WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
National Collegiate Athletic Association and March Madness Athletic Association, LLC v. Cyberoad Corporation
Case No. D2000-1378
1. The Parties
The Complainants are National Collegiate Athletic Association and March Madness Athletic Association, LLC of 700 West Washington Street, P O Box 6222, Indianapolis, IN46206, United States of America (by "the Complainant" reference will be made to either of the Complainants).
The Respondent is Cyberoad Corporation of Oficentro Sabana Sur, Edificio 7, 5 Piso, San Jose, Costa Rica and of 1380 Burrard Street, Suite 620, Vancouver, Canada
2. The Domain Names and Registrar
The domain names at issue are:
and the Registrar is Network Solutions, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center [the Center] received the Complaint on October 12, 2000 [electronic version] and on October 16, 2000 [hard copy]. The Center verified that the Complaint 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]. The Complainants made the required payment to the Center.
The formal date of the commencement of this administrative proceeding is October 20, 2000.
On October 13, 2000 the Center transmitted via email to Network Solutions, Inc a request for registrar verification in connection with this case and on October 17, 2000 Network Solutions, Inc transmitted by email to the Center Network Solution's verification response confirming that the registrant is Cyberoad Corporation and that the contact for both administrative and billing purposes is Calvex International Inc of 620-1380 Burrard Street, Vancouver, British Columbia V6Z 2H3, Canada.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on October 20, 2000 this Notification of Complaint and Commencement of the Administrative Proceeding.
The Center advised that the Response was due by November 9, 2000. On the same day the Center transmitted by fax and by mail copies of the foregoing documents to Cyberoad Corp. at, Oficentro, Sabana Sur Edifico 7, 5 Piso, San Jos�, Costa Rica, and at 1380 Burrard Street, Suite 620, Vancouver, British Colombia V6Z 2H3 ,Canada and to DNS Administration (DA 3996-org), Calvex International Inc, 620-1380 ,Burrard Street, Vancouver, British Columbia V6Z 2H3, Canada.
No Response was received from the Respondent by the due date of November 9, 2000. On December 12, 2000 Notice of Respondent Default was sent to the Complainants and to the Respondent using the same contact details and methods as were used for the Notification of Complaint and Commencement of the Administrative Proceedings. No reply by the Respondent to the Notification of the Respondent's Default was received.
Having received on January 4, 2001 Mr David Perkins' Declaration of Impartiality and Independence and his Statement of Acceptance, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr David Perkins was formally appointed as the Sole Panelist. The Projected Decision Date was January 18, 2001. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.
Having reviewed the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under para. 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondents". Therefore, the Administrative Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of any Response from the Respondent.
The Complaint was also originally filed against March Madness Athletic Association LLC of 2715 McGraw Drive, Bloomington, Illinois 61702, United States of America and against Mayan Sports/NCAATEAMSTORE.com of Box 642, Charlestown, Nevis, Kits and Nevis in respect of the following additional domain names in issue:
;
;
;
;
; and
On November 9, 2000 the Center received from the Complainants Notification of Settlement Agreement with those Respondents, which agreement was expressed not to affect the claims made by the Complainants against the Respondent, Cyberoad Corporation.
4. Factual background
4.1 The Complainants
The National Collegiate Athletic Association was founded in 1905. It is known as and is the owner of the trademark NCAA [see, Section 4.2 below]. The Complainant is a voluntary non-profit association of approximately 1,200 colleges, universities, and conferences that administer inter collegiate athletics in the United States. The Complainant administers 82 championships in 22 sports for its member institutions.
4.2 The Complainant's Trade Marks
The Complainant states that the abbreviation NCAA has been in use since 1910 in connection with the Association and since 1921 with annual national championships. The Complainant states that NCAA is considered a famous mark worldwide. The Complainant owns many trademark registrations including
Country
Registration No.
Mark
Class
Application & Registration Dates
United States
976,117 &119
NCAA
NCAA & logo
42
June 5, 1970
January 1, 1974
First use in commerce 1910 / 1911
United States
1,508,377
NCAA
28
August 10, 1987
October 11, 1988
United States
1,728,508
NCAA
14: 16: 21: 28
December 20, 1990
October 27, 1992
United States
1,843,616
NCAA
25
August 10, 1987
April 5, 1988
United States
1,790,366
NCAA
16
December 21, 1992
August 31, 1993
Annex 6 to the Complaint lists other trademarks, both registered and pending, where NCAA is the prefix in the mark including, for example, NCAA, BASKETBALL [US Registration Nos. 2,378,134: 136 and 138]
4.3 Use of the NCAA trade mark
4.3.1 CBS and ESPN broadcast NCAA tournament games in the United States. The Complainant's Division I Basketball Championships are also known as the FINAL FOUR. Coverage of the FINAL FOUR has been telecast globally since at least 1987. Basketball games during the 2000 FINAL FOUR were broadcast by ESPN Star TV [Asia]: Fox Sports [Latin America]: CTV Sports [Canada}: AB Sports [France]: DSF [Germany]: Orbit Communications [Middle East]: Europa TV [Italy]: Cine 5 [Turkey]; and Disney Cruise Line.
4.3.2 The Complainant states that it has been working to protect its trademarks, including the NCAA mark, from dilution in the United States and worldwide by a cease and desist campaign.
4.3.3 The Complainant licenses the NCAA trademark to corporate partners, which has raised funding to benefit college athletics and to conduct 82 championships for men and women student athletes each year.
4.3.4 The Complainant maintains a corporate partner program with Host Communications and 17 of America's top corporations. Corporate partners such as General Motors: Pepsi: American Express: Continental Airlines: Gillette: Hershey's: International Paper: Kraft: Marriott: Ocean Spray: Pennzoil: Sears: Phoenix Wealth Management: Rawlings; and Tricon [Kentucky Fried Chicken: Taco Bell; and Pizza Hut] support the Complainant's youth program, providing funding, personnel and expertise to benefit inter collegiate athletics in return for sponsorship and licensing agreements with NCAA championships and rights to use NCAA trade marks. Total Sports, licensed by the Complainant, maintains many internet sites with content promoting NCAA championships.
4.4 The Complainant's anti-gambling campaign
4.4.1 The Complainant states that it has been working with the US Congress to pass Anti-Gambling legislation that would bar gambling on inter collegiate athletics, including internet gambling companies from taking bets on college sports. Arizona Senator John McCain is a sponsor of Senate Bill 2340, the Amateur Sports Protection Act. The House version HR 3575, the College Sports Integrity Act, is stated to have been moving in October 2000 [when the Complaint in this Administrative proceeding was made] to the floor of the House for consideration.
4.4.2 The Complainant opposes all forms of legal and illegal sports wagering. It takes the position that sports wagering has the potential to undermine the integrity of sports contests, and jeopardizes the welfare of student athletics and the inter collegiate athletics community. The Complainant considers that sports wagering demeans the competition and competitors alike by a message that is contrary to the purposes and meaning of sport. It take the view that sports competitors should be appreciated for the inherent benefits related to participation of student athletics, coaches and institutions in fair contests, not the amount of money wagered on the outcome of the competition.
4.5 The Respondent
4.5.1 The Complainant states that the Respondent is a Florida Corporation with its principal address in San Jos�, Costa Rica and a mailing address in Vancouver, Canada. Mayan Sports, doing business as The Mayan Sportsbook and Casino and NCAATEAMSTORE.com, is said by the Complainant to be a joined entity with the Respondent. The Mayan Sportsbook and Casino is stated to be a licensee of the Respondent. The Complaint exhibits evidence of a direct web link between and .
4.5.2 The Respondent's website, describes the Respondent as
"� a world leader in the development of sports book, casino and e-Commerce software, as well as distributed network systems. C has � created a comprehensive, verifiable events (sports) wagering system � . Also, the company has developed a fully integrated gaming and transaction-processing center in San Jos�, Costa Rica. Through this fully distributed system, provides its gaming clients with an uninterrupted flow of real-time wagering and global sporting event results � ."
4.5.3 The Complainant states that the Respondent is neither a corporate partner or is it licensed to use the NCAA trademarks in anyway. As evidence of unauthorised use of its NCAA trademarks, the Complaint exhibits screen prints from the websites to which two of the domain names in issue resolve, namely and . Those prints contain advertisements from offering free US$10 bets on NCAA basketball and football games.
4.5.4 In default of a Response, the Panel has no other information relating to the Respondent and its activities than those identified above.
5. The Parties' Contentions
5.1 The Complainant
The Complainant contends that the 8 domain names in issue are confusingly similar to the Complainant's NCAA trade marks, that the Respondent has no rights or legitimate interests in respect of those domain names and that they were registered and are being used in bad faith.
5.2 The Respondent
No Response has been submitted by the Respondent. In the absence of a Response, the Panel shall decide the dispute based upon the Complaint [Rules, paragraph 5(e)]. Further, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement, under the Rules, the Panel shall draw such inference therefrom as it considers appropriate [Rules., paragraph 14(b)].
6. Discussion and Findings
6.1 Under paragraph 4a of the Policy, the Complainant must move three distinct elements in order to succeed with a claim for transfer of a domain name, namely:
- that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- that the Respondent has no rights or legitimate interests in respect of the domain name; and
- that the domain name has been registered and is being used in bad faith.
6.2 Identical or Confusingly Similar
6.2.1 The Complainant's case is that the domain names in issue are being used by the Respondent to attract internet users to it by creating a likelihood of confusion as to the source or affiliation of its business.
6.2.2 The 8 domain names in issue use the prefixes betting (as to 2 of the domain names); gambling (as to 3) and wager (as to the remaining 3).
6.2.3 6 of the 8 domain names use a suffix descriptive of the sporting activity in question, namely basketball (as to 3 of the domain names) and football (as to 3). The other 2 have ncaa, the Complainant's trade mark as the suffix.
6.2.4 Each of the 6 domain names (referred to in the preceding paragraph) include the Complainant's NCAA trademark between the descriptive prefix and the descriptive suffix.
6.2.5 The Policy does not lay down any test for confusing similarity in paragraph 4a(i). The Rules provide that the Panel shall decide a Complaint on the basis, inter alia, of any rules and principles of law that it deems applicable. [Rules, paragraph 15(a)].
6.2.6 European trade mark law requires that where the mark and the sign complained of are not identical, to succeed the trademark owner must show
"a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trade mark"
[Art. 5(1)(b) of the European Trade Mark Directive]
As regards the jurisprudence of European law on the issue of likelihood of confusion, the European Court of Justice has now repeatedly held that the stronger the distinctive character and reputation of a particular mark, the easier it will be to establish likelihood of confusion and detriment to that mark: Sabel B.V. .v. Puma A.G. [1998] RPC 199: Canon .v. MGM [1999] RPC 117; the Lloyd Schufabrik case [1999] All ER (EC) 587; and General Motors .v. Yplon [1999] All ER (EC) 865. Other principles, for example unfair competition, may be equally applicable.
6.2.7 In this case, the Complainant is a United States entity and the NCAA athletics activities with which the domain names in issue are concerned are performed in the United States.
The Complainant, understandably, relies upon the US Anti-Cybersquatting Consumer Protection Act, 15 USC 1125(d), which was enacted in 1999 to provide a cause of action against a person or company that has registered domain names infringing trademarks. In this connection, the Complainant cites the decision of the US 9th Circuit Court of Appeal in Panavision International .v. Toeppen which concerned 15 USC 1125(c). The Court held that use by Toeppen of the famous PANAVISION mark in the domain name for a website displaying photographs of the City of Pana, Illinois amounted to commercial use in commerce within the meaning of that section and entitled Panavision to an injunction to restrain such use. The Court found that Toeppen was engaged in a scheme to register trademarks, including PANAVISION, for the purpose of extorting money from the owner of the famous mark. The TOEPPEN case has been applied in a number of decisions under the Policy.
6.2.8 Each of the 8 domain names in issue incorporates the Complainant's famous NCAA trademark. Although the Complaint exhibits no evidence of actual confusion, the Panel takes the view that it is the NCAA mark which constitutes the distinctive element of each of the domain names. Given the notoriety of that mark, the Panel is satisfied that members of the public are likely either to be confused into believing (erroneously) that the websites are those of the Complainant Association or that those sites are in some way affiliated with or authorised by the Association. The Panel finds that the Complainant succeeds in establishing the requirement of paragraph 4a(i) of the Policy.
6.3 Rights or Legitimate Interest
6.3.1 On the facts set out in the Complaint, there is no indication that the Respondent could bring itself within any of the circumstances set out in paragraph 4c of the Policy which demonstrates rights or legitimate interests to the domain names in issue or any of them.
6.3.2 Further, the Complainant states that it has not licensed or otherwise authorised the Respondent to use the NCAA trademark [see, paragraph 4.5.3. above].
6.3.3 The Panel finds that the Complainant succeeds in establishing the requirement of paragraph 4a(ii) of the Policy.
6.4 Registration and Use in Bad Faith
6.4.1 Paragraph 4a(iii) of the Policy requires that the Respondent's domain names must both have been registered and be being used in bad faith. Both requirements must be met.
6.4.2 Paragraph 4b of the Policy sets out circumstances which, if found by the Panel to be present, "� shall be evidence of the registration and use of a domain name in bad faith.".
6.4.3 Those circumstances include:
- registering the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name where the Respondent has engaged in a pattern of such conduct; or
- using the domain name so as intentionally to attract, for commercial gain, internet users to the Respondent's web site, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the respondent's web site or service on that web site.
6.4.4 The Complaint points to the fact that the Respondent has registered over 50 domain names including
;
;
; and
The Complainant states that this represents a pattern of registering domain names infringing third party trademarks. The Complainant states that, to the best of its knowledge, the Respondent has no agreements with the National Football League [NFL]; the National Basketball Association [NBA]; the National Hockey League [NHL]; or the International Speedway Corporation [NASCAR] authorising registration in connection with the Respondent's gambling business. The Respondent has failed to file any Response and the Panel draws the inference that there are, in fact, no such authorisations.
6.4.5 The Complainant cites WIPO Case D2000-0113 The Stanley Works and Stanley Logistics Inc .v. Camp Creek Co, which concerned the well known trademarks BOSTITCH and STANLEY, where the Respondent had also registered the trademarks of another well known manufacturer of fastening tools, Senco Products Inc.
6.4.6 The Complainant also cites WIPO Case D2000-0034 in which ISL Marketing and The Federation Internationale de Football Association [FIFA] succeeded in obtaining transfer of some 13 domain names incorporating the WORLD CUP trademark. The Panel in that case found a pattern of conduct by the Respondent warehousing for his own use a large number of domain names using the words WORLD CUP so as to prevent the owners, ISL and FIFA, from reflecting their WORLD CUP trademark in a corresponding domain name.
6.4.7 The Complainant in relation to paragraph 4b(iv) of the Policy cites NAF Case FA0004000094397 ESPN Inc .v. Naughtyapage LLC. The Respondent had registered ; ; and . The Panel found that the Respondent's domain names
"� which are identical to Complainant's ESPN marks are misleading the consuming public as to the source and origin of the services it is selling and suggests affiliation with the Complainant that it does not have."
The Complainant's ESPN and ESPN2 sports television cable networks covered almost every sport, including National Football League [NFL], and NCAA Football, numerous other NCAA championships etc.
6.4.8 The Complainant cites Decisions in other WIPO cases, which do not materially add to the principles that can be derived from those cases cited above where comparable fact situations to this Case were involved.
6.4.9 The Panel has found that the Respondent has no rights or legitimate interests in the domain names in issue. The Respondent's use of those domain names against the background of the Complainant's anti-gambling campaign and publicly stated position on that issue [see, paragraphs 4.4.1 and 2 above] cannot amount to use in connection with a bona fide offering of services. Nor can such an activity be bona fide when, as here, it is likely to amount to infringement of the Complainant's trademark rights.
6.4.10 Further, the Panel is satisfied that the Complaint establishes the circumstances evidencing registration and use in bad faith of paragraph 4b(ii) and (iv) [see, paragraph 6.4.3. above]. The Panel, therefore, finds that the Complainant succeeds in establishing both limbs of paragraph 4a(iii) of the Policy.
7. Decision
For all the foregoing reasons, the Panel decides that the Complainant has satisfied each of the three elements of paragraph 4a of the Policy and accordingly the Panel directs that the domain names:
be transferred to the Complainant.
David Perkins
Sole Panelist
Dated: January 16, 2001
Full & Egal Universal Law Academy