WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
National Collegiate Athletic Association v. Rosemary Giancola
Case No. D2000-0836
1. The Parties
The Complainant in this administrative proceeding is The National Collegiate Athletic Association ("NCAA"), an unincorporated association, with its principal place of business at 700 West Washington Street, Indianapolis, Indiana 46204, USA. The Respondent is Rosemary Giancola, whose principal place of business or residence is Apartamentos Escocia, Esquina Ave y Calle 27, San Jose, Costa Rica.
2. The Domain Names and Registrars
Each of the 32 domain names in issue with the date of registration are listed below.
The 7 names registered with Melbourne IT Ltd , InternetNamesWorldwide are:
ncaamensbasketball.com, created on March 24, 2000
ncaabasketballodds.com, created on March 24, 2000
ncaabasketballpicks.com, created on March 24, 2000
ncaabasketballschedule.com, created on March 24, 2000
ncaabasketballscores.com, created on March 24, 2000
ncaacollegebasketball.com, created on March 25, 2000
ncaabasketballlines.com, created on March 25, 2000
The 25 names registered with DirectNIC.com, a Division of TUCOWS.com are:
ncaapredictions.com, created on May 2, 2000
freencaapicks.com, created on May 1, 2000
ncaatournamentbracket.com, created on May 2, 2000
ncaatournamentbrackets.com, created on May 2, 2000
ncaatournamentschedule.com, created on May 2, 2000
ncaatournamentscores.com, created on May 2, 2000
ncaatournamentodds.com, created on May 2, 2000
ncaamenstournament.com, created on May 2, 2000
ncaabasketballbracket.com, created on May 2, 2000
ncaabasketballbrackets.com, created on May 2, 2000
ncaabasketballstats.com, created on May 1, 2000
ncaabasketballtournamentbrackets.com, created May 2, 2000
ncaacollegefootball.com, created March 29, 2000
ncaafootballbetting.com, created on March 29, 2000
ncaafootballgambling.com, created on March 29, 2000
ncaafootballstatistics.com, created on March 29, 2000
freencaafootballpicks.com, created on May 1, 2000
ncaafootballscores.com, created on March 29, 2000
ncaafootballrecruiting.com, created on March 29, 2000
ncaafootballnews.com, created on March 29, 2000
ncaafootballodds.com, created on March 29, 2000
ncaafootballlines.com, created on March 29, 2000
ncaaresults.com, created May 2, 2000
ncaafootballschedule.com, created March 29, 2000
ncaatournamentpredictions.com, created May 2, 2000
3. Procedural History
A Complaint was received by the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on July 20, 2000. The initial Complaint joined thirty-five (35) domain names in a single action against two different Respondents. Thirty-two of the thirty-five names were registered in the name of Rosemary Giancola. Three of the thirty-five names were registered by Watch Dog Sports. On November 7, 2000, Complainant NCAA and Watch Dog Sports reached a settlement agreement that terminated the dispute against the three domain names held by Watch Dog Sports. The settlement agreement does not affect the dispute regarding the domain names held by Rosemary Giancola listed above. This decision applies to the thirty-two domain names registered in the name of Rosemary Giancola. All references to "Respondent" are references to Rosemary Giancola and not Watch Dog Sports.
Verification Responses were received from both Registrars confirming the essential information. A Notification of Complaint and Commencement of Administrative Proceeding was sent by the WIPO Center to the Complainant (facsimile and e-mail) and Respondent (facsimile, e-mail and post/courier), dated August 12, 2000. The Notification set a deadline of August 31, 2000 by which the Respondent could make a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail address indicated in the Complaint and specified in the Registrars’ Response Verifications. In addition, the Commencement Notification was sent by Post/Courier and transmitted by email to the addresses listed in the Complaint and confirmed by the Registrars. Having reviewed the communications records in the case file, the Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."
An email communication was received by Respondent on September 28, 2000.
On October 9, 2000, in view of the Complainant’s designation of a single panelist, the WIPO Center invited Roderick Thompson to serve as a panelist in Case No. D2000-0836, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence.
Having received Roderick Thompson’s Statement of Acceptance and Declaration of Impartiality and Independence, on October 9, 2000, the WIPO Center sent to the parties a Notification of Panelist Appointment, in which Roderick Thompson was formally appointed as the Sole Panelist. The Projected Decision Date as determined by the WIPO Center Transmission of Case File to Administrative Panel, transmitted to the parties on October 9, 2000, was October 22, 2000. In view of the presence of exceptional circumstances, including the need to determine the status of dual Registrants, the deadline for the issuance of the Panel’s decision was postponed to November 28, 2000 as permitted by Paragraph 10(c) of the Rules. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and WIPO Supplemental Rules.
On August 12, 2000, a Formal Requirements Compliance review was completed by the assigned WIPO Center Case Manager. The WIPO Case Manager requested that the Complainant amend paragraph 15, VII Mutual Jurisdiction of the Complaint in order to comply with the UDRP Mutual Jurisdiction provisions. The Complaint was appropriately amended by Complainant on September 28, 2000. The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is now in formal compliance with the requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "Supplemental Rules"). The required fees for a single-member Panel were paid by the Complainant on time and in the required amount.
4. Factual Background
According to information in the Complaint, Complainant owns multiple trademark registrations for "NCAA" including: United States Trademark Registration No. 976119, 1508377, 1728508, 1843616, 1790366. Complainant also lists U.S. trademark registrations for "NCAA Basketball" and "NCAA Football." The NCAA maintains a marketing and licensing program for the NCAA marks. Respondent is not licensed by the NCAA or its partners to use the NCAA marks.
Respondent is the current Registrant of the thirty-two domain names listed above that contain the term "NCAA."
5. Parties’ Contentions
Complainant contends that; 1) NCAA is the exclusive owner of the trademark rights in the term NCAA; 2) the current Registrant’s use of the names to promote gambling is not a legitimate use of the names and 3) that the number of domain names registered containing the NCAA trademarks is sufficient evidence of bad faith. Additionally, Complainant asserts that the use of the terms "NCAA", "NCAA Basketball", "NCAA Mens Basketball" or "NCAA College Basketball" in the disputed domain names is identical and confusingly similar to the NCAA trademarks, events and official NCAA websites.
Complainant explains that it has been active in lobbying the Congress of the United States to enact legislation banning internet gambling, and is intending to use "the ICANN dispute resolution process both to protect its trademarks and to ‘stop gambling interests’ from using NCAA marks on the Internet." See Complaint Section V. ¶ 11.
At the time the complaint was filed, many of the domain names registered by Respondent linked to a site that provided access to Watch Dog Sports and its offshore betting partner, Caribi Sportsbook. Complainant asserts that by using these domain names to link to this site, Registrant has sought to capitalize on the goodwill of the NCAA championships.
Five of the domain names in dispute were registered by Mr. Randall Busack and transferred to Rosemary Giancola before this action commenced. In a letter sent to Complainant, Mr. Busack indicated to the NCAA that he would consider transferring the names if there was a compensation arrangement that would allow him to redirect his business ventures.
Complainant asserts that the names were transferred from Mr. Busack and Watch Dog Sports to Respondent in order to evade service of process, complicate jurisdiction if litigation is required, and conceal the true identity of the domain name holders.
Respondent asserts that there is no confusing similarity between the domain names and the trademarks held by Complainant. Instead, Respondent claims that the sites connected to the disputed domain names are general sports interest sites which supply information on topics related to the domain names. According to Respondent there is no way that a consumer would mistake the content of those sites as having any direct connection with the NCAA.
6. Discussion and Findings
A. Applicable Rules and Principles of Law
Paragraph 15(a) of the Rules instructs this Panelist as to the principles the Panelist is to use in rendering its decision: "A Panelist shall 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." While the Complainant in this dispute is domiciled in the United States, the Respondent is a resident of Costa Rica. Although Complainant alleges that Respondent may have previously resided in the United States, Respondent asserts in her email dated August 31, 2000 that she has never lived in the United States. Because Respondent is not a resident of the United States, this Panelist will not apply U.S. trademark law to resolve this dispute. Instead, the decision will be based on the requirements set out in the Uniform Dispute Resolution Policy. The parties may note that under Paragraph 4(k) of the Policy, this decision does not bar either party from submitting the dispute to a court. Thus if Complainant believes that registration of these domain names is a violation of U.S. AntiCybersquatting Consumer Protection Act – as cited in the Complaint – Complainant may bring such an action in U.S. court.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark in which the Complainant has rights; and,
(ii) that the Respondent has no legitimate interests in respect of the domain name; and,
(iii) that the domain name has been registered and is being used in bad faith.
B. Application of Paragraph 4(a) of the Policy to the facts
Identical or Confusingly Similar Domain Names
The UDRP Rules require that the Complaint "specify" the trademarks on which it is based and "for each mark, describe the goods or services, if any, with which the mark is used." Rule 3(b)(viii). Here, Complainant merely refers to "multiple trademark registrations" and provides several registration numbers, without identifying the goods or services or the specific marks or logos. This fails to comply with the Rule. Nonetheless, Respondent does not contest the strength or validity of the NCAA trademark and the Complainant does identify two marks NCAA BASKETBALL and NCAA FOOTBALL.
While Complainant made the process more difficult by not specifying the goods and services to which each trademark registration applies, the Panel finds that the NCAA trademark is widely known, at least in relation to the provision of services and goods related to and associated with national college basketball and football tournaments. Names 1-4 listed below correspond directly with the NCAA trademark and the events for which the NCAA is known: <ncaamensbasketball.com>, <ncaacollegebasketball.com>, <ncaamenstournament.com>, and <ncaacollegefootball.com>. These names are therefore confusingly similar to NCAA’s registered trademarks.
Respondent has also registered names 5-20 that include the NCAA mark and events with which the NCAA is associated, but also include other terms such as "schedule," "scores," "results," and "recruiting." The services or information included in these terms are close to those provided by the NCAA and thus these domain names would tend to cause confusion. Such names are therefore considered confusingly similar to the NCAA mark.
Additionally, Respondent has registered names that include the NCAA mark but include terms related to gambling. Given the NCAA’s strong opposition to gambling, it is less likely that these names could lead to any confusion. Instead these names appear to be a descriptive use of the NCAA mark to indicate sites that provide access to information on gambling on NCAA games. Thus the NCAA has not met its burden of proving that names 21-32 listed below are identical or confusingly similar to the NCAA trademark.
Respondent’s Rights or Legitimate Interests in the Domain Names
Complainant asserts that Respondent has no legitimate interest in the domain names. Respondent’s response does not indicate any specific legitimate interest in the names other than to provide information relating to the NCAA and that she committed resources to "this business venture." As to names 1-20, the domain names do not link to web sites that provide information relating to the names themselves. Instead, the names all led to a single site that did not itself provide information relating to the domain name, but acted as a portal to two other sites. Linking to the portal site does not in itself demonstrate any use in connection with a bona fide offering of goods or services. A single registration of a domain name that links to a web site that provides information related to the domain name might constitute legitimate use of the name. That is not the issue to be decided by this Panel since 20 such names are registered in the name of Respondent and these 20 domain names do not link to web sites that provide a bona fide offering of goods or services. Complainant has met its burden, and Respondent did not provide any information useful to refuting the assertion made by Complainant, that Respondent has no legitimate interest in names 1-20.
A different case is raised by the domain names that include terms such as "gambling," "odds," "lines," and "predictions." Complainant asserts that promoting gambling is not a legitimate use. This administrative proceeding is not the appropriate venue for a debate on the legitimacy of gambling on the internet and the Panel expresses no opinion on the issue. Complainant notes that it is lobbying the U.S. government to make internet gambling illegal, but does not suggest that the alleged use is illegal. For purposes of this proceeding, therefore, a web site devoted to providing information or access to gambling on NCAA games qualifies as the bona fide offering of goods or services and thus constitutes a legitimate use. Thus Complainant has not met its burden of proving that the Registrant has no legitimate interest in names 21-32.
Bad Faith Registration and Use
Because Complainant has not met its burden of proving confusing similarity and an absence of legitimate use, there is no need to determine whether names 21-32 listed below have been registered and used in bad faith. Complainant has met is burden of proving confusing similarity and lack of legitimate use for names 1-20 and therefore this Panel must determine whether such names were registered and used in bad faith.
Complainant points to a variety of factors in an effort to show bad faith on the part of the Registrant. First, Complainant points to the prior Registrant’s offer to sell five of the domain names. While this offer may provide some circumstantial evidence that the current Registrant also acquired the names with an intent to sell them to the trademark holder, this evidence is not sufficient, by itself, to prove bad faith on the part of the current Registrant.
Additionally, Complainant asserts that the domain names were transferred to Respondent in an effort to create jurisdictional complications. The use of the domain names did not apparently change after the transfer of the names raising some question as to the rationale for transfer. While this does not prove an intent to create jurisdictional complications, there is no rebuttal or other information in Respondent’s response on this issue.
Additionally, registration of a multitude of related domain names in some instances may serve as evidence that the domain names have been registered and used in bad faith. One domain name, or at least a few domain names specific to various tournaments, would generally be sufficient to achieve the purposes of providing information. In this case, registration of such a large number of related domain names without any explanation of their use or the need for the 32 names in issue by the Respondent leads to the conclusion that the intention was to generate traffic based on the goodwill of the trademark. When all of the factors are taken together, this Panelist finds that Complainant has shown bad faith registration and use of the domain names 1-20.
This Panelist decides that each of the domain names 1-20 below are identical or confusingly similar to the trademarks in which Complainant has rights, that the Respondent has no rights or legitimate interests in domain names 1-20, and that these domain names have been registered and used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, this Panelist requires that the registration of the following domain names be transferred to Complainant:
This Panelist also decides that in relation to the domain names 21-32 below Complainant has not shown that the names are confusingly similar to the trademarks in which Complainant has rights or that the Respondent has no legitimate interest. Thus the names below shall remain registered with Respondent:
Dated: November 28, 2000