “not just selling college team merchandise” via the NCAAShop domain, the respondent stated that NCAAShop is not selling products period – no e-commerce transactions take place on NCAAShop.com.
The contention of Complainant inferring that selling “NFL, MLB, NYPD, etc.” merchandise is in bad faith is incorrect. The respondent contended that some of the websites it links to are selling those products on their websites and domains – on which the respondent is stated to have no control, own or operate those websites in anyway. It contended that what other companies choose to sell on their websites is not at all relevant to any discussion related to NCAAShop.com. Only college products are found on the NCAAShop.com website so the complainant’s bad faith claim is clearly wrong and irrelevant.
Although complainant has stated that it has been selling online since 1994, yet it has not provided any details or evidence on which e-commerce websites or URLs that existed in 2002 and what they were. Filing paperwork about the idea of selling online and actually doing it should be considered 2 different things. The respondent further contends that the complainant’s list is online stores as “ncaasports.com”, “shopncaasports.com” and “ncaa.com/ shop” yet none of those websites were online in 2002. The respondent contended complainant has not stated as to where exactly was the NCAA selling online in 2002?
The Panel finds that the domain name <ncaashop.com> belongs to Complainant as Complainant is the owner thereof.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
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;
(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.
With reference to Clause 4(a)(i) of the Policy, the Complainant has relied upon the decisions in the cases of:
Complainant owns multiple trademark registrations for the NCAA mark
with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 976,117 issued January 1,
1974). The Panel finds that Complainant
has established rights in the NCAA mark for purposes of Policy 4(a)(i) through
its trademark registration with the USPTO. See
Metro. Life Ins. Co. v. Bonds, FA
873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration
adequately demonstrates a complainant’s rights in a mark under Policy 4(a)(i));
Complainant argues that Respondent’s disputed domain name is confusingly similar to Complainant’s NCAA mark pursuant to Policy 4(a)(i). Complainant argues that Respondent’s disputed domain name contains Complainant’s mark in its entirety, adds the generic term “shop,” and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a generic or descriptive terms such as “shop” to a registered mark in a disputed domain name creates a confusing similarity between the disputed domain name and the registered mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy 4(a)(i) is satisfied). In addition, the Panel finds that the addition of a gTLD is irrelevant in distinguishing a disputed domain name from an established mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy 4(a)(i) analysis); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy 4(a)(i).
It is to be seen that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent is not commonly known by the disputed domain name or by Complainant’s NCAA mark. Complainant provides evidence that Respondent’s WHOIS information identifies the registrant as “WW Web Ventures Inc.” The Panel agrees with this assertion and accordingly under Policy 4(c)(ii) finds that the respondent does not have any rights or legitimate interest in the disputed domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent’s disputed domain name resolves to Respondent’s
commercial website offering collegiate clothing that directly competes with
Complainant’s business because Complainant markets collegiate clothing related
to its member college sports teams. The
Panel finds that Respondent’s competing use of the disputed domain name does
not represent 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).
The Panel does not find any bona fide explanation that how did the respondent hit into the mark of the complainant viz. NCAA. For its own activities including for sale of sports goods and provision for services in relation to sports tournaments – there was no necessity for the respondent to even refer to the mark NCAA belonging to the complainant. The user of NCAA in the disputed domain name by the respondent, the panel finds, is ex-facie neither bona fide nor justified. It is not in good faith and the respondent cannot be permitted to secure to itself any right whatsoever in NCAA belonging to the complainant.
Complainant alleges that Respondent is using the disputed domain name to directly compete with Complainant by offering collegiate clothing through Respondent’s commercial website which is redirected from the disputed domain name. The Panel finds that Respondent’s registration and use of the disputed domain name to operate a website in direct competition with Complainant constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use pursuant to Policy 4(b)(iii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business).
Complainant argues that Respondent’s use of the confusingly similar disputed domain name in order to intentionally attract Internet users to its website by creating a strong likelihood of confusion with Complainant’s NCAA mark and in order to offer products and services in direct competition with Complainant is further evidence of bad faith. Therefore, pursuant to Policy 4(b)(iv), the Panel finds this use of the disputed domain name constitutes bad faith registration and use. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); see also State Fair of Tex. v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website).
In addition, Complainant contends that Respondent is using the disputed domain name to pass itself off as being associated with Complainant by prominently displaying Complainant’s NCAA mark and logo on Respondent’s commercial website. The Panel finds that this constitutes bad faith use and registration pursuant to Policy 4(a)(iii). See 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”); see also Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ncaashop.com> domain name be TRANSFERRED from Respondent to Complainant.
Maninder Singh, Panelist
Dated: April 7, 2010
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