WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
National Collegiate Athletic Association v. Worldof Phonesex, worldofphonesex.com
Case No. D2019-0760
1. The Parties
Complainant is National Collegiate Athletic Association, United States of America (“United States” or “U.S.”), represented by Loeb & Loeb, LLP, United States.
Respondent is Worldof Phonesex, worldofphonesex.com, United States.
2. The Domain Name and Registrar
The disputed domain name <marchmadnessphonesex.com> 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 April 3, 2019. On April 4, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 5, 2019, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact.
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 Respondent of the Complaint, and the proceedings commenced on April 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 7, 2019. Respondent did not submit any formal response. However, on April 24, 2019 Respondent sent an email stating, as follows:
“We consent to the remedy request by the Complainant and agree to transfer or cancel the disputed domain. Currently it’s locked by Godaddy.
Please provide the necessary transfer information so I can instruct Godaddy to make the transfer.
As a result, the Center sent an email regarding possible settlement on May 8, 2019. On May 9, 2019 Complainant requested the suspension of the proceeding for settlement discussions. The Parties did not reach a settlement and on June 20, 2019, Complainant requested that the Center “reinstitute the case and proceed to decision.” Accordingly, the Center notified Respondent about the reinstitution of proceeding on June 24, 2019.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on July 3, 2019. 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
Complainant, founded in 1906, organizes athletic programs for colleges and universities throughout the United States, as well as in Canada. As part of its activities and services, Complainant has, since 1982, offered a college basketball tournament under the mark MARCH MADNESS, which has since been referred to, by Wikipedia, as “one of the most famous annual sporting events in the United States.”
Complainant owns various United States trademark registrations for the MARCH MADNESS mark, including, among others, U.S. Registration No. 2485443 (Registered 2001) for services including basketball tournaments; U.S. Registration No. 2478254 (Registered 2001) and U.S. Registration No. 2425962 (Registered 2001) for goods including clothing; and U.S. Registration No. 3025527 (Registered 2005) for various telecommunication and Internet services.
Complainant also owns the registrations for various domain names that incorporate its MARCH MADNESS mark, including <marchmadness.com> which it uses to connect to a URL from which it refers consumers to information about its services. Complainant owns other domain names that include its MARCH MADNESS mark along with matter that describes its products and services, such as <marchmadnessmarketing.com> and <marchmadnessondemand.com>.
The disputed domain name <marchmadnessphonesex.com> was registered on February 27, 2009. At the time the Complaint was filed, Respondent was using the disputed domain name to post adult-content photos and links to adult-content sites. The website purports to offer information on helping users “find a phone sex girl for your March Madness needs.” The website also makes specific reference to the “college basketball” tournament. Respondent has no affiliation with Complainant, nor any license to use its marks.
5. Parties’ Contentions
Complainant contends that (i) <marchmadnessphonesex.com> is identical or confusingly similar to Complainant’s trademarks, (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
Specifically, Complainant contends that it is the owner of the mark MARCH MADNESS, which has achieved a degree of fame as one of the most anticipated annual sporting events in the United States. Complainant contends that Respondent has incorporated this mark in the disputed domain name and merely added the descriptive term “phone sex.” Complainant contends that Respondent lacks rights or legitimate interest in the disputed domain name, and rather has registered and is using it in bad faith, offering a commercial website.
As noted above, Respondent sent an email expressing “consent to the remedy” requested and agreeing to “transfer or cancel the disputed domain name.” No settlement was reached, however, and Respondent did not file a formal response to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
This Panel must first determine whether <marchmadnessphonesex.com> is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name incorporates in full Complainant’s registered mark, MARCH MADNESS, and combines it with the term “phone sex” which is descriptive of a service offering sexual content via the telephone or similar means.
Numerous UDRP panels have agreed that supplementing or modifying a trademark with descriptive words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph (4)(a)(i) of the Policy. See, for example, Microsoft Corporation v. StepWeb, WIPO Case No. D2000-1500 (transferring <microsofthome.com>); Wal-Mart Stores, Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0620 (transferring <walmartbenfits.com>); General Electric Company v. Recruiters, WIPO Case No. D2007-0584 (transferring <ge-recruiting.com>).
The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph (4)(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel next considers whether Complainant has shown that Respondent has no “rights or legitimate interest” as must be proven to succeed in a UDRP dispute. Paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that respondent has been “commonly known by the domain name”; or (iii) “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”.
No evidence has been presented to this Panel that might support a claim of Respondent’s rights or legitimate interests in the disputed domain name, and Respondent has not responded to the allegations of the Complaint other than to state consent to the remedy sought. The Panel finds that Complainant has provided sufficient evidence of Respondent’s lack of “rights or legitimate interests” in accordance with paragraph 4(a)(ii) of the Policy which Respondent has not rebutted.
C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph (4)(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] web site or location.”
As noted in Section 4 of this Panel’s decision, Respondent has been using the disputed domain name to post adult-content photos and links to adult-content sites. The website purports to offer information on helping users “find a phone sex girl for your March Madness needs.” The website also makes specific reference to the “college basketball” tournament. Respondent is thus trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain. This evidences bad faith by Respondent.
Other UDRP panels have found Complainant and its MARCH MADNESS mark to be well known. See National Collegiate Athletic Association and March Madness Athletic Association, L.L.C. v. Mark Halpern and Front & Center Entertainment., WIPO Case No. D2000-0700; March Madness Athletic Association, LLC v. Justin Handa, WIPO Case No. D2012-0138. Given the circumstances and the content of the website associated with the disputed domain name, the Panel finds that Respondent was undoubtedly aware of Complainant’s rights when registering and using the disputed domain name. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith in accordance with 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 disputed domain name <marchmadnessphonesex.com> be transferred to Complainant.
Date: July 14, 2019