The Complainant is March Madness Athletic Association, LLC of Indianapolis, Indiana, United States of America, represented by Loeb & Loeb, LLP, United States of America.
The Respondent is Justin Handa of Lincoln, Nebraska, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2012. On January 26, 2012, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the Domain Name. On January 26, 2012, GoD, LLC, transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the Domain Name.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 30, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 19, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 20, 2012.
The Center appointed Michelle Brownlee as the sole panelist in this matter on March 1, 2012. 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 Complainant owns United States Trademark Registration Numbers: 1,571,340 for the mark MARCH MADNESS in connection with “entertainment services, namely, presentation of athletic and entertainment personalities in a panel forum,”; 2,425,958 for the mark MARCH MADNESS in connection with basketballs and basketball backboards; 2,485,443 for the mark MARCH MADENESS in connection with “entertainment in the nature of basketball tournaments between college teams,” and a number of other United States Trademark Registrations for the mark MARCH MADNESS in connection with a wide variety of goods and services.
The Respondent registered the Domain Name on January 26, 2006. 5. Parties’ Contentions A. Complainant
The Complainant owns and controls all rights in the MARCH MADNESS family of trademarks. Collectively, the Complainant and its partners and licensees (including the National Collegiate Athletic Association (“NCAA”)) have, since at least as early as 1982, used the MARCH MADNESS mark in connection with basketball tournaments, and have expanded their use of the MARCH MADNESS mark to a wide variety of products and services.
The NCAA’s MARCH MADNESS Men’s Basketball Tournament is one of the world’s premiere sporting events, captivating international audiences for weeks each year. The NCAA authorizes a select group of corporations to market their products and services utilizing the MARCH MADNESS college basketball tournaments and their related intellectual property, and only authorized corporate affiliates are permitted to use the MARCH MADNESS mark.
The Complainant and its licensees have invested heavily in marketing products and services under the MARCH MADNESS mark, 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. As a result of the Complainant’s marketing and sales success and that of its licensees, including the NCAA, the MARCH MADNESS marks has become famous trademarks that are immediately recognizable.
In connection with their online promotional and marketing efforts, the Complainant and its licensees, including the NCAA, own numerous domain names incorporating the MARCH MADNESS marks, including but not limited to: , and . The Complainant and the NCAA have successfully brought several UDRP proceedings against wrongful registrants of domain names incorporating the MARCH MADNESS mark.
In December 2011, the Complainant discovered that the Respondent was using the Domain Name to host a commercial web site that allows visitors to host private tournament pools for the NCAA MARCH MADNESS basketball tournament. The website at the Domain Name featured banner advertisements and other advertising, including sponsored links that generate revenue for the Respondent. The web site displayed the title “MARCH MADNESS LIVE” prominently at the top of the page, and also used a logo that is a registered trademark of the Complainant. On December 16, 2012, counsel for the Complainant sent a letter to the Respondent requesting that the Respondent cease and desist from using the MARCH MADNESS mark and that the Respondent transfer the Domain Name to the Complainant. No response was received. Sometime after December 16, 2011, the Domain Name began to resolve to a website that displaying a notice that states access is forbidden.
The Complainant contends that the Domain Name is confusingly similar to the Complainant’s MARCH MADNESS mark, that the Respondent does not have rights to or legitimate interests in the Domain Name and that the Domain Name was registered and is used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:
(1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns rights in the MARCH MADNESS trademark. There are many UDRP decisions that find that the pairing of a distinctive trademark with less distinctive terms is confusingly similar to the distinctive trademark. See, e.g., MasterCard International Incorporated v. Michael J Yanda, Indy Web Productions,WIPO Case No. D2007-1140; Parfums Christian Dior v. 1 Netpower, Inc.,WIPO Case No. D2000-0022 ( and confusingly similar to CHRISTIAN DIOR); Toyota Motor Sales USA v. Rafi Hamid dba ABC Automobile Buyer,WIPO Case No. D2001-0032 ( and confusingly similar to LEXUS).
Accordingly, the Panel finds that the Domain Name, which pairs the distinctive MARCH MADNESS trademark with the less distinctive term “live”, is confusingly similar to the Complainant’s MARCH MADNESS trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent can demonstrate rights to or legitimate interests in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name at issue in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark at issue.
In this case, the Respondent has not presented evidence that the Respondent used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services, that the Respondent is commonly known by the Domain Name or that the Respondent is making a legitimate noncommercial or fair use of the Domain Name, or in any other way refuted the Complainant’s prima facie case.
The evidence presented by the Complainant shows that the Respondent has used the Domain Name to offer services that allow others to conduct pools regarding the NCAA MARCH MADNESS basketball tournament. The Respondent’s web site has used the Complainant’s MARCH MADNESS and an associated logo prominently on the site to create an association with the NCAA MARCH MADNESS tournament without authorization from the Complainant.
Accordingly, the Panel finds that the Respondent has no rights to or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name at issue 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 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 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 its web site or location or of a product or service on its web site or location.
The Panel finds that here the Complainant has established bad faith under paragraph 4(b)(iv) of the Policy. The Respondent’s use of the Domain Name to attract Internet users to the website associated with the Domain Name creates confusion as to the Complainant’s sponsorship or endorsement of or affiliation with the Respondent’s site and presumably results in commercial gain to the Respondent due to the advertising banners and sponsored links that are displayed on the site. 7. Decision
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 be transferred to the Complainant.
Michelle Brownlee
Sole Panelist
Dated: March 11, 2012
Full & Egal Universal Law Academy