National Collegiate Athletic
Association v. WW Web Ventures Inc.
Claim Number: FA1002001308393
PARTIES
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.
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.
Mr. Maninder Singh as Panelist.
PROCEDURAL HISTORY
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 postmaster@ncaashop.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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.
The
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);
(iv)
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.
B. Respondent
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
Complainant :
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>.
Complainant has
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
numerous
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.
Respondent
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.
Significantly,
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 :
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?
FINDINGS
The Panel finds that the domain name <ncaashop.com> belongs to
Complainant as Complainant is the owner thereof.
DISCUSSION
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));
see also
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.”).
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 <ncaashop.com> domain name be TRANSFERRED
from Respondent to Complainant.
Maninder Singh, Panelist
Dated:
April 7, 2010
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