Complainant is National Collegiate Athletic Association, United States of America (“United States”), represented by Loeb & Loeb, LLP, United States
Respondents are WhoisGuard Protected, WhoIsGuard Inc., Panama / Robert Parsons, Divaz (collectively, “Respondent”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2020. On February 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 13, 2020, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 5, 2020. On February 14, 2020, and March 17, 2020, the Center received email communications from Respondent. On March 17, 2020, the Center sent an email communication to the Parties regarding possible settlement. Complainant did not request suspension of the proceeding. On March 27, 2020, the Center received another email communication from Respondent. None of the responses submitted by Respondent were substantive, addressing the merits of the Complaint. On March 31, 2020, the Center informed the Parties that it would proceed to appoint the Panel. The Center appointed Harrie R. Samaras as the sole panelist in this matter on April 2, 2020. 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 National Collegiate Athletic Association or “NCAA” governs intercollegiate athletics in the United States. Complainant organizes the athletic programs of many colleges and universities in the United States and Canada. It created three divisions to align like-minded colleges and universities in the areas of philosophy, competition and opportunity. In 1939, Complainant created a single-elimination basketball tournament played each spring in the United States, currently featuring 68 college basketball teams from the Division I level schools, to determine the national championship (the “Tournament”). The Tournament is referred to as the MARCH MADNESS Tournament, because it is played mostly during March. The event is widely covered by news media. Complainant owns various trademark registrations for the MARCH MADNESS Mark (or “the Mark”) (e.g., United States Trademark Registration No. 1,571,340, registered December 12, 1989) in connection with its annual basketball tournaments since at least as early as 1982, and has expanded its use of the Mark and marks incorporating the Mark to various products and services. Complainant also maintains an active Internet presence and maintains websites at domain names incorporating the MARCH MADNESS Mark including, but not limited to Complainant and its licensees and marketing agents have invested heavily in marketing products and services under the MARCH MADNESS Mark, devoting many millions of dollars toward marketing products and services through media including, television, radio, magazines, newspapers, and the Internet. This has resulted in the Mark becoming well known and recognizable as identifying Complainant and its member institutions, as well as Complainant’s tournaments and related products and services in the United States. Respondent registered the Domain Name on January 30, 2017. The website associated with the Domain Name (“Respondent’s Website”) promotes the DivaKiniz 2020 March Modness modeling contest which is set up just like Complainant’s MARCH MADNESS Tournament. The contest also ends in March to coincide with Complainant’s Tournament. Complainant located a document called “March Modness Sponsor Proposal Pages” in which Respondent was “seeking an investment of [USD] 444,300 to cover all operating expenses to launch our first annual online contest March Modness”. The document explains that “March Modness is set up very much like the NCAA’s March Madness with the difference being that we use our 64 models instead of basketball teams”. Complainant sent Respondent a cease and desist letter on January 9, 2020, demanding that Respondent deactivate the Domain Name and transfer its ownership to Complainant. Respondent replied via email on January 10, 2020 acknowledging receipt of the letter and indicating they would not “just hand over” the Domain Name. Respondent demanded a payment of [USD] 4,000,000 to transfer the Domain Name to Complainant. The Domain Name has remained active even after Complainant sent its cease and desist letter, though it appears there is no active competition hosted by the website. Since receipt of the cease and desist letter, Respondent’s website has been altered to remove references that expressly associated Respondent with Complainant, the MARCH MADNESS Tournament, and other marks owned by Complainant. Respondent also included the following disclaimer to its website: “Legal Disclaimer: Divaz, March Modness or any of their affiliated websites hold no association or relationship with the N.C.A.A., March Madness, or any of their affiliates. Under no circumstances is this contest associated or affiliated with the N.C.A.A. or March Madness or any affiliates associated with them”. 5. Parties’ Contentions A. Complainant The Domain Name Complainant has never licensed or authorized Respondent to use the MARCH MADNESS Mark or to register any domain name confusingly similar to the Mark. Without such permission, no actual or contemplated bona fide or legitimate use of the Domain Name could reasonably be claimed. Complainant is not aware of Respondent’s use of the MARCH MADNESS Mark before Complainant adopted and used it. There is no evidence Respondent is using or preparing to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the Domain Name within the meaning of the Policy. Instead, Respondent registered and used the Domain Name to promote a modeling contest utilizing the competition brackets and similar names for the rounds of competition, for which the MARCH MADNESS Mark is known, to create an association between Respondent and Complainant. The competition does not appear to have launched despite Respondent’s promotion of a competition beginning in January. Respondent has not provided any indication that “March Modness” has any independent meaning apart from the confusing similarity to Complainant’s MARCH MADNESS Mark. Also, there is no evidence that Respondent has been known by the name “March Modness”. The Identified Respondents were listed as “Robert Parsons a/k/a Hunter Cole, and Divaz Inc.” in the registrant field of the WhoIs record for the Domain Name. Therefore, the WhoIs information contains no evidence that Respondent is commonly known by the name “March Modness”. Respondent is using the MARCH MADNESS Mark in bad faith for the following reasons: (1) Respondent has kept the Domain Name primarily for the purpose of selling it to Complainant for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the Domain Name; (2) by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s Website, by creating a likelihood of confusion with the Mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or the adult services promoted on the website; and (3) Respondent knew of Complainant’s rights in the MARCH MADNESS Marks before registering the Domain Name. First, Respondent was put on notice of Complainant’s rights in the Mark and Complainant’s objection to Respondent’s use and registration of the Domain Name through their cease and desist letter. In response, Respondent indicated that it would remove Respondent’s website’s contents but refused to transfer the Domain Name. Instead, Respondent demanded USD 4,000,000 in violation of the Policy. Second, registering a domain name that is confusingly similar to a famous trademark by an unaffiliated entity, as Respondent did here, can by itself, create a presumption of bad faith. Respondent has registered and used the Domain Name in bad faith because it seeks to cause confusion and attract, for commercial gain, Internet users to Respondent’s Website. Specifically, Internet users seeking the MARCH MADNESS Mark may inadvertently find themselves at Respondent’s website. Further, as discussed above, Respondent does not have any rights or legitimate interests in the Domain Name. Also, given the fame of Complainant’s MARCH MADNESS Mark, there is no conceivable good faith use of the Domain Name by Respondent. Respondent registered the Domain Name in bad faith because it knew of Complainant and its rights in the Mark before registering the Domain Name as evidenced in Respondent’s promotional materials and can be inferred from the structure and timing of the competition, including Respondent’s use of the “Sexy 16”, “Outstanding 8” and “Foxy 4” monikers. Furthermore, Respondent clearly had actual knowledge of Complainant’s rights after it received the cease and desist letter. B. Respondent Respondent did not submit a formal Response. 6. Discussion and Findings A. Identical or Confusingly Similar Complainant has provided uncontroverted evidence of its rights in the MARCH MADNESS Mark by means of the aforementioned trademark registration. It is common practice under the Policy to disregard generic Top-Level Domains (“gTLDs”) such as the “.com”, “.net” and “.org” portion of domain names for the purposes of determining confusing similarity under paragraph 4(a)(i) of the Policy. See, e.g., Turkcell Iletisim Hizmetleri A.S. v. kara tara,WIPO Case No. D2010-1184. Insofar as the Domain Name wholly incorporates the MARCH MADNESS Mark, the Panel finds that it should be regarded as at least confusingly similar to Complainant’s Mark. Merely adding a minor misspelling or typographical error of a mark – here, substituting “o” for “a” in the word “madness” – does not create a new or different mark. See Hobsons, Inc. v. Peter Carrington a/k/a Party Night Inc.,WIPO Case No. D2003-0317. Such an insignificant modification to a trademark is commonly referred to as “typosquatting” or “typo-piracy”, as such conduct seeks to wrongfully take advantage of errors by users in typing domain names into their web browser’s location bar. See Six Continents Hotels, Inc. v. null John Zuccarini d/b/a Country Walk,WIPO Case No. D2003-0161. “Domain names which constitute typo-squatting are confusingly similar by definition; it is this similarity which makes them attractive.” See Dell Computer Corporation v. Clinical Evaluations,WIPO Case No. D2002-0423; see also American Home Products Corporation v. Privateer Ltd.,WIPO Case No. D2000-0455 (“addvil.com” held confusingly similar to ADVIL). For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests On the record evidence, it is uncontested that Respondent has no rights or legitimate interests in the MARCH MADNESS Mark. Furthermore, Respondent has no relationship with Complainant authorizing it to use Complainant’s Mark or to register any domain name confusingly similar to the Mark. There is no evidence Respondent used the MARCH MADNESS Mark before Complainant adopted and used it many years ago. There is also no evidence Respondent has been known by the name “March Modness”. The registrants were listed as “Robert Parsons, Divaz” in the registrant field of the WhoIs record verified by the Registrar for the Domain Name. Therefore, the WhoIs information contains no evidence that Respondent is commonly known by the name “March Modness”. Lastly, there is no evidence that Respondent has made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services. Respondent registered and used the Domain Name to promote a modeling contest utilizing the competition brackets and similar names for the rounds of competition, for which the MARCH MADNESS Mark is known, to create an association between Respondent and Complainant. Respondent has not provided any indication that the term “March Modness” has any independent meaning apart from the confusing similarity to Complainant’s MARCH MADNESS Mark. 1 Where, as here, Complainant has raised a prime facie presumption of Respondent’s lack of any rights or legitimate interests in the MARCH MADNESS Mark, and Respondent has failed to rebut that presumption, the Panel is satisfied that Complainant has carried its burden of proving that Respondent has no rights or legitimate interests in the Domain Name within the meaning of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Based on the evidence, there is little doubt that Respondent was aware of Complainant and its well-known MARCH MADNESS Mark, and intentionally targeted that Mark, when registering the Domain Name. As an initial matter, Respondent registered the Domain Name on January 30, 2017, many years after Complainant’s above-referenced trademark registration for the Mark issued on December 12, 1989 (and Complainant was using the Mark). Given Complainant’s widespread and long-term use of the MARCH MADNESS Mark, and its renown, the Panel finds it is highly unlikely Respondent was unaware of the Mark when registering the Domain Name. The following facts further evidence bad faith registration here: (1) the Domain Name adopts the entirety of Complainant’s well-known mark with the exception of a typographical misspelling of one letter; (2) the Domain Name is confusingly similar to Complainant’s well-known Mark; (3) Respondent has not shown it has any rights or legitimate interests in the Mark; and (4) Respondent’s promotional materials adopt the structure and timing of Complainant’s competition including playing off of Complainant’s other marks (FINAL FOUR, ELITE EIGHT, SWEET SIXTEEN) using “Sexy 16,” “Outstanding 8” and “Foxy 4”. As further explained in Complainant’s cease and desist letter to Respondent (emphasis added): “When soliciting investors for your modeling contest, you describe the contest by saying that ‘March Modness is set up very much like the NCAA’s March Madness with the difference being we use our 64 models instead of college basketball teams.’ Similar to the NCAA’s Tournament, your contest will start with 64 contestants posted for voting to select ‘Sexy 16,’ ‘Outstanding 8,’ ‘Foxy 4’ meant to mimic the NCAA’s FINAL FOUR, ELITE EIGHT and SWEET SIXTEEN. Just like the Tournament, your contest will have 2 finalists with 1 overall winner picked in March, the time of the NCAA’s Tournament. You also invite participants to fill out a bracket during your contest just as fans of the NCAA Tournament do.” Respondent is also using the MARCH MADNESS Mark in bad faith for the following reasons: (1) Respondent has kept the Domain Name primarily for the purpose of selling it to Complainant for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the Domain Name; (2) by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s Website, by creating a likelihood of confusion with the Mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or the adult services promoted on the website; and (3) after receiving the cease and desist letter putting Respondent on notice of Complainant’s rights in the Mark and Complainant’s objection to Respondent’s use and registration of the Domain Name, Respondent indicated it would remove Respondent’s website’s contents but refused to transfer the Domain Name, instead demanding USD 4,000,000 (“If the NCAA wants the domain marchmodness.com then I’m going to have to ask for payment in the amount of USD 4,000,000.00 (four million dollars and no cents).”). For the foregoing reasons, the Panel finds that Complaint has established that Respondent registered and used the Domain Name in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. 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 Harrie R. Samaras 1 In this regard, the Panel notes that Respondent has filed a trademark application with the United States Patent and Trademark Office (No. 88572720, filed on September 8, 2019) for the trademark MARCH MODNESS. For the reasons stated in this decision, and as elaborated in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.12.2, the Panel does not consider that such an application confers rights or legitimate interests on Respondent in the circumstances of this case.
Sole Panelist
Date: April 16, 2020
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