The Complainant is National Collegiate Athletic Association, United States of America (“United States”), represented by Loeb & Loeb, LLP, United States.
The Respondent is Domains By Proxy, LLC Unite States / Robert Wilson, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2019. On April 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 30, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 1, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 2, 2019.
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 the Respondent of the Complaint, and the proceedings commenced on May 7, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 27, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 28, 2019.
The Center appointed Evan D. Brown as the sole panelist in this matter on June 13, 2019. 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 is a member-led organization that regulates intercollegiate athletics in the United States. Every year during March and April, the Complainant organizes and executes the men’s single-elimination basketball tournament that features a select number of collegiate institutions to determine the national champion for that year. Since at least as early as 1982, people have referred to the tournament and the excitement that surrounds it as “March Madness”. Apparently recognizing the marketing value of that term, the Complainant has secured many trademark registrations containing those words, including, for example, United States Reg. No. 2485443, issued on September 4, 2001 for MARCH MADNESS.
The Respondent, without authorization of the Complainant, registered the disputed domain name on February 2, 2012. It used the disputed domain name to set up a web site that that features the titles “March Money Madness” and “Welcome to March Money Madness 2018!” The website promotes the “March Money Madness Bracket Challenge” which “works just like predicting winners in the college basketball bracket, but in this competition you pick the winner of a matchup between two stocks!” Even after the Complainant sent a cease-and-desist letter, the website remained active. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s registered trademark; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely, that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
The Complainant has succeeded under all three of these elements. A. Identical or Confusingly Similar
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. See, Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen,WIPO Case No. D2014-0657. The Complainant has demonstrated its rights because it has shown that it is the owner of the registered mark MARCH MADNESS as noted above.
The Panel also finds that the disputed domain name is confusingly similar to the MARCH MADNESS mark. Though the word “money” splits the mark in two, the presence of that word does not eliminate the confusing similarity.
The content of a website associated with a disputed domain name is usually disregarded by panels when assessing confusing similarity under the first element. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.15. In some instances, however, panels have taken note of the content of the website associated with a disputed domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name. Id. This case presents such an instance. The content of the Respondent’s website clearly shows a targeting of the Complainant’s MARCH MADNESS trademark.
Accordingly, the Panel finds the Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests
The Complainant will be successful under this element of the Policy if it makes a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name, and if that prima facie showing remains unrebutted by the Respondent. The Complainant asserts, among other things, that:
- The Respondent is not related to, affiliated or connected with the Complainant in any way.
- The Complainant also has never licensed or authorized the Respondent to use the MARCH MADNESS mark, or to register any domain name incorporating the MARCH MADNESS mark.
- There is no evidence that the Respondent is using or preparing to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name within the meaning of paragraph 4.c.(i) or (iii) of the Policy. Instead, the Respondent has registered and used the disputed domain name to offer a “March Money Madness” bracket challenge on its website. The website prominently uses the Complainant’s registered trademarks to create an association with the Complainant and its basketball tournament without an authorization from the Complainant.
- There is no evidence that the Respondent has been known by the name “March Madness”.
The Respondent has not answered the Complainant’s assertions, and, seeing no basis in the record to overcome the Complainant’s prima facie showing, the Panel finds that the Complainant has satisfied this second Policy element. C. Registered and Used in Bad Faith
Under these facts, it is clear that the Respondent was aware of the Complainant’s MARCH MADNESS mark when it registered the disputed domain name, and that it did so with bad faith. The Complainant’s MARCH MADNESS mark was well known in 2012 when the disputed domain name was registered. And the content of the website that the Respondent set up at the disputed domain name – including references to sports brackets – makes it impossible to conclude registration was made without knowledge of the MARCH MADNESS mark.
The Respondent likewise used the disputed domain name in bad faith by using it to redirect to a website unconnected with the Complainant. The Panel finds that this use of the disputed domain name was an attempt to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the MARCH MADNESS mark as to the source, sponsorship, affiliation, or endorsement of the website. For these reasons, the Complainant has satisfied the third element of the UDRP. 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 name be transferred to the Complainant.
Evan D. Brown
Sole Panelist
Date: June 27, 2019
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