Complainant is National Collegiate Athletic Association, United States of America (“United States”), represented by Loeb & Loeb, LLP, United States.
Respondent is Brian Kelley, United States.
The disputed domain name <missmarchmadness.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2019. On April 4, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 5, 2019, 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 April 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 29, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 30, 2019.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on May 7, 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.
Complainant, founded in 1906, governs intercollegiate athletics in the United States. Complainant is a member-led organization dedicated to the well-being and lifelong success of college athletes that consists of 1,117 colleges and universities, 100 athletic conferences and 40 affiliated sports organizations. Complainant organizes the athletic programs of many colleges and universities in the United States and Canada.
Complainant created three divisions to align like-minded colleges and universities in the areas of philosophy, competition and opportunity: Division I, Division II and Division III. 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. This tournament, referred to as the MARCH MADNESS tournament because it is played mostly during March, has become a premiere sporting event, captivating international audiences, beyond students and their friends and families, for weeks each year. The event is closely followed and widely covered by news media.
Complainant has been using the MARCH MADNESS mark in connection with its annual basketball tournaments since at least as early as 1982, and has expanded use of the mark (and marks incorporating MARCH MADNESS) to various products and services. Complainant has numerous United States trademark registrations for its MARCH MADNESS marks, and has submitted records of these trademark registrations dating from as early as December 1989, in the United states under the Registration number 1571340.
Complainant also maintains an active Internet presence and maintains Internet websites at domain names incorporating the MARCH MADNESS marks, including <marchmadness.com>, <ncaa.com>, <marchmadnessmarketing.com>, <marchmadnessbasketball.org>, <marchmadness.com>, <marchmadness.biz>, <marchmadness.info>, <march-madness.info>, <march-madness.tv>, <marchmadnessondemand.com>, <marchmadnessarizona.com>, <marchmadnessaz.com>, and <roadtomarchmadness.com>. Complainant’s websites serve as a primary marketing and informational tool for Complainant and as a primary point of communication between Complainant and its customers. For example, the website at “www.marchmadness.com” redirects to Complainant’s main website at “www.ncaa.com/march-madness,” which provides key information about Complainant’s MARCH MADNESS tournament.
Complainant states that as part of its enforcement efforts, it uncovered the registration of the Domain Name, which incorporates Complainant’s MARCH MADNESS mark in its entirety and is confusingly similar to the MARCH MADNESS marks. Shortly thereafter, Complainant sent Respondent a cease and desist letter on November 19, 2018, demanding that Respondent deactivate the Domain Name and transfer its ownership to Complainant based on Complainant’s prior rights in the MARCH MADNESS marks. Complainant, however, did not receive any response to the letter and sent an email follow-up to Respondent on December 7, 2018, which also went unanswered. As a result, Complainant filed this UDRP proceeding to recover the Domain Name allegedly registered and used in violation of its rights.
The Domain Name was registered on August 12, 2013 and is being used to offer an adult content contest.
(i) Identical or Confusingly Similar
Complainant states that through the years, it and its licensees and marketing agents have invested heavily in marketing products and services under the MARCH MADNESS marks, devoting millions of dollars toward marketing products and services through a variety of media, including but not limited to television, radio, magazines, newspapers, and the Internet. Complainant asserts that as a result of its marketing and sales success and that of its licensees, the MARCH MADNESS trademarks have become famous marks, which are immediately recognizable as identifying Complainant and its member institutions, as well as Complainant’s tournaments and related products and services in the United States. Based on the foregoing and its trademark registrations, Complainant states that it owns rights in the MARCH MADNESS marks, which are distinctive, famous and widely recognized. Accordingly, Complainant contends the MARCH MADNESS marks are entitled to a broad scope of protection.
Complainant’s states that the MARCH MADNESS mark is incorporated in the Domain Name in its entirety, with the addition of the non-distinctive generic or descriptive term that makes the Domain Name confusingly similar to Complainant’s marks. In particular, the Domain Name combines Complainant’s famous registered MARCH MADNESS mark with a less distinctive term “miss”. The term “miss” has little or no trademark significance in this case as it refers to the gender (female) of the participants of Respondent’s adult contest and serves no function to distinguish the Domain Name from Complainant’s registered MARCH MADNESS marks. By using this term in combination with the MARCH MADNESS mark, Respondent is misleading the public into thinking that Respondent’s website is associated with Complainant and that Complainant endorses Respondent’s contest or is affiliated with Respondent, when it is not.
Last, Complainant states that the gTLD “.com” in the Domain Name is viewed as a standard registration requirement and as such is disregarded under the first element of the confusing similarity test. Based on the foregoing, Complainant contends the Domain Name is confusingly similar to Complainant’s famous MARCH MADNESS marks, and Complainant therefore has satisfied the prerequisites set forth in paragraph 4(a)(i) of the Policy.
(ii) Rights or Legitimate Interests
Complainant contends that Respondent cannot show any facts, including the facts listed in paragraph 4(c) of the Policy, which establish Respondent’s rights to or legitimate interests in the Domain Name. Respondent is not related to, affiliated or connected with Complainant in any way. Complainant has never licensed or authorized Respondent to use the MARCH MADNESS marks, or to register any domain name incorporating the MARCH MADNESS marks. In the absence of any license or permission from Complainant to use the well-known MARCH MADNESS marks, no actual or contemplated bona fide or legitimate use of the Domain Name could reasonably be claimed.
Further, Complainant is not aware of Respondent’ use of the MARCH MADNESS marks prior to Complainant’s adoption and use of the MARCH MADNESS marks. Instead, Complainant has used the MARCH MADNESS marks well before Respondent’s registration of the Domain Name on August 12, 2013.
There is no evidence that 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 paragraph 4(c)(i) or (iii) of the Policy. Instead, Respondent has registered and used the Domain Name to offer its “Miss March Madness” adult contest. In particular, the website associated with the Domain Name is active and redirects to Respondent’s website currently promoting the “9th Annual Miss March Madness Contest” by “Showdown Network Alternative Media Playground” at “showdownnetwork.com/missmarchmadness/index.html.” Respondent’s website prominently uses Complainant’s registered MARCH MADNESS mark in its title “Miss March Madness” and invites visitors to vote for the next “Miss March Madness.” Respondent’s contest “runs until March 31 with the Sweet 16 cut on March 28.” Respondent’s website also uses Complainant’s registered SWEET SIXTEEN mark, clearly making a reference to Complainant’s tournament.
Complainant states that this deliberate misuse of its marks in the content of Respondent’s website, and the fact that Respondent’s contest is held during the month of March, the time of Complainant’s tournament, demonstrates Respondent’s awareness of Complainant and its rights and suggests willful intent to misuse Complainant’s rights by trading off the goodwill and reputation associated with Complainant’s MARCH MADNESS marks and the tournament to promote Respondent’s adult contest.
Also, Complainant asserts that there is no evidence that Respondent has been known by the name “March Madness.” Respondent has listed his name as “Brian Kelley” in the “Registrant Name” field of the WhoIs record for the Domain Name, and listed his email address as [...]@aol.com. Therefore, the WhoIs information contains no evidence that Respondent is commonly known by the name “March Madness” incorporated in the Domain Name. Furthermore, the Domain Name redirects to Respondent’s website at “showdownnetwork.com,” which also does not indicate that Respondent has been known by the name “March Madness.”
Complainant argues that Respondent was put on notice of Complainant’s rights in the MARCH MADNESS marks and Complainant’s objection to Respondent’s use and registration of the Domain Name through Complainant’s letter and email sent to Respondent. However, Respondent chose to ignore those communications and, most importantly, did not provide any arguments or evidence in response that he owns any rights or legitimate interests in respect of the Domain Name which suggests that Respondent simply does not have any rights or legitimate interests in this case.
(iii) Registered and Used in Bad Faith
Complainant contends that the Domain Name has been registered and is being used by Respondent in bad faith for several reasons, specifically, (1) by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’ website, by creating a likelihood of confusion with Complainant’s famous MARCH MADNESS marks as to the source, sponsorship, affiliation, or endorsement of Respondent’ website or the adult contest promoted on Respondent’ website; and (2) Respondent knew of Complainant’s rights in the MARCH MADNESS marks prior to registration of the Domain Name.
Complainant states that UDRP panels have consistently found that the mere registration of a domain name that is confusingly similar (particularly domain names incorporating the mark plus a descriptive term) to a famous trademark by an unaffiliated entity can by itself create a presumption of bad faith. Respondent’s registration of the Domain Name consisting of Complainant’s famous MARCH MADNESS mark plus the descriptive term “miss,” on its own, constitutes bad faith.
Complainant also urges that UDRP panels have found that the following types of evidence support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: (1) seeking to cause confusion (including by technical means beyond the domain name itself); (2) the lack of the respondent’s own rights to or legitimate interests in a domain name; (3) redirecting the domain name to a different respondent-owned website, and (4) absence of any conceivable good faith use.
Complainant states that in this case, Respondent has registered and used the Domain Name in bad faith under paragraph 4(b)(iv) of the Policy because Respondent has used Complainant’s famous MARCH MADNESS mark not only in the Domain Name but in the content of Respondent’s website seeking to cause confusion and to attract, for commercial gain, Internet users to Respondent’ website that advertises and provides Respondent’s adult contest using Complainant’s famous MARCH MADNESS mark. Specifically, Internet users seeking Complainant’s MARCH MADNESS marks by entering the marks in a browser find themselves at Respondent’s website. After inspecting the website, the users are likely to believe that Complainant is affiliated with, sponsored or endorsed Respondent, when it is not, thereby creating a likelihood of confusion with Complainant’s marks.
Further, Respondent has registered and used the Domain Name in bad faith because Respondent does not have any rights or legitimate interests in respect of the Domain Name. In addition, Respondent has registered and used the Domain Name in bad faith because the Domain Name is redirected to a different website owned by Respondent. Also, given the fame of Complainant’s MARCH MADNESS marks, there is no conceivable good faith use of the Domain Name by Respondent.
Last, Complainant alleges that Respondent registered the Domain Name in bad faith because it knew of Complainant’s rights in the MARCH MADNESS marks prior to registration of the Domain Name. In this case, that Respondent is aware of Complainant and its prior trademark rights is clear from the fact that Respondent uses Complainant’s famous MARCH MADNESS mark in the content of Respondent’s website. Respondent’s website also uses Complainant’s registered SWEET SIXTEEN trademark, clearly making a reference to Complainant’s tournament. This deliberate misuse of Complainant’s marks in the content of Respondent’s website, and the fact that Respondent’s contest is held during the month of March, the time of Complainant’s tournament, demonstrates Respondent’s awareness of Complainant and its rights and suggests willful intent to misuse Complainant’s rights by trading off the goodwill and reputation associated with Complainant’s MARCH MADNESS marks and the tournament to promote Respondent’s adult contest.
Furthermore, Respondent had actual knowledge of Complainant’s rights after it received Complainant’s cease and desist letter with a follow-up email. Nevertheless, Respondent chose to maintain and use the Domain Name in plain disregard of Complainant’s prior rights. Prior panels have found that knowledge, actual or inferred, of a strong mark is evidence of registration in bad faith.
In sum, Complainant states that based on the foregoing, Respondent acted in bad faith in registering and using the Domain Name, and the standards of paragraph 4(a)(iii) and 4(b) of the Policy have been met.
Respondent did not reply to Complainant’s contentions.
In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
The Panel finds that Complainant has established rights in its MARCH MADNESS trademark based on ownership of the mark’s registration in the United States, widespread recognition of the mark, and use of the mark in commerce.
Further, the Panel determines that the Domain Name is identical or confusingly similar to Complainant’s MARCH MADNESS marks. The Domain Name incorporates the mark in its entirety, while adding the descriptive word “miss”. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), stating that “[w]hile each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” Here, the mark MARCH MADNESS is the dominant feature, which is recognizable in the Domain Name, while the descriptive term “miss” does not serve to eliminate confusing similarity. See, e.g., Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022 (<christiandiorcosmetics.com> and <christiandiorfashions.com> confusingly similar to CHRISTIAN DIOR); Toyota Motor Sales USA v. Rafi Hamid dba ABC Automobile Buyer, WIPO Case No. D2001-0032 (<leasinglexus.com> and <lexuselite.com> confusingly similar to LEXUS).
Accordingly, the Panel finds that that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights, in accordance with paragraph 4(a)(i) of the Policy. Complainant has satisfied the first element of the Policy.
Regarding the second element of the Policy, WIPO Overview 3.0, section 2.1, states that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
Here, the Panel determines that Complainant has made out a prima facie case, while Respondent has failed to reply to Complainant’s contentions. The Panel finds that Complainant has not authorized Respondent to use its MARCH MADNESS trademark; that Respondent is not commonly known by the Domain Name or Complainant’s mark; that Respondent has not used the Domain Name for a legitimate noncommercial or fair use, nor used it in connection with a bona fide offering of goods or services – instead, the Domain Name has been used to host an adult website purporting to offer the 9th Annual Miss March Madness Contest by the Showdown Network Alternative Media Playground. Respondent’s website prominently uses Complainant’s registered MARCH MADNESS mark in the title “Miss March Madness” and invites visitors to vote for the next “Miss March Madness.” Respondent’s contest “runs during the month of March, when Complainant’s tournament runs. Respondent’s website also uses Complainant’s registered SWEET SIXTEEN trademark. This use of Complainant’s marks in the content of Respondent’s website, and the timing of Respondent’s adult contest held in March, demonstrates Respondent’s awareness of Complainant and suggests an intent to trade on the goodwill and reputation associated with Complainant’s MARCH MADNESS marks to promote Respondent’s contest. Such use by Respondent does not give rise to any right or legitimate interest in the Domain Name.
Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in respect of the Domain Name, which has not been rebutted by Respondent. The Panel therefore finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii).
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Name in bad faith. WIPO Overview 3.0, section 3.1, states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”.
Here, the Panel determines that the Domain Name was registered and is being 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 it registered the Domain Name. The Panel observes that Respondent registered the Domain Name, which incorporates Complainant’s distinctive MARCH MADNESS trademark in its entirety, along with the descriptive term “miss”. Given the fame of the MARCH MADNESS trademark and the fact that the Domain Name and its use by Respondent is so obviously connected with Complainant’s mark, the Panel considers that Respondent targeted Complainant and its MARCH MADNESS mark when registering the Domain Name. See Accenture Global Services Limited v. ICS Inc./PrivacyProtect.org, WIPO Case No. D2013-2098 (finding that it was unlikely that the respondent was unaware of complainant and its ACCENTURE mark at the time the disputed domain name was registered, as complainant demonstrated that its mark is well-known globally and is vested with significant goodwill); Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226 (where a domain name is “so obviously connected with such a well-known name and products, (…) its very use by someone with no connection with the products suggests opportunistic bad faith”).
This point is further confirmed by Respondent’s use of the Domain Name in connection with an adult website to offer its “Miss March Madness” adult contest. Respondent’s website prominently uses Complainant’s registered trademarks on the site to create an association with Complainant and its tournament, without authorization from Complainant. In these circumstances, the Panel finds the Domain Name has been registered in bad faith. Respondent is acting in bad faith by purposefully creating a likelihood of confusion with the MARCH MADNESS trademark as to the source, sponsorship, affiliation, or endorsement of the email source. See, e.g. March Madness Athletic Association, LLC v. Justin Handa, WIPO Case No. D2012-0138 (the panel found that <marchmadnesslive.com> was registered in bad faith where the respondent’s use of the domain name to attract Internet users to the website associated with the domain name created confusion as to the complainant’s sponsorship or endorsement of or affiliation with the respondent’s site and resulted in commercial gain to the respondent due to the advertising banners and sponsored links that were displayed on the site).
In conclusion, in this case, where Respondent failed to submit a reply to Complainant’s contentions, the Panel determines that, for all of the above reasons, the Domain Name was registered and is being used in bad faith. Accordingly, Complainant has satisfied the third element of the Policy
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 <missmarchmadness.com> be transferred to Complainant.
Christopher S. Gibson
Sole Panelist
Date: May 30, 2019