Complainant is the National Collegiate Athletic Association of Indianapolis, Indiana, United States of America, represented by Loeb & Loeb LLP, United States of America.
Respondent is Jimmy Clanton Jr of Atlanta, Georgia, United States of America. 2. The Domain Names and Registrar
The disputed domain names and are registered with Wild West Domains, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2012. On November 27, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 27, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the disputed domain names.
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 Respondent of the Complaint, and the proceedings commenced on December 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 10, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 14, 2013.
The Center appointed Gary J. Nelson as the sole panelist in this matter on January 23, 2013. 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 is the owner of at least seven United States trademark registrations for marks containing the words “final four” or equivalent. Specifically, Complainant owns at least the following trademark registrations in the United States:
Country
Reg. no.
Mark
Classes
Dates of Application and Registration
United States
1488836
FINAL FOUR
041
June 1, 1987
May 17, 1988
United States
2964266
FINAL FOUR
016; 018; 041
May 25, 2004
June 28, 2005
United States
2377720
FINAL FOUR
035
October 19, 1999
August 15, 2000
The disputed domain name appears to have been registered on November 19, 2008. The disputed domain name also appears to have been registered on November 19, 2008. Both of the disputed domain names correspond with operational websites with click-through advertising opportunities. 5. Parties’ Contentions A. Complainant
Complainant was founded in 1905 as an association of colleges and universities governing intercollegiate athletics in the United States, and has been using the FINAL FOUR mark in connection with its annual basketball tournaments since at least as early as 1977. Complainant has expanded its use of the FINAL FOUR mark and marks incorporating the words “final four” to many products and services.
Complainant owns numerous domain names incorporating the mark FINAL FOUR.
Over the years, Complainant and its licensees and marketing agents have invested heavily in marketing products and services under the FINAL FOUR mark, devoting many millions of dollars marketing products and services through a variety of media, including television, radio, magazines, newspapers and the Internet. Complainant’s FINAL FOUR basketball tournament is among the nation’s premiere sporting events, captivating millions of fans each year. Complainant’s FINAL FOUR tournaments generate nearly USD 75 million for the host regions each year.
Complainant’s FINAL FOUR mark is a famous trademark, and is recognized as a source identifier associated with Complainant by almost everyone.
Complainant acquired rights in the FINAL FOUR mark prior to the registration of the disputed domain names.
The disputed domain names are confusingly similar to Complainant’s FINAL FOUR mark.
Respondent has no rights or legitimate interests in the disputed domain names.
Respondent registered and is using the disputed domain names in bad faith.
Respondent was aware of Complainant and Complainant’s rights in the FINAL FOUR mark when Respondent registered the disputed domain names.
Respondent is using the disputed domain names as portals/parking web pages with links to affiliated third party websites. Many of these third-party websites are competitive to, but not affiliated with or connected to, Complainant or its FINAL FOUR tournaments. Some of the third-party websites are ticket re-sellers where Internet users will be able to purchase tickets to Complainant’s 2013 FINAL FOUR tournament.
Respondent is attempting to sell the disputed domain names.
Respondent registered the disputed domain names on the same day, November 19, 2008, that Complainant announced that the city of Atlanta, Georgia, United States, would be the location of the 2013 FINAL FOUR tournament. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents and submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of Respondent’s failure to submit a formal Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain names should be cancelled or transferred:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
Complainant has established that it owns prior rights in the FINAL FOUR mark and the disputed domain names are confusingly similar to Complainant’s FINAL FOUR mark.
Complainant owns at least three FINAL FOUR trademark registrations in the United States (i.e., Trademark Registration Nos. 1488836 and 2964266 and 2377720). The registration dates for all three of these FINAL FOUR marks pre-date the dates upon which the disputed domain names were registered.
Accordingly, Complainant has established rights in its FINAL FOUR mark pursuant to the Policy, paragraph 4(a)(i). See Janus International Holding Co. v. Scott Rademacher,WIPO Case No. D2002-0201 (finding that “the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption”).
The disputed domain names, and , are confusingly similar to Complainant’s FINAL FOUR mark. Both disputed domain names incorporate the entirety of Complainant’s FINAL FOUR mark and merely add a generic and/or geographic location (i.e., “Atlanta” and/or “in”) and a top-level “.com” domain suffix. Neither the addition of a purely descriptive/generic or geographic term to a well-known mark nor the addition of a generic top-level domain suffix is sufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity for purposes of the Policy. See Arthur Guinness Son & Co. (Dublin) Limited v. Tim Healy/BOSTH,WIPO Case No. D2001-0026 (finding confusing similarity where the domain name contains the identical mark of the complainant combined with a generic word or term); see also, Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409 (finding that “[n]either the addition of an ordinary descriptive word […] nor the suffix “.com” detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy, paragraph 4(a)(i) is satisfied).
Complainant has proven the requirement of Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Respondent has failed to file a formal Response, which in the opinion of the Panel can suggest, in appropriate circumstances, that Respondent lacks rights or legitimate interests in the disputed domain names. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse.,WIPO Case No. D2000-1221 (finding that the respondent’s failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no rights or legitimate interests in a domain name).
By not filing a formal Response, Respondent has not provided any evidence that it is commonly known by either of the disputed domain names, or that it is commonly known by any name consisting of, or incorporating the words “final,” “four,” “Atlanta,” “in” or any combination of these words. In Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interests could be found where (1) the respondent is not a licensee of the complainant; (2) the complainant’s rights in its related trademarks precede the respondent’s registration of the domain name; and (3) the respondent is not commonly known by the domain name in question. The Panel notes that by not submitting a formal Response, Respondent also failed to provide any evidence that it is a licensee of Complainant or that its registration of the disputed domain name predates the establishment of Complainant’s rights in its FINAL FOUR mark.
Complainant has provided unrebutted evidence showing that Respondent is operating websites at “www.” and “www.” that feature click-through opportunities to websites operated by Complainant’s competitors. Accordingly, the Panel concludes Respondent is using the disputed domain names in association with websites that compete directly with Complainant’s business interests. Furthermore, it is likely Respondent receives click-through fees each time an Internet user accesses the websites at the disputed domain names and and clicks on any of the numerous options available. The use of another’s well-known trademark for the purpose of deriving this type of commercial benefit is evidence that Respondent has no right or legitimate interest in the disputed domain names. See Delta Air Lines v. Web Marketing 360,WIPO Case No. DCO2012-0038; see also Ebay, Inc. v. EbayMoving / Izik Apo,WIPO Case No. D2006-1307 (Respondent’s use of the disputed domain name in connection with click-through advertisements pointing to other websites, including sites that compete with Complainant in offering related goods and services is not a bona fide offering of goods or services or a noncommercial or fair use).
Accordingly, the Panel concludes Respondent is not using either of the disputed domain names in association with a bona fide offering of goods and services pursuant to Policy, paragraph 4(c)(iii).
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
The Panel finds that Respondent registered and is using the disputed domain names in bad faith.
Respondent’s use of websites associated with the disputed domain names and and which provide click-through opportunities are actions taken by Respondent to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s FINAL FOUR mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites. This established activity is a direct violation of paragraph 4(b)(iv) of the Policy, and is evidence of bad faith registration and use. See also MpireCorporation v. Michael Frey,WIPO Case No. D2009-0258 (“while the intention to earn click-through revenue is not in itself illegitimate, the use of a domain name that is deceptively similar to a trademark to obtain click-through revenue is found to be bad faith use”); Paris Hilton v. Deepak Kumar,WIPO Case No. D2010-1364 (finding that using the domain name as a parking page with pay-per-click links to third party websites may be evidence of bad faith when the registrant is using the domain name in this manner because of the similarity to the complainant’s trademark in the hope and expectation that the similarity will lead to confusion on the part of Internet users and result in an increased number of Internet users being drawn to that domain name parking page).
Given that Complainant has been using its FINAL FOUR mark in association with collegiate basketball tournaments since 1977, and because Complainant has extensively advertised and promoted its FINAL FOUR tournament as the highlight of the end of the collegiate basketball season, the Panel concludes that the FINAL FOUR mark is widely known, and that Respondent likely chose the disputed domain names with full knowledge of Complainant’s rights in the FINAL FOUR mark. Supporting this conclusion is the uncontested allegation that Respondent registered the disputed domain names on the same day Complainant announced that the 2013 FINAL FOUR tournament would be hosted in the City of Atlanta. See Kraft Foods (Norway) v. Fredrik Wide and Japp Fredrik Wide,WIPO Case No. D2000-0911 (“the fact that Respondent chose [sic] to register a well-known mark to which he has absolutely no connections or rights indicates that he did not have good faith when registering the domain name [at issue]”).
Respondent’s awareness of Complainant’s FINAL FOUR mark may also be inferred because the mark was registered with the United States Patent and Trademark Office prior to Respondent’s registration of the disputed domain names and since, as indicated above, the FINAL FOUR mark is widely known. See T, Inc. v. Daniel Deamone,WIPO Case No. D2001-1066 (finding bad faith where the respondent had actual and constructive notice of the complainant’s trademarks registered in the United States).
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(iii). 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 disputed domain names and be transferred to Complainant.
Gary J. Nelson
Sole Panelist
Date: January 24, 2013
Full & Egal Universal Law Academy