National Arbitration Forum

 

DECISION

 

The National Collegiate Athletic Association v. Allen Terjesen

Claim Number: FA0610000827683

 

PARTIES

Complainant is The National Collegiate Athletic Association (“Complainant”), represented by Seth Rose, of Loeb & Loeb LLP, 321 N. Clark Street, Suite 2300, Chicago, IL 60610.  Respondent is Allen Terjesen (“Respondent”), 24 Delafield Place, Staten Island, NY 10310.

 

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <myfinalfour.com>, registered with Enom.

 

PANEL

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

 

Jeffrey M. Samuels, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 25, 2006; the National Arbitration Forum received a hard copy of the Complaint on October 26, 2006.

 

On October 26, 2006, Enom confirmed by e-mail to the National Arbitration Forum that the <myfinalfour.com> domain name is registered with Enom and that the Respondent is the current registrant of the name.  Enom has verified that Respondent is bound by the Enom 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 October 27, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 16, 2006 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@myfinalfour.com by e-mail.

 

A timely Response was received and determined to be complete on November 15, 2006.

 

A timely Additional Submission was received from Complainant on November 17, 2006.

A timely Additional Response, dated November 22, 2006, was received from Respondent.

 

On November 20, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jeffrey M. Samuels as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant National Collegiate Athletic Association (“NCAA”) is an association of colleges and universities governing intercollegiate athletics in the U.S.  The NCAA has been using the FINAL FOUR mark in connection with its annual basketball tournaments since at least as early as 1977 and obtained a U.S. Registration (No. 1,488,836) for such mark in May 1988.  The NCAA’s FINAL FOUR basketball tournaments are among the nation’s premier sporting events, generating revenues of between $50-75 million for the host region.

 

The NCAA also uses the FINAL FOUR mark and marks that incorporate the term FINAL FOUR on or in connection with a variety of goods and services.  The NCAA also owns numerous domain names incorporating its FINAL FOUR mark, including <finalfour.com>, <finalfour.net>, <finalfour.org>, <myfinalfour.org>, <myfinalfour.info>, <myfinalfour.net>, <myfinal4.com>, <myfinal4.net>, and <myfinal4.org>.

 

The disputed domain name was registered on October 17, 2002.  Upon learning that Respondent had registered the <myfinalfour.com> domain name, the NCAA’s outside counsel, on September 26, 2006, sent a letter to Respondent objecting to its use and registration of the domain name.  Respondent’s counsel responded on October 2, 2006, but the parties were not able to settle this dispute.

 

Complainant contends that the <myfinalfour.com> domain name is confusingly similar to the FINAL FOUR and FINAL FOUR-related marks inasmuch as it subsumes the FINAL MARK mark in its entirety and adds only the term “my.”

 

Complainant also argues that Respondent can have no rights or legitimate interests in the disputed domain name.  Complainant notes that, up until shortly after its counsel objected to Respondent’s use and registration of <myfinalfour.com>, the domain served merely to divert Internet users searching for NCAA and/or its FINAL FOUR products or services to a website portal page with “Sponsored” links to other websites relating to college basketball.  Many of these third-party websites were competitive to, but not affiliated with or connected to, the NCAA.  However, they offered goods and services that were related to NCAA’s FINAL FOUR goods, services, tournaments, and/or member institutions. On October 19, 2006, Respondent resolved the domain to a page indicating “This page is currently under construction.”

 

According to the Complainant, Respondent did not, at any time before it received notice of this dispute, use the disputed domain name in connection with a bona fide offering of goods or services.  Moreover, the NCAA adds, there is no evidence that Respondent is currently known, or has ever been known, as “myfinalfour” and Respondent is not authorized by the NCAA to register or use a domain name that includes Complainant’s marks. 

 

The facts surrounding Respondent’s registration and use of the disputed domain name all demonstrate his bad faith, Complainant contends.  It is well-settled, Complainant maintains, that registration and use of a domain name to re-direct Internet users to websites of competing organizations constitutes bad faith use and registration.  Additionally, Complainant urges, given the fame of its FINAL FOUR marks, there can be no doubt that Respondent registered the disputed domain name with full knowledge of such marks.  Complainant refers the Panel to other panel decisions finding a legal presumption of bad faith when a respondent reasonably should have been aware of a complainant’s marks, actually or constructively.

 

The NCAA also cites other panel decisions holding that the registration and use of a domain name that is obviously connected to a complainant’s marks by a respondent who is not connected with complainant suggests “opportunistic bad faith.”  Complainant refers to the decision in NCAA v. 3Finteractive a/k/a Fermin Aguilar, FA 114413 (Nat. Arb. Forum, July 3, 2002) (finding bad faith in the registration and use of <ncaafinalfour.org> because the FINAL FOUR mark is so closely associated with Complainant that it is difficult to imagine how respondent could have registered and used the disputed domain name for anything other than opportunistically trading on Complainant’s established marks).

 

B. Respondent

Respondent contends that the disputed domain name is not confusingly similar to Complainant’s FINAL FOUR marks.  Respondent contends that Complainant’s marks are used in connection with collegiate athletics only and that the terms “my,” “final,” and “four” are generic.  “To give someone or entity the right to exclusive use of those terms does not make sense, and is [sic] does not coincide with the purpose of the marks registered by the Complainant.”

 

Respondent argues that the term “my” is a clear modifier of “final four” and establishes that the domain name is not affiliated with Complainant.  He also maintains that the name and mark are not confusingly similar because there is no evidence of actual confusion or of “financial infringement.”[1]

 

With respect to the issue of legitimate rights or interests, Respondent maintains that he has been hosting a legal, noncommercial professional football pick’em office pool and 13-run professional baseball pool for friends and family since 2001 at <justpickem.com>.  According to Respondent, he and others wished to continue to make picks after the regular season was over.  The goal was to select the four football teams that would play in the NFC and AFC championship games.  Respondent indicated that a prototype of the football final four challenge was placed on <justpickem.com> with the intention to move the pool to the <myfinalfour.com> domain name.

 

According to the Respondent:

 

“My knowledge at the time of my registration of the domain myfinalfour.com was that any use or intention of use of the term myfinalfour.com was not the same as the NCAA’s mark, since it was to be used for something other than collegiate basketball tournaments.  My use was a legitimate use and would not cause any type of confusion with NCAA’s marks.  Certainly, the `legitimate purpose’ of the respondent does not conflict with those marks prior to my registration.

 

Most importantly, there has never been any improper commercial use of this domain name, which may have competed with and infringed upon the rights of the complainant’s trademark.  In four years the respondent has never attempted to sell anything using this domain name or website itself.  Certainly, this is contrary to the complainant’s position (which it must prove to establish this claim) that the respondent has used the domain name for an `improper purpose’.”

 

Respondent contends that the content of his <myfinalfour.com> website was not controlled by him but, rather, by the Registrar, Enom.  “I had absolutely nothing to do with what was displayed on the pages at that time, nor did I benefit commercially from what was displayed by the Registrar.  Any sponsored links on that page were provided by the Registrar and not by the Respondent.” 

 

Respondent also maintains that he did not register and does not use the disputed domain name in bad faith.  He contends that the disputed domain name was selected to host an online website relating to playoff tournaments for professional sports and reality TV shows, such as American Idol.  Respondent also argues that he has not made any attempt to sell the disputed domain name, did not register the disputed domain name in order to prevent Complainant from reflecting the mark in a corresponding domain name or to disrupt the business of a competitor, and has not intentionally attempted to attract Internet users to its site for commercial gain.  As evidence of its lack of bad faith, Respondent notes that if he was going to register domain names in bad faith, he could have registered <myfinalfour.org>, <myfinalfour.net>, <myfinal4.com>, <myfinal4.net>, and <myfinal4.org>, all of which have been registered by Complainant.

 

Respondent alleges that Complainant is guilty of reverse domain name hijacking by registering domain names similar to <myfinalfour.com>.  He labels as “suspect” Complainant’s contention that it “recently learned” of Respondent’s registration of the disputed domain name, given that the name was registered on October 17, 2002, and that the NCAA registered <myfinalfour.org>, <myfinal4.com>, <myfinal4.net>, and <myfinal4.org> on January 30, 2006.  Respondent asserts that the growth of websites such as <myspace.com> and <youtube.com> prompted the NCAA to bring this proceeding.

 

C. Additional Submissions

Attached to Complainant’s Additional Submission is the declaration of its outside counsel, Seth A. Rose, in which Mr. Rose declares that, shortly after Complainant’s attorney first spoke with Respondent’s counsel, Respondent offered to sell the domain to Complainant for $3,000.  Then, after the complaint was filed in this matter, Respondent proposed selling the domain name for $2,000.  According to the NCAA, such actions support a determination of “bad faith” registration and use.

 

In response to Respondent’s arguments regarding the issue of “confusing similarity,” Complainant notes that the appropriate standard is simply whether the disputed domain name is identical or confusingly similar to a mark in which the complainant has rights, as opposed to a likelihood of confusion test for trademark infringement.

 

With regard to the issue of “rights or legitimate interests,” the NCAA accuses Respondent of lengthy passive holding.  “It is incredulous for Respondent to claim he had plans to use myfinalfour.com when the domain sat idle with the content unbeknownst to Respondent for four years.”

 

In his Additional Response, Respondent contends that, at no time, has he or any representative, offered to sell the disputed domain name to Respondent.  Respondent attached to his Additional Response an affidavit from Matthew S. Zuntag, an attorney and Respondent’s brother-in-law.  According to Mr. Zuntag, Mr. Rose first proposed the possibility of a financial settlement and requested that he (Mr. Zuntag) speak with Respondent to see if he would accept some “nominal fee” for the settlement of the dispute.  The Respondent then authorized an “offer in compromise” of $3,000 after being assured by Mr. Zuntag that such an offer would not be admissible as evidence.

 

Respondent also asserts that he provided in his original response “demonstrable proof” of the NFL Final Four pool being in existence prior to the filing of the commencement of this dispute.[2] 

 

Respondent further argues that the disputed domain name is not confusingly similar to the FINAL FOUR mark and that he had no knowledge of the NCAA’s marks prior to the registration of <myfinalfour.com>.  While Respondent concedes that he had knowledge of the NCAA’s basketball tournaments, he maintains that he did not know that FINAL FOUR was a service mark.  Respondent indicates that when he searched for “myfinalfour” and “my final four” on November 20, 2006 at www.uspto.gov, he received the response “No results found.”  

 

FINDINGS

The Panel finds that: (1) the <myfinalfour.com> domain name is confusingly similar to the registered FINAL FOUR mark; (2) Complainant has rights in the FINAL FOUR mark; (3) Respondent has no rights or legitimate interests in the disputed domain name; and (4) the disputed domain name was registered and is being “used” in bad faith.

 

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.

 

Identical and/or Confusingly Similar

 

The Pane finds that the <myfinalfour.com> domain name is confusingly similar to the FINAL FOUR mark.  The disputed domain name incorporates the mark in full, adding only the descriptive term “my.”  See, e.g., Time Inc. v. Tony Pearson, FA 811480 (Nat. Arb. Forum Nov. 13, 2006) (<mysportsillustrated.com> is confusingly similar to SPORTS ILLUSTRATED mark); ESPN, Inc. v. MySport Center.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (domain name <mysportcenter.com> is confusingly similar to SPORTSCENTER mark).  The fact that there is no evidence of actual confusion or of any “financial infringement” is irrelevant to a determination of confusing similarity under the Policy.  Most ICANN panelists, including this one, have held that a finding of confusing similarity is based solely on a comparison of the domain name and mark from the perspective of how they look and sound and the commercial impression imparted.[3]  It is not based on an analysis of the likelihood of confusion factors relied upon by courts to resolve trademark infringement disputes.  See, e.g., Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000); Beiersdorf AG v. Nivea Int’l, D2001-0178 (WIPO May 9, 2001).  Thus, Respondent’s argument that there is no evidence that it is affiliated with Complainant or that it has infringed Complainant’s marks is not relevant to this issue.

 

Similarly, the fact that Complainant may not have a registration for MY FINAL FOUR does not preclude a finding in favor of Complainant on this issue, given that the policy provides that the domain name need only be “confusingly similar” to the complainant’s mark. 

 

It is also clear that Complainant has rights in the FINAL FOUR mark.  Such rights are reflected by its ownership of numerous U.S. registrations for the mark, as well as its long use of the mark.  Contrary to Respondent’s assertion, the Panel concludes that Complainant’s mark is not generic.  Respondent has offered no evidence that the “primary significance” of Complainant’s FINAL FOUR mark is to identify a product or service, as opposed to source.  See 15 U.S.C. §1064(3).  The fact that the words “my,” “final,” and “four” are common terms does not mean that FINAL FOUR, as used in connection with basketball tournaments, is not a protectible mark.   Moreover, the fact that the USPTO has issued registrations to Complainant for its FINAL FOUR marks creates a presumption that the marks are valid, i.e., not generic.  See 15 U.S.C. §1057(b).  The Panel declines to second-guess the determinations of the USPTO, the agency entrusted with the responsibility for determining the registrability of marks.

 

Rights or Legitimate Interests

 

The Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name.  Respondent’s principal argument on this issue appears to be that, prior to the commencement of this proceeding, he had made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. 

 

However, Respondent has no presented no evidence of any “demonstrable” preparations to use the disputed domain name.  The mere assertion of one’s intent to use the disputed domain name, in this case, in connection with a “final four” football challenge, does not establish “demonstrable” preparations to do so.  The fact that Respondent has not used the disputed domain name in connection with such challenge for four years supports the Panel’s determination.

 

The printouts set forth in the Response do not establish demonstrable preparations to use the disputed domain name.  The <myfinalfour.com> domain name does not appear anywhere on the printouts.  The only domain name that appears on such printouts is <justpickem.com>.

 

Registration and Use in Bad Faith

 

The evidence indicates that, at the time this proceeding was commenced, the disputed domain name resolved to a page indicating “This page is currently under construction.”  Such passive holding has been found by numerous panels to constitute evidence of bad faith registration and use.  See, e.g., Paisley Park Enterprises v. James Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding respondent’s failure to use the domain name for more than a year since its registration is some evidence of bad faith registration and use).

 

Moreover, given the degree of fame and longstanding use of Complainant’s FINAL FOUR mark, the Panel finds that Respondent was aware of Complainant’s use of FINAL FOUR at the time he registered the <myfinalfour.com> domain name. Such knowledge supports a determination that the disputed domain name was registered and is being used in bad faith.  See, e.g., Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”).

 

Respondent’s assertion that he did not know that FINAL FOUR was a service mark does not mean he was not aware of Complainant’s use of the term.  Respondent admitted he was aware of the NCAA basketball tournament and the evidence establishes that the FINAL FOUR mark has been used in connection with such tournament since 1977.  Under such circumstances, it is certainly more likely than not that Respondent was aware of Complainant’s use of the term FINAL FOUR.  A respondent’s failure to appreciate that a term is being used as a service mark or trademark cannot shield him from the requisite knowledge that can trigger a finding of “bad faith” registration and use.[4] 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.  Respondent’s claim of reverse domain name hijacking is DISMISSED.

 

Accordingly, it is Ordered that the <myfinalfour.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Jeffrey M. Samuels, Panelist
Dated: December 1, 2006