WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

NCAA v. Randy Pitkin, et al.

Case No. D2000-0903

 

1. The Parties

Complainant is The National Collegiate Athletic Association ("Complainant" or "NCAA"), an unincorporated association, with its principal place of business at 700 West Washington Street, Indianapolis, Indiana 46204 USA.

Respondents are Randy Pitkin, whose principal place of residence is 1301 Lincoln Place NE, Renton, Washington 98056, USA; Imaginative Management Co., a Washington company located at 7811 SE 27th St., Suite 900, Mercer Island, Washington 98040-0036, USA; and Alan Bishop, whose principal place of residence is at P.O. Box 9611, Seattle, Washington 98109, USA. Randy Pitkin and Imaginative Management are listed as the Administrative Contact for all three sites, and are therefore the primary Respondents. Complainant believes Mr. Pitkin is President of Imaginative Management. Mr. Bishop is either an employee of or business partner with Mr. Pitkin. Through amendment, Complainant named as an additional Respondent, Desire, Inc., an Arizona corporation d/b/a Western States Ticket Service and d/b/a Pacific Northwest Ticket Service, located at 143 W. McDowell Road, Phoenix, Arizona 85003, USA.

The individuals and entities named as Respondents shall be collectively referred to as "Respondents."

 

2. The Domain Names and Registrars

The domain names originally at issue in this proceeding are listed as follows:

<womensfinalfour.com> (created on April 3, 2000);

<finalfourseats.com> (created on January 24, 2000);

<final-four-seats.com> (created on December 8, 1999);

<final-4-tickets.com> (created on December 8, 1999);

<final4-tickets.com> (created on December 8, 1999);

<final-four-tickets.net> (created on December 1, 1999);

<womensfinalfourtickets.com> (created on April 3, 2000);

<sweetsixteentickets.com> (created on December 8, 2000); and

<sweet-sixteen-tickets.com> (created on December 8, 2000).

<finalfourseats.com>is registered with Network Solutions, Inc. 505 Huntmar Drive, Herndon, Virginia 20170, USA. All of the other Domain Names are registered with eNom.com, 16770 NE 79th St., Suite 205, Redmond, Washington 98052, USA (collectively referred to as the "Registrar"). The contested domain names in the original Complaint shall be collectively referred to as the "Domain Names."

Through amendment, Complainant has added the following additional domain names for which Desire, Inc. is the registrant:

<ncaatickets.com> (registered on October 7, 1997);

<bigdancetickets.com> (registered on June 26, 2000); and,

<thebigdancetickets.com> (registered on June 26, 2000).

The additional domain names are registered with Network Solutions, Inc. 505 Huntmar Drive, Herndon, Virginia 20170, USA. The contested domain names sought to be added by Complainant shall be collectively referred to as the "Supplemental Domain Names."

 

3. Procedural History

On July 31, 2000, the WIPO Arbitration and Mediation Center (the "Center") received a copy of the Complaint via email. On August 2, 2000, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. On August 3, 2000, the Center received hardcopies of the Complaint. The Complainant paid the required fee.

On August 7 and 14, 2000, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Names and that the Domain Names are registered in the Respondents' names.

The Center verified that the Complaint with Amendment satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

On August 23, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondents together with copies of the Complaint with Amendment, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On September 12, 2000, the Center received the RespondentsíResponse via email. On September 13, 2000, the Center received the RespondentsíResponse in hardcopy.

On September 13, 2000, the Center received an Amendment to the Complaint and Supplemental Complaint from Complainant via email. On September 18, 2000, the Center received the Amendment and Supplement in hardcopy.

On September 20, 2000, the Center received Respondentsí Objection to the Amendment and Supplement via email. On September 21, 2000, the Center received the Objection in hardcopy.

On October 6, 2000, after the Center sent a further Request for Verification to the Registrar requesting verification of registration data, the Registrar issued a corrected confirmation, inter alia, that it is the Registrar of the Domain Names and that the Domain Names are registered in the Respondentsí names.

From October 6-11, 2000, the Center exchanged communications with the parties concerning the payment of additional fees.

On October 13, 2000, the Center sent a Notification of the Amended Complaint and of the Supplemental Complaint, together with notice of the Commencement of Administrative Proceeding.

On November 1, 2000, the Center received a Response to the Supplemental Complaint via email. On November 6, 2000, the Center received hardcopy of the Response. On December 1, 2000, the Center acknowledged receipt of the Response.

On December 1 and 5, 2000, the Center communicated with Complainant regarding its choice of a Panelist. On January 17, 2001, the Center notified the parties of the Panelist appointments and circulated a list of potential presiding panelists.

On February 2, 2001, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the "Presiding Panelist"), the Center notified the parties of the appointment of a three-member panel.

 

4. Factual Background

The NCAA, founded in 1905, is an association of colleges and universities governing intercollegiate athletics in the United States. The NCAA has been using the marks NCAA, FINAL FOUR, the FINAL FOUR, and SWEET SIXTEEN in connection with its annual college basketball tournaments since the late 1970ís and early 1980ís.

FINAL FOUR is considered to be a famous trademark and immediately recognizable as connected to the NCAA Tournaments and college basketball. The NCAA is the owner of numerous trademark registrations in multiple classes for the FINAL FOUR mark worldwide, including the following: United States Trademark Registration No. 1488836, 1164713, and 1367874. FINAL FOUR has also been published for opposition in the Official Gazette of the U.S. Patent and Trademark Office as a service mark under serial number 75/826675. WOMENíS FINAL FOUR is a registered trademark of the NCAA, with United States Trademark Registration No. 1792749, 1786019, 1786833. The mark has been in use since 1983 in connection with the NCAA Womenís Basketball Championship.

The NCAA has been using FINAL FOUR on the Internet at <www.ncaa.org> and <www.finalfour.net> to promote the Tournaments and future Tournaments in the named host cities for the 2001-2007 Final Four. Respondents have registered domains identical to the NCAA famous trademarks WOMENíS FINAL FOUR and FINAL FOUR. The site <www.finalfour.net> is used by Complainant as the official site for the NCAA Basketball Tournaments.

The trademarks SWEET SIXTEEN and SWEET 16 are owned by the Kentucky High School Athletic Association ("KHSAA"). U. S. Trademark Registration nos. 1492656 and 1493093. KHSAA has granted the NCAA exclusive license to use the SWEET SIXTEEN marks in connection with educational and entertainment services, namely the organizing and conducting of sporting events in intercollegiate athletics. In addition, the NCAA has several applications pending with the U. S. Patent and Trademark Office, including serial numbers 75-481086, 75-481084, 75-480437, 75-480429, 75-480394, 75-468604, 75-468600, 75-468370, 75-468363, and 75-468366 for the marks NCAA SWEET SIXTEEN and NCAA SWEET 16. By right of the license agreement with KHSAA, the NCAA has agreed to defend the SWEET SIXTEEN marks from infringement, unfair competition, and dilution. KHSAA has authorized the NCAA to defend the SWEET SIXTEEN mark in this action. Respondents are ticket brokers and have used SWEET SIXTEEN in connection with the NCAA Basketball Tournaments. Both <sweetsixteentickets.com> and <sweet-sixteen-tickets.com> connect to the Respondentsí main site, <www.finalfourseats.com>. Respondents are using these domains to sell tickets to NCAA Tournament games. Such use of the SWEET SIXTEEN mark is unauthorized.

NCAA is a federally registered trademark of the National Collegiate Athletic Association. The NCAA has five trademark registrations pending for BIG DANCE under the United States Trademark Serial nos. 75468606, 75468607, 75468617, 7568619, 7568620. The NCAA has been using BIG DANCE for several years in connection with NCAA Championships and has licensing agreements for authorized use of the mark.

The NCAA Office of General Counsel sent Mr. Bishop letters via facsimile to 206-232-0159 on March 28, April 3, and April 19, 2000, asking to transfer <finalfourseats.com> and remove the infringing content from the site. This fax number is advertised on the website as the way to "get great tickets to watch your team on the road to the final four." Mr. Bishop never responded to the letters. <womensfinalfour.com> and <womensfinalfourtickets.com> were registered on April 3, 2000. <finalfourseats.com> and <final-four-seats.com> have identical content, both are selling tickets to the 2001 NCAA Menís Final Four in Minneapolis and to the 2001 NCAA Womenís Final Four in St. Louis.

The NCAA maintains a Corporate Partner Program with Host Communications including the marketing and licensing of NCAA marks. Total Sports, with permission of the NCAA, maintains many Internet sites with content promoting NCAA Championships including <www.finalfour.net>. The Respondents are not a Corporate Partner or licensed to use NCAA marks in any form. The NCAA does not authorize ticket brokers to be "official" sellers of championship tickets, and has been encouraging the host cities of NCAA championship events to enact laws banning ticket scalping. Respondents have been using <final-four-seats.com> and <finalfourseats.com> to sell tickets at grossly inflated prices to NCAA championship events. Tickets are listed at costs ranging from $375 to $8500.

The Respondents allege that the NCAA does not sell any tickets or the rights to use seats at the referenced events to the public through the Internet, but solely through direct sales (by lottery) and through the allotment to the participants in the actual games. The Complainant is not using any websites for the purpose of promoting or consummating ticket sales. The Domain Names as used by the Respondents enhance likelihood that a person searching for tickets or seats will find this legal objective.

The Respondents are in the business of providing purchasing and re-selling services to consumers who wish to acquire tickets for these events. In order to allow all potential consumers the opportunity to purchase the available tickets, the language describing them must be understandable by the consumer.

 

5. Partiesí Contentions

A. Complainant contends that it has numerous registrations of the trademarks NCAA, FINAL FOUR, THE FINAL FOUR, WOMENíS FINAL FOUR, SWEET SIXTEEN and BIG DANCE (collectively the "Trademarks"). Complainant further contends that the Domain Names are identical with and confusingly similar to the Trademarks pursuant to the Policy, paragraph 4(a)(i).

Complainant contends that Respondents have no rights or legitimate interests in the Domain Names pursuant to the Policy, paragraph 4(a)(ii).

Complainant contends that Respondents registered and are using the Domain Names in bad faith in violation of the Policy paragraph, 4(a)(iii).

B. The Respondents agree to transfer the Domain Name <womensfinalfour.com> as requested by the Complainant. The reason is that while Respondents believe their use of the Domain Names constitutes a "Fair Use" of the name, since the Domain Name is not qualified by the word "seats" or "tickets," better practice would be to forego further use of it. Therefore, except for specific references to this specific Domain Name, the balance of Respondentsí arguments are addressed to the remaining original Domain Names:

<finalfourseats.com> (created on January 24, 2000);

<final-four-seats.com> (created on December 8, 1999);

<final-4-tickets.com> (created on December 8, 1999);

<final4-tickets.com> (created on December 8, 1999);

<final-four-tickets.net> (created on December 1, 1999);

<womensfinalfourtickets.com> (created on April 3, 2000);

<sweetsixteentickets.com> (created on December 8, 2000); and,

<sweet-sixteen-tickets.com> (created on December 8, 2000).

Respondents oppose the inclusion of the following additional names under the Supplemental Complaint:

<ncaatickets.com> (registered on October 7, 1997);

<bigdancetickets.com> (registered on June 26, 2000: and,

<thebigdancetickets.com> (registered on June 26, 2000).

Respondents do not contest Complainantís assertion that it has numerous registrations of the Trademarks. However, Respondents do contest that the Domain Names are identical with and confusingly similar to the Trademarks. Specifically, Respondents assert that their use of the Domain Names constitutes a "Fair Use."

Respondents contest Complainantís assertion that Respondents have no rights or legitimate interests in the Domain Names.

Respondents contest Complainantís assertion that Respondents registered and used the Domain Names in bad faith.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel 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."

Since the Complainant and Respondents are domiciled in the United States, and since United Statesí courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.

Agreement to Transfer

Respondent has indicated in its Response that it does not desire to retain the registration of the <womensfinalfour.com> Domain Name. Therefore, the entirety of the Panel finds, on this basis alone, that the Domain Name should be transferred to the NCAA.

Additional Domain Names Excluded

Complainant seeks to add the Supplemental Domain Names to the original Complaint. The filing of this Supplemental Complaint is hereby denied. There is no provision for this in the Policy or Rules and Complainant only filed this after reviewing the Respondentsí Response. If new Complaints could be routinely added after a Response, this would potentially disrupt the entire proceedings. Then new briefings would have to be allowed which would extend what is supposed to be a rapid determination.

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 or service mark in which the Complainant has rights;

ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and,

iii) that the domain name has been registered and is being used in bad faith.

Identity or Confusing Similarity

Complainant contends that it has numerous registrations of the Trademarks. Complainant further contends that the Domain Names are identical with and confusingly similar to the Trademarks pursuant to the Policy, paragraph 4(a)(i).

Complainantís numerous registrations are valid and subsisting and serve as prima facie evidence of its ownership and the validity of the Trademarks. 15 U.S.C. ß 1115. The NCAAís registrations are incontestable and conclusive evidence of the NCAAís ownership of the Trademarks and exclusive right to use the marks in connection with the stated goods and services. 15 U.S.C. ßß 1065 and 1115(b).

Respondents have not contested the assertions by the NCAA that it has valid registrations of the Trademarks. Therefore, the Panel finds that the NCAA, for purposes of this proceeding, has enforceable rights in the Trademarks.

Complainant further contends that the Domain Names are identical with and confusingly similar to the Trademarks pursuant to the Policy paragraph 4(a)(i).

Each of the Domain Names contains the entirety of one of the Trademarks. Generally, a user of a mark "may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it." 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition ß 23:50 (4th ed. 1998).  The addition of the phrase ".com" is non-distinctive because it is a gTLD required for registration of a domain name. Likewise, the addition of the non-distinctive "e" or "e-" to its domain name does nothing to reduce its confusing similarity with Complainant's marks. See, Nike, Inc. v. Farrukh Zia, WIPO Case No. D2000-0167 (April 27, 2000) (holding <enike.com> and <e-nike.com> to be confusingly similar to Complainant Nike, Inc.'s mark NIKE and its primary domain name <nike.com> in which the panel observed "[t]he only difference between the Domain Name and Complainant's mark is the 'e', a difference that the Panel holds in this case to be insignificant"); International Data Group, Inc. v. Maruyama & Co., Ltd., WIPO Case No. D2000-0420 (June 26, 2000) ("Since the Respondent's Domain Name differs from the Complainant's marks only by the addition of the now common 'E-', there is considerable likelihood of confusion of the Domain Name with the Complainant's business."); World Wrestling Federation Entertainment Inc (WWFE) v. Rooij, WIPO Case No. D2000-0290 (June 20, 2000) (transfer of domain name <iwwf.com> to holder of trademark WWF); Yahoo! Inc. v. Zviely, WIPO Case No. D2000-0273 (June 14, 2000) (transfer of various domain names, including "ayahoo.com" to holder of trademark YAHOO!); Teradyne, Inc. v. 4Tel Technology, WIPO Case No. D2000-0026 (May 9, 2000) ("The addition of a hyphen to the registered mark is an insubstantial change.").

Respondents assert that while the Domain Names are similar to the Trademarks of Complainant, they are significantly distinguishable from the marks and not confusing to consumers. Each of Complainantís marks is distinguishable from the Domain Names, by the use of the words "seats" or "tickets." Respondents were intentional about the inclusion of these specific words. First, the Respondents wish to guide potential ticket purchasers to these domains so that a potential re-sale of the tickets will be enhanced. Second, the Respondents want to limit the persons visiting their websites to those interested in purchasing tickets. Therefore, not only do the Respondents use the terms "seats" and "tickets" in the Domain Names to enhance this objective, but the websites include disclaimers of affiliation with the Complainant both to satisfy the Complainantís requirements and to exclude persons who are interested in any other aspect of the Complainant or its information.

The Respondents proclaim they have the same objective as the Complainant in avoiding confusion of the consumers. One merely needs to consider the coverage provided by radio, television, newspapers and magazines of each one of these events. After being inundated with marketing hype from radio, television, newspapers and magazines concerning the "Final Four," a consumer interested in obtaining a ticket to attend the event would be substantially confused if the consumer could not request "final four" tickets and re-sellers, such as the Respondents, could not refer to the event as the "Final Four."

Therefore, the central questions before the Panel is whether the words "seats" and "tickets" are sufficiently distinctive SO AS TO prevent confusion among internet users where the Respondent is selling tickets to seats at the Complainantís events. The Panel finds that because the phrases "seats" and "tickets" are readily identifiable with sporting events, that their addition to the entirety of the Trademarks MAY not prevent confusion among users. See also, EAuto, L.L.C. v. Triple S. Auto Parts, WIPO Case No. D2000-0047 (March 24, 2000) ("When a domain name incorporates, in its entirety, a distinctive mark, that creates a sufficient similarity between the mark and the domain name to render it confusingly similar."); Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022 (March 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark); Adaptive Molecular Tech., Inc. v. Priscilla Woodward & Charles R. Thorton, d/b/a Machines & More, WIPO Case No. D2000-0006 (February 28, 2000) (finding that a domain name was "undoubtedly" confusingly similar because it incorporated the "primary, distinctive element of both of Complainant's trademarks.") Moreover, in determining the similarity of two marks, points of similarity are weighed more heavily than points of difference. See, GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1206 (9th Cir. 2000); Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1054-55 (9th Cir. 1999).

Therefore, the entirety of the Panel finds that, in the abstract, the Domain Names are confusingly similar to the Trademarks pursuant to the Policy, paragraph 4(a)(i).

Rights or Legitimate Interests

Complainant contends that Respondents have no rights or legitimate interests in the Domain Names pursuant to the Policy, paragraph 4(a)(ii).

Respondents have no relationship with or specific permission from Complainant for the use of the Trademarks.

The Policy, paragraph 4(c), allows three nonexclusive methods for the Panel to conclude that it has rights or a legitimate interest in the Domain Name:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) ou [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The majority of the Panel feels that the Respondentsí arguments regarding fair use of the Trademarks are correct. Respondents were intentional about the inclusion of the specific words "seats" or "tickets." First, the Respondents wish to guide potential ticket purchasers to these domains so that a potential re-sale of the tickets will be enhanced. Second, the Respondents want to limit the persons visiting their websites to those interested in purchasing tickets. Therefore, not only do the Respondents use the terms "seats" and "tickets" in the Domain Names to enhance this objective, but the websites include disclaimers of affiliation with the Complainant both to satisfy the Complainantís requirements and to exclude persons who are interested in any other aspect of the Complainant or its information.

The majority agrees that the Complainant owns or is entitled to the Trademarks and agree that in the absence of "fair use," the Domain Names might infringe upon one or more of these marks. However, the Respondentsí "fair use" constitutes a complete defense to the Complaint (15 U.S.C. 1115 (b) and (b) (4) (1999). The Complainant fails to address the "fair use" defense, with the exception of the unsupported assertion in Complaint paragraph 18, Sentence 5 which states: "Respondents are able to conduct their business without using NCAA trademarks."

The majority of the Panel concludes from this analysis of "fair use" that Respondents are asserting that the criteria of paragraph 4(c)(iii) are applicable. Respondents assert that their use of the Domain Names is not misleading because the NCAA is identified as the source of the tickets and any relationship between the NCAA and Respondents is disclaimed.

The majority further agrees with Respondents citation to Adaptive Molecular Technologies, Inc. v. Priscilla Woodward & Charles R. Thorton, d/b/a Machines & More WIPO Case No. D2000-0006 (February 28, 2000). Respondents assert they are selling items originated by the Complainant and are using the Complainantís marks to identify the source of the items. The panel in Adaptive concluded that this constituted a sufficient basis to conclude that the right to use the name was at least arguably a "fair use" and that any further determination was an issue "... for the courts."

Respondents believe that while the Complainantís citation of Intermatic Inc. v. Toeppen, 947 F.Supp 1227 (N.D. Ill. 1996) and Panavision v. Toeppen, 141 F.3rd 1316 (9th Cir. 1998) support the existence of a basis to attack "cyber-squatters," the cases do not address "fair use" as a defense, because the facts in these cases did not support fair use. Toeppen was clearly registering domain names with the intent to resell them to the owners of the marks. Therefore, the critical issue of fair use was not addressed. However, "fair use" has been addressed in a name dispute involving registered trademarks on a Web page in the case of Playboy Enterprises, Inc. v. Terri Welles, Inc. 78 F. Supp. 2d 1066 (S.D. Cal. 1999). The Playboy case is much closer to our facts. As in this case, the court therein accepted the argument that the defendant therein used the plaintiffís terms for identification only. Like Respondents, the defendant used a disclaimer on her website. Furthermore, the NCAA is not in competition with Respondents in the sale of tickets, but rather Respondents resell Complainantís tickets for seats at Complainantís events. The court said that defendant was using Playboyís terms "only to describe" and in good faith and dismissed plaintiffís complaint, even though "... Welles uses the terms PLAYBOY and PLAYMATE (the trademarked names) along with other terms within the keywords section of the meta tags, which constitutes the internal index of the website used by some search engines." (Playboy @ 1072). The use of such words in the keyword section of the meta tags has a similar effect AS the use of such words in the domain name. Moreover, there, as here, defendant could have conducted her business without the use of the protected words, but the protected words were too intrinsic to the identification of the defendant to be omitted. Correspondingly, the Respondentsí objectives in its use of these Domain Names is to describe the tickets for resale in a manner calculated to clearly communicate necessary and useful information about the tickets.

The Ninth Circuit Court of Appeals in the United States, which incidentally covers the area where both Complainant and Respondent reside, said recently following the United States Supreme Court: "[W]e wholeheartedly agree with Justice Holmesís statements about the limits of trademark protection in Prestonettes, Inc. v. Coty, 264 U.S. 359, 369 (1924), ĎWhen the mark is used in a way that does not deceive the public, we see no such sanctity in the work as to prevent its being used to tell the truth. It is not taboo.í" Kassbaum v. Steppenwolf Productions, Inc., 236 F.3d 487; 57 USPQ2d 1300 (9th Cir. Dec. 29, 2000).

The majority of the Panel therefore finds that Respondentsí use of the Trademarks does constitute fair use and does satisfy the criteria of paragraph 4(c)(iii). Therefore, the majority of the Panel finds that Respondents have rights or legitimate interest in the Domain Names pursuant to the Policy, paragraph 4(a)(ii).

Bad Faith

Complainant contends that Respondents registered and are using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product.

The majority of the Panel finds, based upon the analysis presented above, that Respondents have not met these criteria. Specifically, Complainant has not met the criteria of subparagraph (iv) because there is no likelihood of confusion with the Complainant's mark as to source, sponsorship, affiliation or endorsement of their website.

The majority believes this controversy is in the nature of a good faith business dispute concerning possible trademark infringement, unfair competition or dilution. Respondents apparently registered these domain names believing they were within their legal rights to do so. They may be wrong as to whether this is, in fact, a " fair use". Even if they are wrong, however, this does not mean Complainant should prevail in this proceeding. The ICANN Policy is directed to cybersquatting, e.g., the types of activities set forth in paragraph 4 (b)-registering the domain name not for potential use by the registrant, but rather to sell to another or intentionally creating likelihood of confusion. Here, Respondents are attempting to sell tickets to the NCAA Tournaments. Whether they can properly do so or not turns on the law of trademark, unfair competition or dilution, not on onesí intent, which is crucial in an ICANN proceeding.

Therefore, neither the criteria of the Policy paragraph 4 (b) (iv) nor any of the other criteria of the Policy, paragraph 4 (b), have been met. Nor is there other evidence of bad faith which has been shown. Respondents have not registered and used the domain names in bad faith in violation of the Policy, paragraph 4 (a) (iii).

 

7. Decision

The majority of the Panel concludes (a) that the Domain Names are confusingly similar to Complainantís registered Trademarks; (b) that Respondents do have rights or legitimate interests in the Domain Names; and, (c) that Respondents did not register and use the Domain Names in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the majority of the Panel orders that the Domain Names not be transferred to the NCAA. However, Respondents have agreed and are hereby ordered to transfer "womensfinalfour.com". No ruling is made regarding the Supplemental Domain Names sought to be added by Complainant to the original Complaint.

 


 

Neil Smith
Panelist

T. Creel
Panelist

March 9, 2001

 


 

DISSENT

I respectfully disagree with my co-Panelists and would find that Respondents should be required to transfer the Domain Names to Complainant.

Identity or Confusing Similarity

I would expand the findings that the Domain Names are confusingly similar to the Trademarks pursuant to the Policy, paragraph 4(a)(i), as follows:

In addition, Courts have recognized that consumers expect to find a company on the Internet at a domain name address comprised of the companyís name or trademark. See Panavision Intíl, L.P. v. Toeppen, 141 F.3d 1316, 1327 (9th Cir. 1998) ("A customer who is unsure about a companyís domain name will often guess that the domain name is also the companyís name . . . . [A] domain name mirroring a corporate name may be a valuable corporate asset, as it facilitates communication with a customer base." (citations omitted)).

The Domain Name <ncaatickets.com> together with the other Domain Names suggest an association or relationship to Complainant which does not exist and, if used by parties other than Complainant, will cause confusion in the marketplace. See Nike, Inc., WIPO Case No. D2000-0167, id.

Therefore, I agree with my co-panelists that the Domain Names are confusingly similar to the Trademarks pursuant to the Policy, paragraph 4(a)(i).

Rights or Legitimate Interests

I would find that Respondentsí use of the Domain Names does not constitute fair use and does not satisfy the criteria of paragraph 4(c)(iii).

The use of a disclaimer by Respondents is not sufficient to dispel the likelihood of initial interest confusion by an internet user. The Respondentsí Domain Names use the Trademarks in the title of the Domain Names which resolve to Respondentsí website. Thus, the internet user searching for information regarding Complaintís events are drawn to Respondentsí website through initial interest confusion as to the source, sponsorship, affiliation, or endorsement. Even though a misdirected user may become aware that the Domain Names do not resolve to a website affiliated with the Complainant, the fact remains that the Respondent's improper and unauthorized use of the Trademarks diverts persons seeking Complainantís events. This initial interest confusion violates the NCAA's rights in its Trademarks. See, Brookfield Communs, 174 F.3d at 1057 (discussing likelihood of confusion and noting that "Web surfers are more likely to be confused as to the ownership of a web site than traditional patrons of a brick-and-mortar store would be of a store's ownership," and that even where people realize, immediately upon accessing the complained-of website, that they have reached a site operated by someone other than the trademark owner, the infringing website will still have gained a customer by appropriating the goodwill of the trademark owner).

Given the initial interest confusion created by Respondentsí use of Complainantís Trademarks, I would find that Respondentsí use of the Domain Names does not constitute fair use and does not satisfy the criteria of paragraph 4(c)(iii). Therefore, I would find that Respondents have no rights or legitimate interests in the Domain Names pursuant to the Policy, paragraph 4(a)(ii).

Bad Faith

Respondents admit that they are intentionally attracting internet users to their website for the purpose of commercial gain through the sale of tickets to sporting events sponsored by the NCAA. I would find above that the Domain Names create the likelihood of initial user confusion as to the source, sponsorship, affiliation or endorsement of the NCAA. Therefore, the criteria of the Policy, paragraph 4(b)(iv), are met and Respondents have registered and used the Domain Names in bad faith in violation of the Policy, paragraph 4(a)(iii).

Decision

I would conclude (a) that the Domain Names are confusingly similar to Complainantís registered Trademarks; (b) that Respondents do not have rights or legitimate interests in the Domain Names; and, (c) that Respondents did register and use the Domain Names in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, I would order that all of the Domain Names be transferred to the NCAA.

 


 

Richard W. Page
Dissenting Panelist

March 9, 2001