WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
National Collegiate Athletic Association v. Rodd Garner and IntheZ
Case No. D2000-0940
1. The Parties
The Complainant is the National Collegiate Athletic Association, an unincorporated association, with place of business in Indianapolis, Indiana, United States of America (USA).
The Respondent is Rodd Garner and IntheZ, with address in San Diego, California, USA.
2. The Domain Names and Registrars
The disputed domain names are "", "", "", "" and "".
The registrar of the disputed domain names "", "", "" and "" is DirectNIC.com (T), with business address in Toronto, Ontario, Canada.
The registrar of the disputed domain name "" is BulkR, with business address in Baltimore, Maryland, USA.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
(a) Complainant initiated the proceeding by the filing of a complaint via e-mail, received by the WIPO Arbitration and Mediation Center ("WIPO") on August 3, 2000, and by courier mail received by WIPO on August 7, 2000. Payment by Complainant of the requisite filing fees accompanied filing of the complaint. On August 14, 2000, WIPO transmitted a Request for Registrar Verification to the registrar, DirectNIC.com with respect to all of the disputed domain names (with the Registrar�s Response received by WIPO on August 16, 2000). DirectNIC.com indicated that it was not the registrar of the disputed domain name "". On August 17, 2000, WIPO transmitted a Request for Registrar Verification to the registrar, BulkR with respect to the disputed domain name "". On August 24, BulkR confirmed to WIPO that it is the registrar of "".
(b) On August 16, 2000, WIPO notified Complainant that DirectNIC.com was not the registrar for "". On August 18, 2000, WIPO received via e-mail an amended complaint regarding the registrar of "" (with hardcopy received on August 21, 2000). This amended complaint was again amended because of a technical deficiency (with the amendment received via e-mail by WIPO on August 25, 2000 and via courier mail on August 29, 2000). The second amended complaint filed by Complainant was accompanied by a Supplemental Complaint. On August 24, 2000, WIPO completed its formal filing compliance requirements checklist.
(c) On September 4, 2000, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via registered mail, telefax and e-mail, including the Supplemental Complaint (referred to by WIPO as a "Supplemental Filing").
(d) On October 4, 2000, WIPO transmitted notification to Respondent of its default in responding to the complaint via registered mail, telefax and e-mail.
(e) On October 20, 2000, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On October 20, 2000, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.
(f) On October 25, 2000, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by November 8, 2000. On October 25, 2000, the Panel received an electronic file in this matter by e-mail from WIPO. The Panel subsequently received a hard copy of the file in this matter by courier mail from WIPO.
The Panel has not received any additional requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties (taking note of Respondent�s default in responding to the complaint). The proceedings have been conducted in English.
4. Factual Background
Complainant is the holder of multiple trademark and service mark registrations for the letter mark "NCAA" on the Principal Register of the United States Patent and Trademark Office (USPTO). These include trademark reg. no. 1790366, dated August 31, 1993, covering printed matter regarding athletic events; trademark reg. no. 1508377, dated October 11, 1988, covering sporting goods; trademark reg. no. 1483616, dated April 5, 1988, covering wearing apparel; trademark reg. no. 1728508, covering jewelry, writing instruments, tableware and video game cartridges, and; service mark reg. no. 0976117, dated January 1, 1974, covering association services, including sports promotion. (Complaint, Annex 3). Complainant�s mark is used in commerce in the United States in connection, inter alia, with the promotion of athletic events involving its members and the sale of sporting goods, inter alia, by corporate licensees (id., para. 15). Complainant�s mark is well known among collegiate sports enthusiasts in the United States (id., para. 11).
Complainant uses its registered mark in connection with hosting websites on the Internet at addresses "" and "" (id., para. 12).
According to the registrar�s verification response from DirectNIC.com, Respondent IntheZ is the registrant of the disputed domain names "", "", "" and "". The address for IntheZ is listed by the registrar as "pmb 110, 10299 scripps trail, san diego, ca 92131 US". The registrar indicates that the Policy applies to the registrant pursuant to its registration agreement. The registrar indicates that the record of the "" registration was created on May 31, 2000, and was last updated on August 14, 2000. A set of R WHOIS database printouts dated July 12, 2000, indicates that the records for "" and "" were also created on May 31, 2000, and that the record for "" was created on May 30, 2000 (Complaint, Annex 1).
According to the registrar�s verification response from BulkR, Respondent Rodd Garner is registrant of the disputed domain name "". The address for Rodd Garner is listed by the registrar as "pmb 110, 10299 scripps trail, san diego, ca 92131 US". The registrar indicates that the Policy applies to the registrant pursuant to its registration agreement. The registrar indicates that the record of this registration was created on April 20, 2000, and was last updated on April 20, 2000.
By fax-letter dated June 23, 2000, Complainant (through its counsel, Scott Bearby) demanded that Respondent Rodd Garner and IntheZ cease and desist from use of Complainant�s mark in the disputed domain names, and transfer the names to Complainant. By fax letter dated June 23, 2000, Respondent Rodd Garner replied to Complainant, stating, inter alia, "It is not the intention of (LBI) to use any registered marks of the NCAA for the purpose of gains without permission from the NCAA." Respondent added, "In the next couple of weeks, we intend to propose a Licensing agreement � that is beneficial to both the NCAA and ourselves." (Complaint, Annex 4). By fax-letter of June 28, 2000, Respondent Rodd Garner transmitted a proposal for licensing Complainant�s NCAA mark for use on sporting apparel and goods (id.). Complainant denied Respondent�s request for a licensing agreement (id., para. 15). By fax-letter of July 28, 2000, Respondent stated to Complainant:
"It has been brought to my attention that the wording of your letter dated 6-23-00 is misleading.
See on page 2 a request for TRANSFER of the Domain names that contain the letters NCAA.
It was understood by LBI to mean that the names NCAALOGO.com and NCAALOGOS.com was not to be used in association with the National Collegiate Athletic Association. This I can assure you.
Please be aware, these names will not be transferred to the NCAA for no compensation.
Should you, like anyone else, Desire to purchase the names, for a fair market value, you may make an offer in writing to LBI. The Current asking price is $5,000 each.
Sincerely,
Rod [stet] Garner" (Complaint, Annex 4)
Complainant�s Supplemental Complaint, which is accepted by the Panel solely in respect to factual matters arising since the initiation of this proceeding, includes additional correspondence from Respondent to Complainant. By fax-letter dated August 16, 2000, Respondent Garner states, inter alia, that:
"As of last night, a tentative agreement has been reached for sale of these Domains �
NCAAPICK.com
NCAALOGO.com
They are being sold to a party who has Corporate initials begining [stet] with the letters N.C.A. &A. They have nothing to do with Athletics or Education.
ONE further note � (You may consider?) �.. This OFFER TO BUY, of the Domain Names above, is for a period of 3 weeks and I have informed the other party of LBIs hopes of reaching an agreement with the National Collegiate Athletics Association.
If I am wrong, and we still do have a chance of reaching an agreement that would allow us to use these names in some association with your organization, we have held the rights to negate the sale. If not, the accepted offer will be honored and the names released.
�
Sincerely,
Rodd Garner" (Supplemental Complaint, Annex 3)
Respondent has listed the disputed domain names (with the exception of "") for sale at a web site with address "". Asking prices for the disputed domain names range from $1,000 to $10,000. Respondent IntheZ is the registrant of "" (Complaint, para. 14 and Annex 1).
The disputed domain names "", "", " and "" have recently been used by Respondent to automatically direct Internet users to websites at "" and "" (WIPO Case file, item 7). The latter website includes "View Four Pages of NCAA (Sports) Logos" along with the statement in small print "*This site is in no way related to the National Collegiate Athletic Association."
The Service Agreement in effect between Respondent and DomainNIC.com and Respondent and BulkR, subjects Respondent to DomainNIC.com�s and BulkR�s dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, para. 4(a)).
5. Parties� Contentions
A. Complainant
Complainant states in its own words:
11. "This Complaint is based on the following grounds: The National Collegiate Athletic Association (NCAA), founded in 1905, is an association of colleges and universities governing intercollegiate athletics in the United States. �NCAA� has been in use since 1910 in connection with the Association and since 1921 with annual national championships. �NCAA� is considered to be a famous mark worldwide, and the NCAA owns multiple trademark registrations including: United States Trademark Registration No. 976119, 1508377, 1728508, 1483616, 1790366. See Annex [hereto].
12. "�NCAA� has been used on the Internet at and to promote the Association and provide information for member institutions on the functions and programs of the NCAA.
13. "Rodd Garner and In The Zone.WS have registered several hundred domains according to the alphabetical list at , a site owned by the Respondents. Most of the eight pages of domains are generic, however many are confusingly similar or identical to trademarks, including: , , , and . Mr. Garner has also registered many domains infringing on the protected �Olympic� mark. This represents a pattern of registering domains that infringe on the trademark rights of others. Mr. Garner has registered five domains identical to famous trademark �NCAA� and confusingly similar to sites held by the NCAA. Mr. Garner�s use of the NCAA logo indicates he was aware of the official NCAA sites and the NCAA�s trademark rights when he registered and . In addition, the list of domains available for sale, located at /all_names.htm, gives a code value for the prices at which the Respondents wish to sell the domains. W is listed as for sale between $1000 and $2000, N is listed for sale between $2000 and $5000, and N and N are listed for sale between $5000-$10,000. This represents clear evidence of Mr. Garner�s intent to profit from NCAA trademarks and meets the definition of bad faith under ICANN Policy Paragraph 4(b).
14. "Mr. Garner�s registration of the disputed domains is a violation of the United States AntiCybersquatting Consumer Protection Act, 15 U.S.C. 1125(d). See also, Intermatic Inc. v. Toeppen, 947 F.Supp. 1227 (N.D. Ill. 1996) and Panavision v. Toeppen, 141 F.3d 1316 (9th Cir. 1998). Complainant cites as precedent WIPO Case No. D2000-0034, in which FIFA and ISL Marketing were able to have transferred domain names using the �WORLD CUP� trademark. Complainant also cites to ESPN Inc. v. Naughtya Page, LLC, NAF Case No. FA0094397. Respondent had registered ESPN.NET, ESPN2.COM, and ESPN2.NET. The Arbitrator found that such use constituted a false designation of origin �likely to cause confusion, mistake or deception as to (a) the affiliation, connection or association between Complainant and Respondent and (b) the sponsorship or endorsement of Respondent�s web site by Complainant.� See Rule 4(b)(iii).
15. "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 FINALFOUR.NET. Mr. Garner is not a Corporate Partner or licensed to use NCAA marks in any form. Mr. Garner has no rights or legitimate interests in the domain name at issue. Respondents sent a licensing proposal to the NCAA on June 28, 2000, after receiving a letter from the NCAA requesting transfer of the domains at issue and to cease using the NCAA logo on Respondents� web site. The NCAA denied Mr. Garner a licensing agreement. Shortly afterward, content appeared on and advertising a new business, Unprinted T.
16. "Complainants sent a letter to Mr. Garner on June 23. On June 27, 2000, the NCAA received a facsimile from Mr. Garner stating that the NCAA logo would be removed from the front page of his web site, . The logo still appears on the page /scoreboard.html and /intro.html as of August 3, 2000. See Annex 4. This creates the impression that Respondents are licensed to use the NCAA logo to promote their products. On July 27, the NCAA sent by Federal Express another letter requesting transfer of the infringing domains. On July 28, Mr. Garner sent by fax a letter denying transfer. In the letter, he stated, �should you, like anyone else, desire to purchase the names, for a fair market value, you may make an offer in writing to LBI. The current asking price is $5000 each. Sincerely, Rod Garner.�
17. "Based on the fax received on June 27, and his actions since then, Complainants believe that the actions of Mr. Garner show a bad faith intent to infringe on the trademark rights of the NCAA. Mr. Garner was aware of that the NCAA disapproved of the use of the NCAA logo and registration of the domain names. He has registered the domains to capitalize on the popularity of the �NCAA� mark and with intent to personally profit from such use. These domains should be transferred to the NCAA." (Complaint)
Complainant requests that the Panel ask the registrar to transfer the domain names
"", "", "", "" and "" from Respondent to it (id., para. 18).
B. Respondent
Respondent did not reply to Complainant�s contentions.
6. Discussion and Findings
The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. This sole panelist has in an earlier decision discussed the background of the administrative panel procedure, and the legal characteristics of domain names, and refers to this earlier decision for such discussion. (Footnote 1) The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., para. 2(a), Rules).
In this case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by WIPO. There is ample evidence in the form of confirmations of the sending of e-mail, telefax and registered mail that Respondent was notified of the complaint and commencement of the proceedings. (See Procedural History, supra).
As a threshold matter, the Panel determines that Rodd Garner and IntheZ will be treated as a single Respondent for purposes of this proceeding. The two names, used in connection with registration of the disputed domain names, employ the same mailing address in San Diego, California. In correspondence with Complainant, Respondent Rodd Garner has indicated that he exercises control over each of the disputed domain names. No evidence has been submitted to suggest that the two listed registrants refer to distinct legal entities or that, should they refer to distinct legal entities, these entities have different beneficial ownership. In light of the common registration information and pattern of conduct, the Panel will treat Rodd Garner and IntheZ as a single Respondent.
Complainant transmitted a Supplemental Complaint to WIPO and Respondent subsequent to the initiation of this proceeding. The Panel has determined that it will accept the Supplemental Complaint solely insofar as it furnishes evidence of events arising subsequent to the initiation of the proceeding, which events were in the control of Respondent.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) Respondent�s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent�s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
Because the Respondent has defaulted in providing a response to the allegations of Complainant, the Panel is directed to decide this administrative proceeding on the basis of the complaint (Rules, para. 14(a)), and certain factual conclusions may be drawn by the Panel on the basis of Complainant�s undisputed representations (id., para. 15(a)).
Complainant is the holder of trademark and service mark registrations for the letters "NCAA" in the United States and is using that mark in commerce (see Factual Background, supra). Complainant�s registration of the "NCAA" mark on the Principal Register at the USPTO establishes a presumption of its validity in U.S. law. (Footnote 2) The Panel determines that Complainant has rights in the trademark and service mark "NCAA". Based on the January 1, 1974, date of the earliest registration submitted in this proceeding, and without prejudice to whether Complainant may hold earlier-arising rights in the mark, the Panel determines that Complainant�s rights in the "NCAA" mark arose prior to Respondent�s earliest registration, on April 20, 2000, of one of the disputed domain names ("").
Complainant�s "NCAA" mark is well known among collegiate sports enthusiasts in the United States. Respondent�s repeated efforts to license Complainant�s mark supports Respondent�s knowledge of Complainant�s rights in the mark, and the well known character of the mark.
Respondent has registered the domain names "", "", "", "" and "". Each of these domain names (1) incorporates Complainant�s "NCAA" mark, (2) adds the generic top-level domain (gTLD) ".com", and (3) uses Complainant�s mark in lower case format while Complainant�s mark generally appears in an all-capital letter format. The domain names variously append "logo", "logos", "basketballchampion" and "pick" to the end of Complainant�s mark, except that one adds the prefix "w" to Complainant�s mark.
The addition of the generic top-level domain (gTLD) ".com" is without legal significance from the standpoint of comparing the disputed domain names to "NCAA" since use of a gTLD is required of domain name registrants, ".com" is one of only several such gTLDs, and ".com" does not serve to identify a specific enterprise as a source of goods or services. (Footnote 3) Insofar as domain names are not case sensitive, the Panel concludes that use of the lower case letter format in "ncaa"-formative domain names is without legal significance from the standpoint of comparing those names to "NCAA". (Footnote 4)
Respondent does not, by adding the descriptive terms "logo", "logos", "basketballchampion" and "picks" following "NCAA", create new or different marks in which it has rights or legitimate interests, nor does it alter the underlying mark held by Complainant. Similarly, the addition of the prefix "w", commonly used in sports terminology to refer to "women" or "women�s", does not create a new or different mark in which Respondent has rights or legitimate interests, nor does it alter the underlying mark held by Complainant.
The added terms "logo", "logos", "basketballchampion" and "picks", and the prefix "w", each relate to sports teams, sports apparel and/or sporting events. They are terms that users of the Internet would expect to be used by Complainant in connection with its mark. These terms, when combined with Complainant�s mark, create domain names that Internet users are likely to assume are associated with Complainant as a source of goods or services on the Internet. As such, the disputed domain names "", "", "", "" and "" are confusingly similar to Complainant�s mark within the meaning of paragraph 4(a)(i) of the Policy.
Complainant has met the burden of proving that Respondent is the registrant of domain names that are identical or confusingly similar to trademarks and service marks in which the Complainant has rights, and it has thus established the first of the three elements necessary to a finding that Respondent has engaged in abusive domain name registration.
Respondent�s only use of the disputed domain names has been in connection with activities hereinafter determined to be in bad faith. Bad faith use of domain names does not establish rights or legitimate interests in the names in the sense of paragraph 4(a)(ii) of the Policy.
Respondent has failed to establish rights or legitimate interests in the disputed domain names. Thus, Complainant has established the second element necessary to prevail on its claim that Respondent has engaged in abusive domain name registration.
The Policy indicates that certain circumstances may, "in particular but without limitation," be evidence of bad faith (Policy, para. 4(b)). Among these circumstances are (1) that the domain name has been registered or acquired by a respondent "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 [respondent�s] documented out-of-pocket costs directly related to the domain name" (Id., para. 4(b)(i)); (2) that a 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" (id., para. 4(b)(ii)), and (3) that a respondent "by using the domain name, � [has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [respondent�s] web site or location of a product or service on [its] web site or location" (id., para. 4(b)(iv)).
Respondent has offered the disputed domain names (with the exception of "") for sale to the public on a commercial website in the business of selling domain names. There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent.
In several earlier administrative proceedings conducted under the Policy, this sole panelist has determined that offers to sell to the public at large domain names that are identical or confusingly similar to marks of others may constitute bad faith within the meaning of paragraph 4(a)(iii) of the Policy. (Footnote 5) This is based on the nonexhaustive character of the express list of bad faith factors in paragraph 4(b) of the Policy, and the lack of a justification for awarding financial gain to persons for the mere act of registration of the marks of others. In the instant proceeding, Respondent has sought to profit from the mere registration of a well-known mark as domain names (in combination with descriptive terms). The Panel determines such registration and use to be in bad faith.
In addition to posting the disputed domain names for sale to the public, Respondent has directly offered the disputed domain names, including "", for sale to Complainant for a price substantially in excess of its costs related to the names. Respondent has indicated its awareness that Complainant is the holder of the "NCAA" mark, and that the mark could not be used by Respondent for its own commercial purposes without the consent of Complainant. Respondent was not entitled to sell those names to the public because of Complainant�s rights in the mark, and its decision to redirect its sales effort toward Complainant represented a last-ditch effort to profit from Complainant�s mark. Under these circumstances, the Panel determines that Respondent registered and used each of the disputed domain names in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
The Panel need not determine whether Respondent also acted in bad faith in the sense of other provisions of the Policy.
Complainant has established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration.
The Panel will therefore request the registrars to transfer the domain names "", "", "", "" and "" to the Complainant.
7. Decision
Based on its finding that the Respondent, Rodd Garner and IntheZ, has engaged in abusive registration of the domain names "", "", "", "" and "" within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain names "", "", "", "" and "" be transferred to the Complainant, National Collegiate Athletic Association.
Frederick M. Abbott
Sole Panelist
Dated: November 7, 2000
Footnotes:
1. See Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000.
2. 15 USCS � 1057(b). See, e.g., Avery Dennison v. Sumpton, 189 F.3d 868 (9th Cir. 1999).
3. See Sporty's Farm v. Sportsman's Market, 202 F.3d 489, 498 (2d Cir. 2000), citing Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036 (9th Cir. 1999). For purposes of its decision, the Panel need not address whether ".com" may be capable of acquiring secondary meaning in another context.
4. See Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036, 1055 (9th Cir. 1999).
5. See Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000; General Electric Company v. Online S, Inc., Case No. D2000-0343, decided June 19, 2000; General Electric Company v. John Bakhit, Case No. D2000-0386, decided June 22, 2000, and; Wal-Mart Stores, Inc. v. Kenneth E. Crews, Case No. D2000-0580, decided August 30, 2000.
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