Complainant is The National Collegiate Athletic Association of Indianapolis, Indiana, United States of America ("United States"), represented by Loeb & Loeb, LLP, United States (hereinafter referred to as "Complainant").
Respondent is S M, EXPRESS YOUR BRAND INC of San Antonio, Texas, United States (hereinafter referred to as "Respondent.") 2. The Domain Names and Registrar
The disputed domain names , , and are registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 6, 2016. On October 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 10, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 11, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. On the same date, Complainant filed an amended Complaint.
The Center verified that the Complaint together with the amended 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 October 12, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 1, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 2, 2016.
The Center appointed M. Scott Donahey as the sole panelist in this matter on November 11, 2016. 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 was founded in 1905 and is an association of colleges and universities overseeing intercollegiate athletics in the United States. Since at least as early as 1977, Complainant has used the service mark FINAL FOUR in connection with the final round of four surviving teams in its annual single-elimination basketball tournament. Complainant has three service marks registered with the United States Patent and Trademark Office, the earliest of which issued on May 17, 1988. Complaint, Annex 4. Complainant has registered several domain names which incorporate Complainant's FINAL FOUR mark or a variation thereof (i.e., "final 4"). Complainant has used and has licensed its service mark for use, and Complainant and its licensees have spent significant sums in the promotion of the service mark. Complaint, Annex 17.
On November 14, 2014, Complainant announced that the final four round of its tournament to be held in 2018 would be held in San Antonio, Texas, United States of America. Complaint, Annex 5. On November 15, 2014, Respondent registered the disputed domain names and well as two similar domain names which are not at issue in this proceeding. Complaint, Annexes 2 and 6.
On February 19, 2016, Complainant's counsel sent Respondent a cease-and-desist letter, demanding that Respondent cease all use of the disputed domain names and that Respondent transfer the disputed domain names to Respondent. Complaint, Annex 7. Respondent did not reply to the demand.
On March 17, 2016, Complainant's counsel sent another letter, iterating the demands made in its letter of February 19, 2016. Complaint, Annex 8.
On March 18, 2016, Respondent replied, stating that it had registered the disputed domain names in order to promote online its business, Final Four Vintages and Antiques, in San Antonio. Complaint, Annex 9.
No business by that name has been registered with the Texas tax authorities. Complaint, Annex 10.
On March 21, 2016, an apparent representative of Respondent initiated an exchange of emails with Complainant's counsel, in which Respondent indicated that it would transfer the disputed domain names to Complainant. Complaint, Annex 11.
On April 6, 2016, the apparent representative of Respondent countersigned the letter previously sent to Respondent by Complainant's counsel pursuant to which Respondent agreed to transfer the disputed domain names to Complainant and to cease and desist from infringing Complainant's service marks. Complaint, Annex 12. Complainant's counsel responded by sending Respondent's apparent representative instructions on how to effect the transfer of the disputed domain names. Complaint, Annex 13.
Despite follow-up communications from Complainant's counsel, Respondent has failed to make the transfers its apparent representative agreed to make. Complaint, Annexes 14 and 15.
The disputed domain names resolve to a WordPress website that contain no substantive content other than the following phrases: "PrefabTinyH"; "Redefining Living!"; "Nothing Found"; and "It seems we can't find what you're looking for. Perhaps searching can help.". Complaint, Annex 18. 5. Parties' Contentions A. Complainant
Complainant alleges that the disputed domain names are confusingly similar to Respondent's FINAL FOUR service mark, that Respondent has no rights or legitimate interests in respect of the disputed domain names, and that Respondent has registered and is using the disputed domain names in bad faith. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute:
"A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
2) that the respondent has no rights or legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain names incorporate Complainant's well-known registered FINAL FOUR service mark together with the name or initials of the city in which the 2018 Final Four phase of Complainant's annual basketball tournament will be held. Accordingly, the Panel finds that the disputed domain names are confusingly similar to Complainant's FINAL FOUR service mark. B. Rights or Legitimate Interests
The consensus view of WIPO panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore, a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview, 2.0"), Section 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain names and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain names. C. Registered and Used in Bad Faith
When confronted by the demands of Complainant's counsel, Respondent consented to the transfer of the disputed domain names. Respondent failed to effect the transfer. Moreover, the rights or legitimate interests advanced by Respondent for its registration of the disputed domain names, that it wished to establish an online presence for its business "Final Four Vintages and Antiques" located in San Antonio, Texas, was belied by a search conducted on the website of the tax authority of the State of Texas which did not list any such entity registered to do business in Texas. Moreover, given the fame and long-standing recognition of Complainant's association with the service mark FINAL FOUR, coupled with the timing of the registration of the disputed domain names with the announcement that Complainant's FINAL FOUR tournament round would be held in San Antonio in 2018, it is impossible to conceive of a legitimate use of the disputed domain names. Accordingly, the Panel finds that the disputed domain names have been registered and are being used in bad faith. 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.
M. Scott Donahey
Sole Panelist
Date: November 15, 2016
Full & Egal Universal Law Academy