WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
National Collegiate Athletic Association v. Michael Kennedy, PanAm
Case No. D2018-0445
1. The Parties
The Complainant is National Collegiate Athletic Association of Indianapolis, Indiana, United States of America (“United States”), represented by Loeb & Loeb, LLP, United States.
The Respondent is Michael Kennedy, PanAm of Denver, Colorado, United States.
2. The Domain Name and Registrar
The disputed domain name <ncaatravel.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2018. On February 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 28, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 27, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 28, 2018.
The Center appointed Ellen B Shankman as the sole panelist in this matter on April 11, 2018. The Panel finds that it was properly constituted. The Panel 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.
4. Factual Background
The date of the Domain Name registration was confirmed by the Registrar to be October 5, 2016.
The trademark NCAA serves as a house-mark of the Complainant and the Complainant provided evidence of multiple trademark registrations for the mark NCAA including, inter alia, United States Registrations Nos. 1,483,616 (registered on April 5, 1988) and 976,117 (registered on January 1, 1974) both for word marks that predate the date of the Domain Name registration for a variety of sports related goods and services. The Complainant holds a number of NCAA domain names, including, inter alia, <ncaa.com>.
According to the evidence provided by the Complainant the Domain Name resolved to a website claiming to provide travel management services to intercollegiate teams. The Panel also conducted an independent search to determine that the Domain Name resolves to a page with an error message, and the website currently appears to be inactive.
The Complainant also provided evidence of a “Cease and Desist” letter that it sent to the Respondent on or about January 5, 2018 prior to filing this UDRP action, to which the Respondent did not reply.
Since the Respondent did not respond to this Complaint, the facts regarding the use and fame of the Complainant’s mark are taken from the Complaint and are generally accepted as true in the circumstances of this case.
5. Parties’ Contentions
The National Collegiate Athletic Association (“NCAA”), founded in 1905, is an association of colleges and universities governing intercollegiate athletics in the United States. The Complaint alleges that the NCAA has been using the NCAA mark in connection with its athletic operations since 1911 in connection with its various intercollegiate athletic association services, and has expanded its use of NCAA and marks incorporating NCAA (collectively, “NCAA Marks”) to various products and services.
Through the years, the NCAA, its licensees and marketing agents 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. The Complaint alleges that as a result of these efforts, the NCAA marks are considered to be famous trademarks, which are associated with the NCAA.
The Complaint alleges that the NCAA has an exclusive license with Short’s Travel Management, the official travel agency for the NCAA. The Respondent’s registration and initial use to create a travel management website to promote NCAA related travel was not authorized by and is in direct conflict with the Complainant’s activities and the services offered by Short’s Travel Management.
The Complainant sent “cease and desist” letters to the Respondent, initially through the GoDaddy proxy registration, and then later directly to the Respondent, to which the Complainant received no response.
The Complaint further alleges that the NCAA Marks are famous and susceptible to “opportunistic bad faith”, as is the case here.
To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademark NCAA in respect of a wide range of athletic related goods and services. The Domain Name is confusingly similar to the trademark owned by the Complainant. The addition of the descriptive word “travel” to the well-known mark NCAA does not prevent a finding of confusing similarity. Therefore, the Domain Name could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and is being used in bad faith. That continued use of the Domain Name would lead to a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent by the Complainant, especially for competing goods and services. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(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 used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for NCAA. This holding is consistent with decisions made by other Panels, see National Collegiate Athletic Association and March Madness Athletic Association v. Cyberoad Corporation, WIPO Case No. D2000-1378 (January 16, 2001); National Collegiate Athletic Association v. Dusty Brown, WIPO Case No. D2004-0491 (August 30, 2004) (“In fact, given the widespread notoriety and reputation enjoyed by the NCAA, particularly since 1911 (i.e., continuously over the past 93 years), with respect to collegiate sports, notably football, it stands to reason and the Panel so finds that merely adding the term ‘football’ followed by a year designator to the Complainant’s mark NCAA would only exacerbate, rather than ameliorate, likely user confusion.”), and National Collegiate Athletic Association v. Rodd Garner and IntheZone.ws, WIPO Case No. D2000-0940 (November 7, 2000).
The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. Further, the Panel finds that the mere addition of the generic and/or descriptive term “travel” to the Domain Name does not change the overall impression of the designation as being connected to the trademark of the Complainant. It does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark. See Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598 (“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.’”, which in that case included the term ‘travel’ added to the well-known mark Nike). See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark.”
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks.
Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name.
Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Given the distinctiveness of the Complainant’s trademark and reputation, the Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Name with full knowledge of the Complainant’s trademark NCAA and uses it for the purpose of misleading and diverting Internet traffic. The addition of the dictionary term “travel” to the NCAA trademark in the Domain Name suggests the offer of travel management services in connection with the Complainant’s activities and programs.
The evidence that the Domain Name was originally registered under a “proxy service”, that the website first created by the Respondent referred specifically to travel associated with the NCAA and since then now resolves to an error page indicating that there is no website connected with the Domain Name, all support this Panel’s finding that that the Domain Name was registered and used in bad faith by the Respondent.
Given the evidence of the Complainant’s prior rights in the trademark, the timing of the registration of the Domain Name with apparent full knowledge of the Complainant, the Respondent’s non-response to the request for voluntary transfer of the Domain Name, as well as the other factors identified above, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <ncaatravel.com> be transferred to the Complainant.
Ellen B Shankman
Date: April 25, 2018