WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The National Collegiate Athletic Association v. Kevin Kohlhaas
Case No. D2003-0551
1. The Parties
The Complainant is The National Collegiate Athletic Association, Indianapolis, Indiana, United States of America (hereinafter "the Complainant"). It is represented by its Assistant General Counsel, Scott A. Bearby.
The Respondent is Kevin Kohlhaas, residing at Battle Ground, Washington, United States of America (hereinafter "the Respondent").
2. The Domain Name and Registrar
The domain name at issue in this proceeding is <ncaafinal4.org>.
The Registrar is Register.com of New York, New York, United States of America (hereinafter "the Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") by email on July 11, 2003, and in hard copy on July 18, 2003.
On July 14, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the contested domain name. On July 14, 2003, the Registrar transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing contact details for the administrative, billing and technical contacts. The Center subsequently checked the compliance of the Complaint with the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, Paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced as of July 21, 2003. In accordance with the Rules, Paragraph 5(a), the due date for the Response was August 10, 2003. The Respondent did not submit any Response. Accordingly, the Center issued a Notification of Respondent Default on August 13, 2003.
The Center appointed D. Brian King as the Sole Panelist in this matter on August 20, 2003. The Sole Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, Paragraph 7.
On August 28, 2003, the Panel issued Procedural Order No. 1, which reads in pertinent part as follows:
Having reviewed the Complaint, the Administrative Panel notes that:
(1) the Complainant has given very little in the way of explanation as to why the Policy has allegedly been violated, particularly in relation to the alleged registration and use of the domain name in bad faith (see Rules, Paragraph 3(b)(ix)); and
(2) the Complainant has failed to attach to the Complaint the annexes cited therein or any other documentary evidence, including in particular evidence of the trademark registrations it alleges to hold (see Rules, Paragraph 3(b)(xv)).
Pursuant to Paragraph 12 of the Rules, the Administrative Panel invites the Complainant to file a further submission, not exceeding 10 pages, explaining in detail how, in its view, the Policy has been violated, in particular with regard to bad faith registration and use. The Complainant is further invited to attach to the [further submission] any documentary evidence that it wishes the Panel to consider.
Complainant is required to transmit its submission in response to this Procedural Order on or before September 10, 2003.
The Respondent is given until September 16, 2003, to respond to the Complainantís further submission.
On September 10, 2003, in response to Procedural Order No. 1, the Center received from the Complainant, United States Patent and Trademark Office printouts evidencing the Complainantís registered trademark and service mark rights in the "NCAA," "FINAL FOUR" and "THE FINAL FOUR" marks. The Complainant failed, however, to provide a further written submission as directed in Procedural Order No. 1.
The Respondent did not submit any response on September 16, 2003, as Procedural Order No. 1 had afforded him the opportunity to do.
4. Factual Background
The facts relevant to the current dispute are set out in the Complaint. Considering the allegations therein, the evidence produced and the fact that the Respondent has not filed a Response contesting the Complainantís contentions, the Panel finds the following facts to have been established.
The Complainant, founded in 1905, is an association of colleges and universities that serves a governing and coordinating role with respect to intercollegiate athletics in the United States. The Complainant uses the marks "NCAA," "FINAL FOUR" and "THE FINAL FOUR" in connection with its annual college basketball tournaments. "NCAA" is an internationally recognized mark, and "FINAL FOUR" is broadly recognized as connected to the Complainantís tournaments. The Complainant has held registered trademarks and service marks in the United States for "NCAA," "FINAL FOUR" and "THE FINAL FOUR" since about 1986 (see documents submitted by the Complainant on September 10, 2003).
The Complainant owns the domain names <ncaa.org> and <finalfour.net> and has been using them, apparently since sometime in 2000, to promote its college basketball tournaments. The Respondent registered the disputed domain name on or about March162001 , , i.e., long after the Complainant registered the marks listed above with the United States Patent and Trademark Office.
The disputed domain name currently resolves to an inactive site.
5. Partiesí Contentions
The Complainant relies on the above facts and contends, inter alia, that the three elements of Paragraph 4(a) of the Policy have been met.
First, the Complainant argues that the disputed domain name is confusingly similar to its registered "NCAA" and "FINAL FOUR" marks. It further claims that the domain name is confusingly similar to its own "www.finalfour.net" website, which, according to the Complainant, attracts millions of Internet users each year.
Next, the Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not a corporate partner of the NCAA, nor has he been licensed or otherwise authorized to make use of the Complainantís registered trade or service marks.
Finally, the Complainant asserts that the Respondent registered and is using the disputed domain name in bad faith. This allegation is apparently founded on the theory that, given the registration and long use by the Complainant of its "NCAA" and "FINAL FOUR" marks, as well as the widespread national (and to at least some extent, international) recognition of its Final Four tournament, the Respondent could only have registered the contested domain name for an improper purpose.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following elements in order to obtain relief:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Notwithstanding the Respondentís default, the Complainant retains the ultimate burden of proof on each of these elements. They will be examined in turn below.
Before doing so, however, it falls to address a preliminary issue, that being the effect of the Complainantís partial non-compliance with Procedural Order No. 1. As noted above, that Order directed the Complainant to submit additional evidence and to file an additional written submission further explaining the basis of its allegation of bad faith registration and use. While the Complainant did file certain additional evidence, it did not submit any further written submission.
The Administrative Panel has considered whether Ė by analogy to Paragraph 4(b) of the Rules and Paragraph 5(b) of the Supplemental Rules Ė the Complainantís partial non-compliance with Procedural Order No. 1 should result in the dismissal of the Complaint. The Panel has concluded, however, that such a sanction would not be appropriate in the circumstances here. In this regard, the Panel attaches particular significance to the fact that the Complainantís non-compliance does not appear to have caused any prejudice to the Respondent, who has declined to participate at all in these proceedings, either by submitting a Response or availing himself of the opportunity offered by Procedural Order No. 1 to file a rebuttal submission. Accordingly, the Complaint will be considered, and evaluated on the basis of the limited evidence and argument submitted.
With that matter resolved, the Panel now turns to the three elements necessary to the Complainantís case.
A. Identical or Confusingly Similar
Numerous Panels have held that where a domain name substantially incorporates the Complainantís mark, that is sufficient to make the domain name "confusingly similar" within the meaning of the Policy. See Amazon.com, Inc. v. MCL International Limited, WIPO Case No. D2000-1678 (March 12, 2001), at page 4; Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415 (September 18, 2000), at page 3; Xerox Corporation v. Imaging Solution, WIPO Case No. D2001-0313 (April 25, 2001), at page 5; Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413 (September 18, 2000), at page 4. In the present case, the domain name at issue, <ncaafinal4.org>, wholly incorporates the Complainantís registered mark "NCAA" and includes a very close variation of the Complainantís registered mark "FINAL FOUR." Accordingly, the Panel concludes, without difficulty, that the disputed domain name is confusingly similar to the Complainantís registered marks. The first element under Paragraph 4(a) has thus been met by the Complainant.
B. Rights or Legitimate Interests
The Panel is further satisfied that the Respondent has no rights or legitimate interests in respect of the domain name at issue. In particular, the Panel finds that none of the three circumstances identified in Paragraph 4(c) of the Policy as indicative of rights or legitimate interests is present here.
There is no evidence that the Respondent has made "demonstrable preparations" to use the domain name in connection with a bona fide offer of goods or services; that he has a business that has "been commonly known" by the domain name; or that he is making any "legitimate non-commercial or fair use" of the domain name. On the contrary, the domain name is presently not being used for any purpose whatsoever, and there is no indication in the record as to what the nature of the Respondentís business, if any, is.
The Panel further notes where a mark has a "strong reputation and is widely known . . . in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent." Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055 (March 21, 2000), at page 5. Such is the case here, inasmuch as the marks "NCAA" and "FINAL FOUR" are widely known Ė at least in the United States, where both the Complainant and the Respondent are domiciled Ė and the Complainant never gave any license or other permission to the Respondent to use its marks.
Accordingly, the Panel concludes that the Complainant has satisfied the second element under Paragraph 4(a) in the present case.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four non-exclusive indicia of bad faith:
(i) circumstances indicating that the Respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís website or location, or of a product or service on the website or location.
For purposes of the Policy, a finding of any of the four circumstances listed in Paragraph 4(b) will be sufficient to establish registration and use in bad faith. Furthermore, the Panel notes that those four circumstances are not exclusive, and that other circumstances may likewise lead, in a particular case, to a finding of bad faith registration and use. See CCA Industries, Inc v. Bobby R. Dailey, WIPO Case No. D2000-0148 (April 26, 2000), at page 3.
In the present case, the paucity of the record does not permit a finding that any of the specific circumstances identified in Paragraph 4(b) of the Policy is present here. Accordingly, the question becomes whether there are other circumstances that, alone or in combination, justify a finding of bad faith registration and use.
Although the question is rendered more difficult by the Complainantís failure to specify its case on the bad faith issue in greater detail, the Panel concludes on balance that circumstances justifying a finding of bad faith registration and use are present here. In this regard, the Panel notes that the Complainant has used the marks "NCAA" and "FINAL FOUR" for more than 20 years, and that the Respondent was on at least constructive notice of the Complainantís rights in those marks when he registered the disputed domain name. This follows from the Complainantís trademark and service mark registrations of "NCAA," "FINAL FOUR" and "THE FINAL FOUR" in the United States, the domicile of both the Complainant and the Respondent. See 15 U.S.C. ß 1072 (registration of mark constitutes constructive notice of the registrantís claim of ownership thereof); The Step2 Company v. Softastic.com Corp., WIPO Case No. D2000-0393 (June 26, 2000), at page 4. The Panel further notes that the marks "NCAA" and "FINAL FOUR" Ė as well as the tournament to which the latter name relates Ė are extremely well known, at least in the United States, and that the Complainantís long commercial use of these marks in connection with that tournament was in all probability known to the Respondent at the time he registered the disputed domain name.
In these circumstances, the Panel concludes that the Complainant has established, on balance, that there is no bona fide reason for the Respondentís registration of the disputed domain name, and no legitimate use that he could make of it. It follows that a finding of bad faith registration and use is justified in the circumstances here.
The Panel lastly notes that the Respondent had several opportunities to explain his interest in the domain name and his plans, if any, to make legitimate use of the domain name in the future. He has failed to do so, and this failure justifies the inference that any response he could honestly have given would have been consistent with the findings made above.
Based on the foregoing, the Panel concludes that bad faith registration and use have been sufficiently established with respect to the domain name <ncaafinal4.org> in accordance with Paragraph 4(b) of the Policy.
For the foregoing reasons, in accordance with Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Panel orders that the contested domain name, <ncaafinal4.org>, be transferred to the Complainant.
D. Brian King
Dated: October 3, 2003