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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NCAA v. Gregory Freedman
Case No. D 2000-0841
1. The Parties
Complainant is National Collegiate Athletic Association (hereinafter "NCAA"), an unincorporated association with its principal place of business at 700 West Washington Street, Indianapolis, Indiana 46204, U.S.A.
According to the letter from the Registrar of the domain name at issue, Respondent is currently listed with the Registrar as Gregory Freedman of BASI, Inc. However, according to the official WHOIS search attached, the owner is "BASI, Inc., Gregory Freedman." According to the registration, the registrant’s address is 2777 SW Archer Road, #G-31. Gainesville, Florida 32608, U.S.A. and the email address is "email@example.com".
Complainant notes that Mr. Freedman maintains a residence at the following address: 11608 NW 19th Drive, Coral Springs, Florida, 33071, U.S.A.
2. The Domain Name and Registrar
The domain name at issue is "finalfourmerchandise.com" registered with Register.com, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center (the "center") received the Complaint of NCAA on July 21, 2000, by email and on July 24, 2000, in hard copy. The Complainant made the required fee payments. On July 26, 2000, the Center acknowledged the receipt of the Complaint to the Complainant’s authorized representative, and assigned this matter Case No. D 2000-0841.
On July 30, 2000, the Center requested Register.com, Inc. to verify the registration data. By letter of August 14, 2000, Register.com, Inc. confirmed that it is the Registrar of the domain name registration and, inter alia, that Gregory Freedman of BASI, Inc. is the current registrant. The WHOIS search attached, however, shows the owner to be "BASI, Inc., Gregory Freedman." For purposes of this decision, the term Respondent refers to both BASI, Inc. and Gregory Freedman.
Having verified that the Complaint satisfies the formal requirements of ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), the Center on August 18, 2000, sent to Respondent, with a copy to the Complainant, a notification of the commencement of the administrative proceeding, together with a copy of the Complaint. The formal date of the commencement of this administrative proceeding is August 18, 2000.
The Respondent never filed a formal response to the complaint and a notice of default was sent to him on October 11, 2000. However, the file in this matter contains numerous hard copies of email sent after this proceeding was instituted from Mr. Freedman to both WIPO and Complainant’s counsel. These have all been read by the Panel and considered to the extent relevant to the issues herein.
On October 16, 2000, after receiving a completed Statement of Acceptance and Declaration of Impartiality and Independence, the Center advised the parties that it had appointed Thomas L. Creel as a single panelist to resolve this dispute (the "Presiding Panelist").
4. Factual Background
The Complainant is the owner of several United States trademark registrations in multiple classes for the "FINAL FOUR" mark, including federally registered United States Trademark Registrations No. 1,488,836, 1,164,713 and 1,367,874. It also has filed a United States Service Mark Application S.N. 75/826675 for FINAL FOUR, which the United States Patent and Trademark Office has published for opposition.
The NCAA is an association of colleges and universities governing intercollegiate athletics in the United States since 1905. It has been using the mark "FINAL FOUR" and "The FINAL FOUR" in connection with its annual college basketball tournament since the late 1970's/early 1980's. Furthermore, it has been using "FINAL FOUR" on the Internet at "www.ncaa.org" and "www.finalfour.net" to promote the tournaments and future tournaments in the name host cities for the 2001-2007 Final Four basketball tournament. "FINAL FOUR" is immediately recognizable as a mark associated with the NCAA’s annual college basketball championship.
On May 2, 2000, the Respondent registered the domain name "finalfourmerchandise.com". Respondent’s registration information with Register.com listed the Registrant of "finalfourmerchandise.com" as BASI, Inc., c/o Gregory Freedman, 2777 SW Archer Road, #G-31, Gainesville, Florida 32608 and the administrative contact as Freedman, Gregory at 352-262-0068 and "firstname.lastname@example.org".
5. Parties’ Contention
Complainant has requested that the domain name be transferred to Complainant because:
(1) the domain name "finalfourmerchandise.com" is identical or confusingly similar to
a trademark or service mark in which the Complainant has rights;
(2) Respondent has no rights or legitimate interests with respect to the domain name;
(3) Respondent has stated his intent to use the website in connection with the NCAA Men’s Final Four tournament;
(4) Respondent is not a Corporate Partner nor licensed to use NCAA marks in any form;
(5) Respondent is not authorized to sell Official NCAA Final Four products; and
(6) the domain name was registered and will be used in bad faith because Respondent has stated on the website that it will be selling merchandise for the next NCAA Final Four tournament.
6. Discussion and Findings
The policy is addressed to resolving disputes concerning allegations of abusive domain name registration.
Paragraph 4(a) of the Policy establishes three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration , and to obtain relief. These elements are that:
(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a Complainant to warrant relief. They will be addressed separately below, after first addressing jurisdiction.
I. Jurisdiction and Procedure
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a Respondent has notice of proceedings that may substantially affect its rights. The policy and the Rules establish procedures intended to assure that Respondents are given adequate notice of the proceedings initiated against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a), Rules). No objection has been made that the necessary parties were not before this tribunal, nor that this tribunal lacks any authority to rule upon the requested relief.
The Registrar identified Gregory Freedman of BASI, Inc. as the registrant. The attached WHOIS search, however, showed the registrant to be BASI (or BASI, Gregory Freedman). WIPO served the complaint on both Mr. Freedman at the Coral Gables address and BASI, Inc. at the Gainesville address.
Respondent was given an opportunity to tell his side of the story by formally responding to the Complaint. He did not do so and was notified he was in default. He was informed of the consequences of the default. Namely, that the panel would be informed of the default and would have sole discretion to consider the Respondent’s later response to the Complaint and that the Center, notwithstanding the default, would continue to send all case related communication to the Respondent.
In this case, the Presiding Panelist is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings. Formal notice was given to both BASI, Inc. and Gregory Freedman. Despite the fact that the Respondent never formally responded to the Complaint, the Presiding Panelist is likewise satisfied that all necessary parties having possible rights in this dispute have been given notice. It is clear from Mr. Freeman’s e-mail that he is aware of the proceedings, of his rights and duties in this proceeding and has voluntarily waived his and BASI’s rights to file a formal response to the Complaint. Therefore, this Tribunal has jurisdiction to decide this dispute as presented.
II. The Identity or Confusing Similarity of the Domain Name with the Trademark or Service Mark
Complainant has been using the mark "FINAL FOUR" since the late 1970's/early 1980's. It is the owner of several trademark registrations in multiple classes for the "FINAL FOUR" mark worldwide, including in the United States Trademark Office with United States Trademark Registrations No. 1,488,836, 1,164,713, and 1,367,874. It also states that "FINAL FOUR" has been published for opposition in the Official Gazette of the U.S. Patent and trademark Office as a servicemark under Serial Number 75/826675. Furthermore, Complainant has been using "FINAL FOUR" on the Internet at "www.ncaa.org" and "www.finalfour.ne" to promote the tournament and future tournaments in the named host cities for the 2001-2007 Final Four. Lastly, it states that "FINAL FOUR" is immediately recognizable as the mark for the NCAA’s annual college basketball championship.
None of Respondent’s e-mail contest the NCAA’s ownership of the mark nor that the Respondent’s domain name is the same or confusingly similar.
The use of the term FINAL FOUR with the word merchandise creates a likelihood of confusion that the website is an NCAA-authorized domain where official FINAL FOUR merchandise may be purchased.
Based on all of the facts, I find that Respondent’s domain name "www.finalfourmerchandise.com" is identical or confusingly similar to Complainants registered trademarks. Respondent’s use is likely to cause confusion, mistake or deception as to the affiliation, connection or association between Complainant and Respondent and/or the sponsorship or endorsement of Respondent’s website by Complainant. Therefore, the requirement of paragraph 4(a)(i) is met.
III. Rights or Legitimate Interests in Respect of the Domain Name
Paragraph 4(c) of the Policy enumerates how a Respondent may establish rights to and legitimate interests in a domain name. The Respondent has not filed a formal response to the Complaint. Furthermore, in his e-mail he has not presented any facts regarding any rights or legitimate interests in the domain name. Therefore, the requirement of Paragraph 4(a)(ii) of the Policy have been fulfilled by the Complainant.
IV. Bad Faith
The third element Complainant must prove is in the conjunctive: the domain name "has been registered" and "is being used in bad faith." It should be noted, however, that the Policy provides four different circumstances which "shall be evidence of the registration and use of a domain name in bad faith." (Policy, ¶ 4(b)). These circumstances do not, however, reflect both registration and use in bad faith. The first three only speak about bad faith registration. The fourth only addresses bad faith use. Reading the Policy as an integrated document, it is enough for the Complainant to show bad faith registration and/or use.
According to the Complaint, the Respondent has registered a domain name identical to the NCAA trademark "FINAL FOUR" and has stated his intent to the NCAA to use the website in connection with the NCAA Men’s Final Four. Furthermore, the NCAA maintains a Corporate Partner program with Host Communications, including the marketing and licensing of NCAA marks. Also Total Sports, with the permission of NCAA, maintains many Internet sites with content promoting NCAA championships. Mr. Freedman is not a Corporate Partner of the NCAA nor licensed to use NCAA marks in any form. He is not authorized to sell Official NCAA FINAL FOUR products nor use NCAA trademarks on the website. According to the Complainant, the Respondent has also stated on his site that he will be selling merchandise for the next NCAA FINAL FOUR tournament. Respondents’ e-mail does not dispute any of these allegations.
The NCAA wrote to the Respondent on June 26, 2000, stating that his site was an unauthorized use of NCAA trademarks. The NCAA requested "the voluntary transfer of that domain name." It offered to reimburse him for his registration costs, plus an extra thirty-five dollars, for a total of seventy dollars ($70). The Complaint states the Respondent signed and sent back the letter on July 7, 2000, agreeing to all of the terms therein. When the NCAA sent him the agreement and transfer papers, however, the Respondent revoked his agreement to transfer the domain name and requested "fair compensation" for the domain name, not an amount near the registration cost. He also stated that another reason not to transfer the domain name was the there was a possibility of deriving income by continuing to hold on to the site, not necessarily from the sale of merchandise, but from possible advertisements generated through the traffic to the site and through links to other sites.
Once the Complainant filed its Complaint and notified the Respondent, the Respondent sent the Complainant an e-mail asking for proper compensation for agreeing to transfer the domain name and thought that fifteen hundred dollars ($1,500) would be a fair amount. In another e-mail to the Complainant, the Respondent claimed that by approaching a legal panel [at the WIPO] the NCAA would be wasting its time and money.
As to the original registration, the Complainant has shown that the registration was made in bad faith. The evidence indicates that at the time Respondent registered the domain name, he was aware that the Complainant had an interest in the domain name. Additional evidence also shows that Respondent was looking to make money through his registration of the domain name at the expense of the NCAA. He at first intended to sell merchandise on the site, even though he was not licensed to do so. Then he intended to make money through advertising on his site and providing links to other websites from his website. Lastly, he was willing to transfer the domain name to the Complainant for fifteen hundred dollars ($1,500) and was unwilling to do so for his cost of registration.
Considering all of the evidence, I find that the Respondent both registered and used the domain name in bad faith. Therefore, the requirements of paragraph 4(a)(iii) of the Policy has been proved.
Complainant has proved the necessary elements that the name is identical or confusingly similar, that Respondent has no rights or legitimate interests in the domain name and that Respondent registered the domain name in bad faith and is using it in bad faith. Therefore, the remedy requested by Complainant is granted. Respondent is required to transfer the domain name "finalfourmerchandise.com" to Complainant.
Thomas L. Creel
Dated: November 10, 2000