Complainant is National Collegiate Athletic Association, United States of America, represented by Loeb & Loeb, LLP, United States of America.
Respondent is Jules Richard IV, Bachi Graphics LLC, United States of America. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2021. On July 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant. 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 July 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 18, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 20, 2021. The Center appointed Georges Nahitchevansky as the sole panelist in this matter on August 26, 2021. 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 (“NCAA”), is a member-led organization that governs intercollegiate athletics in the United States. Complainant consists of 1,117 colleges and universities, 100 athletic conferences, and 40 affiliated sports organizations. Complainant has organized colleges and universities into three divisions (Division I being the highest) based on criteria for various sports. Of relevance to this proceeding, Complainant has conducted since 1939 a single-elimination basketball tournament for the top level schools of Division I (the highest division) to determine a national champion. The tournament is called the NCAA March Madness. As part of that tournament 68 teams compete over the course of a week until only four teams remain. The final weekend of the tournament is called the FINAL FOUR round and is held in a pre-selected city in the United States that changes from year to year. The 2022 FINAL FOUR round is scheduled to be held in the city of New Orleans. Complainant owns a number of trademark registrations in the United States for the mark FINAL FOUR in connection with its tournament and for various related goods and services. Complainant’s earliest registration for its FINAL FOUR mark issued to registration in 1988 (Registration No. 1488836). Complainant also owns multiple registrations for marks that consist of FINAL FOUR, such as THE FINAL FOUR, WOMEN’S FINAL FOUR, ROAD TO THE FINAL FOUR, FINAL 4, and others. Most of these issued between 1981 and 2005. The disputed domain name was registered on November 14, 2008. By the date of the filing of the Complaint, the disputed domain name did not resolve to an active website or web page. On November 19, 2019, Complainant’s outside counsel sent Respondent a demand letter regarding the disputed domain name. No response was received from Respondent. On December 3, 2019 and December 11, 2019, Complainant’s outside counsel sent follow up communications to Respondent. No response to these communications was received from Respondent. Currently, the disputed domain name does not resolve to an active website or web page. 5. Parties’ Contentions A. Complainant Complainant asserts that it enjoys strong rights in the FINAL FOUR mark on account of its use of the mark since 1977 in connection with its annual basketball tournament and on the basis of its many trademark registrations incorporating FINAL FOUR. Complainant maintains that its FINAL FOUR mark is famous in the United States particularly in connection with its annual basketball tournament. Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s FINAL FOUR mark as it fully incorporates the FINAL FOUR mark with the non-distinctive geographic location “New Orleans.” Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name as Respondent (i) is not related, affiliated or connected to Complainant, (ii) has never received a license or permission from Complainant to register a domain name consisting of the FINAL FOUR mark, (iii) has not made any use of the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate non-commercial or fair use purpose, (iv) is not commonly known by the disputed domain name, and (v) was put on notice of Complainant’s rights in the FINAL FOUR mark and never responded to the demand letters sent on behalf of Complainant, thereby suggesting that Respondent does not have any rights of legitimate interests in the disputed domain name. Lastly, Complainant contends that Respondent has registered and used the disputed domain name in bad faith given that Respondent registered the disputed domain name that is confusingly similar to Complainant’s famous FINAL FOUR mark with a non-distinguishing geographic location. Complainant further argues that Respondent’s bad faith is established through Respondent’s passive holding of the disputed domain name and the fact that Respondent likely knew of Complainant’s rights in the FINAL FOUR mark by registering the disputed domain name which includes Complainant’s well known FINAL FOUR trademark with “New Orleans”, the city where the final weekend of Complainant’s basketball tournament is to be held in 2022. Finally, Complainant asserts that Respondent’s bad faith is established by Respondent’s failure to respond to demand letters sent on Complainant’s behalf concerning the disputed domain name. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Complainant has provided evidence that it owns and uses the FINAL FOUR mark in connection with its annual collegiate basketball tournament and that it owns numerous trademark registrations for the FINAL FOUR mark, and variants thereof, in the United States (which issued well before Respondent registered the disputed domain name). With Complainant’s rights in the FINAL FOUR mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the gTLD such as “.com”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the mark in a disputed domain name is sufficient to meet the standard of the first element. In the instant proceeding, the disputed domain name is confusingly similar to Complainant’s FINAL FOUR mark as it fully incorporates the FINAL FOUR mark in the disputed domain name. The addition of the geographic location “New Orleans” at the tail of the disputed domain name does not distinguish the disputed domain name from Complainant’s FINAL FOUR mark as that mark is clearly visible and the dominant component of the disputed domain name. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s FINAL FOUR mark and in showing that the disputed domain name is identical or confusingly similar to that trademark. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP. The evidence submitted in this proceeding, none of which has been contested by Respondent who has chosen not to participate in this proceeding despite having received demand letters from Complainant and notice of this proceeding, shows that the disputed domain name was registered in 2008 and since that at least since the filing of the Complaint, the disputed domain name does not resolves to an active website or web page. The evidence also shows that Complainant owns strong rights in its FINAL FOUR mark in connection with its annual collegiate basketball tournaments and did so well before Respondent registered the disputed domain name. While the Panel notes that the phrase “final four” also enjoys a common meaning and is commonly used for many references, such as by way of example “final four hours”, “final four years”, or the “final four contestants” in a challenge, it seems more likely than not that Respondent did not register the disputed domain name in 2008 based on its possible common meaning but on its trademark value related to Complainant’s FINAL FOUR trademark. The fact that Respondent registered “final four” with the city name “New Orleans” suggests that Respondent was fully aware of Complainant’s annual tournament and the fact that Complainant rotates host cities every year for its FINAL FOUR portion of the tournament. Indeed, the evidence submitted shows that the city of New Orleans has been the host city for Complainant’s FINAL FOUR tournament five times to date and in fact was not only the host city in 1987, a year before the disputed domain was registered, but will be for a sixth time in 2022. It thus seems more than likely that Respondent, who is appears to be based in New Orleans, registered the disputed domain name on the basis that the FINAL FOUR tournament might again be played in New Orleans and did so for the benefit of Respondent. Given Respondent’s failure to answer Complainant’s demand letters or to appear in this proceeding to explain its actions, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case, C. Registered and Used in Bad Faith Given Respondent’s actions as noted above, and its failure to appear in this proceeding, it is easy to infer that Respondent’s registration of the disputed domain name, which is based on Complainant’s FINAL FOUR mark, and subsequent passive holding of the disputed domain has been done in bad faith and with an aim of profiting from a domain name that consumers would likely believe is connected to Complainant and its annual tournament. WIPO Overview at Section 3.3. Given that Complainant owned strong rights in the FINAL FOUR mark prior to when Respondent registered the disputed domain name, it is evident that Respondent opportunistically registered the disputed domain name to somehow profit from its association with Complainant and the goodwill associated with the FINAL FOUR mark. Accordingly, the Panel finds that Complainant succeeds under this element 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 disputed domain name Georges Nahitchevansky
Sole Panelist
Date: September 9, 2021
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