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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

National Collegiate Athletic Association and March Madness Athletic Association, L.L.C. v. Mark Halpern and Front & Center Entertainment

WIPO Case No. D2000-0700

1. The Parties

Complainants are:

a. The National Collegiate Athletic Association, an unincorporated association, with its principal place of business in Indianapolis, Indiana, U.S.A. (NCAA), and
b. March Madness Athletic Association, L.L.C., an Illinois limited liability company, with its principal place of business in Bloomington, Illinois, U.S.A. (MMAA).

Respondents are:

a. Mark Halpern, an individual and President of Front & Center Entertainment, whose principal residence is Fort Lauderdale, Florida, U.S.A. (Halpern), and
b. Front & Center Entertainment, a business also located in Fort Lauderdale, Florida, U.S.A. (Front & Center).

 

2. Domain Names and Registrars

The domain names which are the subject of the complaints are:

"final-four.org",
"final4.org",
"finalfourtickets.net",
"finalfour-tickets.com",
"finalfour-tickets.net",
"march-madness.org",
"ncaatickets.org",
"final-4.net",
"final-4.org", and
"finalfourticketsforsale.com"

The registrars are:

Network Solutions, Inc. (NSI) for the first seven domain names listed above,
Dotster, Inc. (Dotster) for "final-4.net" and "final-4.org", and
Register.com (Register) for "finalfourticketsforsale.com".

 

3. Procedural History

The WIPO Arbitration and Mediation Center (the Center) received the original complaint on June 29, 2000, by email, and on July 3, 2000, via hard copy. The Center verified that the complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Complainants made the required payment to the Center. The formal date of the commencement of this administrative proceeding is July 18, 2000.

The original complaint was directed to the first seven domain names listed in Section 2. above. On July 4, 2000, the Center transmitted via email to NSI a request for registrar verification regarding the seven domain names then in this case. On July 5, 2000, NSI transmitted via email to the Center NSIs Verification Response, confirming that the registrant of six domain names is "Front and Center Entertainment", the registrant of "finalfour-tickets.com" is Halpern, and the seven domain name registrations then in issue are in "Active" status.

On July 18, 2000, the Center transmitted Notification of Complaint and Commencement of Administrative Proceeding, together with a copy of the Complaint, via facsimile and post/courier to Halpern and to Front & Center. The Center advised that the response was due by August 7, 2000.

On July 19, 2000, the Center received via email, and on July 24, 2000, via hard copy, Halperns and Front & Centers request for an extension of time to prepare and file their response to August 22, 2000. Counsel for Halpern and Front & Center represented that counsel for complainants "approves" of this extension. On July 20, 2000, the Center advised the parties that "the administrative proceeding is suspended until August 22, 2000."

On July 24, 2000, the Center received via hard copy NCAAs and MMAAs amended complaint. The amended complaint added three additional domain names, viz.:

"final-4.net",

"final-4.org", and

"finalfourticketsforsale.com."

On July 26, 2000, Dotster confirmed that Halpern is the registrant of "final-4.net" and "final-4.org", and the current status of the domain names is "active".

On August 24, 2000, the Center received (1)Halperns and Front & Centers August 22, 2000 response and (2) their supplemental response of the same date.

On August 29, 2000, the Center received NCAAs and MMAAs supplemental complaint.

On September 4, 2000, the Center received Halperns and Front & Centers response to the supplemental complaint.

On September 5, 2000, the Center acknowledged receipt of "your Response" and advised the parties the Center would proceed to appoint the Panel.

On September 13, 2000, the Center notified the parties that David W. Plant had been appointed as the Panelist in this case, and that the decision was due by September 27, 2000.  On October 2, 2000, the Center notified the parties that the new date for the decision was October 30, 2000. Subsequently the Center notified the parties that the due date was extended to November 30, 2000.

 

4. Factual Background; Parties Contentions

a. The Trademarks

The complaints are based on the trademarks "NCAA", "FINAL FOUR", "The FINAL FOUR", and "MARCH MADNESS". NCAA, FINAL FOUR, and MARCH MADNESS are allegedly the subjects of various U.S. federal trademark registrations. NCAA allegedly owns registrations for the NCAA and FINAL FOUR marks. MMAA owns registrations for MARCH MADNESS. Copies of such registrations were not submitted with any complaint.

In the original complaint and the amended complaint, NCAA and MMAA aver -

In paragraph 11, NCAA has been in use since 1910 and is "considered a famous mark worldwide."

In paragraph 12, FINAL FOUR is "considered to be a famous trademark and immediately recognizable as connected to the NCAA Tournaments and college basketball."

In paragraph 13, MMAA has "expended substantial resources to advertise and promote its MARCH MADNESS mark and has offered many millions of dollars worth of services and sold many hundreds of thousands of dollars worth of products under and in connection with its MARCH MADNESS mark." Also, MMAA and its licensee "maintain www.marchmadness.org and www.marchmadness.net".

In paragraph 14, NCAA has been using "www.ncaa.org" and "www.finalfour.net" to promote tournaments.

In their supplemental complaint, NCAA and MMAA aver (page 3) respondents use of the marks to attract business should offer "some proof that the marks are famous."

b. The Complaints Re Halperns and Front & Centers Activities

NCAA and MMAA, in both the original complaint and the amended complaint (except as noted below), aver inter alia as the Panel sets out below --

At paragraph 10, each of the three criteria of Policy, Paragraph 4.a., is satisfied.

At paragraph 15:

"Halpern and Front & Center Entertainment have registered over 100 domains ... , including "worldcuptickets.org", "wwfticketsforsale.org", "thesugarbowl.net", and "NFLtickets.org". This represents a pattern of registering domains that infringe on the trademarks of others. Respondents have registered domains identical to famous trademarks NCAA, FINAL FOUR, and MARCH MADNESS. Mr. Halpern has been using the website "www.finalfourtickets.com" in connection with the NCAA Mens Final Four to sell premium tickets. Respondents are profiting from the use of Complainants trademarks. Use of NCAA and FINAL FOUR create[s] a likelihood of confusion that the site is an NCAA-authorized domain for information about the NCAA Tournaments. The sites are confusingly similar to "www.finalfour.net" and "www.ncaa.org", which Complainant uses as the official sites for the NCAA and its championships."

At paragraph 16, Halperns registration of the domain names violated the United States AntiCybersquatting Consumer Protection Act, citing authority. Also, "march-madness.org" is confusingly similar to MMAAs "www.marchmadness.org" site. And "final-4.net", "final-4.org", "final4.org" and "finalfour.org" are confusingly similar to NCAAs site "www.finalfour.net" 1 . "www.finalfour.net" allegedly attracted 39.3 million hits and 7.7 million page views during March 2000.

At paragraph 17, NCAA maintains a Corporate Partner Program which markets and licenses NCAA marks. Total Sports, with NCAAs permission maintains "many Internet sites with content promoting NCAA Championships including finalfour.net".Halpern and Front & Center are not corporate partners and are not licensed to use NCAA marks. Halpern has "no rights or legitimate interests in the domain name [sic] at issue."

At paragraph 18 of the amended complaint, on June 30, 2000,

" ... one day after sending this complaint by Federal Express to the Respondents, "final-4.net" and "final-4.org" were registered by Mark Halpern and Front and Center Tickets with Dotster.com."

This is further evidence of "bad faith to profit from the NCAA trademarks," and

"Respondents have no legitimate interests in the domain names and these domains are confusingly similar to the NCAA trademark FINAL FOUR and the NCAA-authorized website www.finalfour.net. Respondents actions show a pattern to register domain infringing on trademark rights."

Under "Remedies Requested", NCAA and MMAA request that the domain names in issue be transferred to "the Complainant".

c. The Responses

Halpern and Front & Center 2 request that both the response, which exceeds 5000 words, and the accompanying supplemental response (which deals with the United States AntiCybersquatting Consumer Protection Act charges), be accepted, or in the alternative the AntiCybersquatting claim be rejected in this proceeding. Notwithstanding that the Panel finds that this proceeding is not the appropriate forum in which to decide United States AntiCybersquatting Consumer Protection Act claims, infra, Section 5.a., the Panel will consider all pleadings submitted by all parties. Accordingly, the Panel discusses here all responses submitted by Halpern and Front & Center.

1. August 22, 2000, Response to Amended Complaint

At the outset, at page 4, Halpern and Front & Center assert, without admitting any liability, they have transferred to NCAA the following five "domains":

"final-four.org"
"final4.org"
"march-madness.org"
"final-4.net"
"final-4.org"

Accordingly, Halpern and Front & Center assert the dispute now involves the following five domain names:

"finalfourtickets.net"
"finalfour-tickets.com"
"finalfour-tickets.net"
"ncaatickets.org"
"finalfourticketsforsale.com."

Next, at page 4, Halpern and Front & Center request that "detailed information" from their "proprietary and confidential business plan", submitted with their response (Tab 1 of Respondents exhibits 3), not be made public in this decision.

In response to NCAAs and MMAAs allegations, Halpern and Front & Center state, at page 4, they do not dispute "(a) NCAAs historic and corporate background; (b) its ownership of certain U.S. trademark registrations for NCAA, FINAL FOUR and MARCH MADNESS; and (c) its ownership, operation or licensing of certain websites "marchmadness.org"; "marchmadness.net"; "ncaa.org" and "finalfour.net."

At page 5 of this response and referring to the accompanying supplemental response, Halpern and Front & Center dispute that the marks NCAA, FINAL FOUR and MARCH MADNESS are famous. In this proceeding, Halpern and Front & Center do not have discovery or the ability to cross examine to contradict NCAAs allegations regarding "advertising, gross revenue, scope of products and other aspects ...".

At page 5, Halpern and Front & Center admit they "own" the five domain names they say are still in dispute, they own over 1000 domain names (Tab 5), deny they registered "these domain names" as "part of a pattern of registering domains that infringe on the trademarks of others," deny they have created a likelihood of confusion, deny that their websites are "confusingly similar to www.finalfour.net, and www.ncaa.org," deny they violated the AntiCybersquatting Consumer Protection Act, deny their websites are confusingly similar to NCAAs "marchmadness.org" site, cannot contradict, "due to the limitations of this dispute procedure," the amount of advertising and traffic at finalfour.net, and question the objectivity of Total Sports, the reporting agency. They admit also they are not licensed by the NCAA.

At page 5, they affirmatively assert they have legitimate rights to the disputed domains.

At pages 5 - 6, Halpern "affirmatively states" (1) he "did not receive" NCAAs complaint before he registered "final-4.org" and "final-4.net" on June 30, 2000, (2) due to an exchange of letters in March and April 2000, he believed all disputes had been resolved (citing Tab 11), (3) he "voluntarily withdrew ... "final4.org" from the Internet prior to the domain name transfer" referred to above, and (4) "the only reason" he registered the two domain names was "to obtain 1000 domain names for FrontRows [Respondents] business plan" (citing Tab 1, p. 102). Halperns and Front & Centers "close in time" registrations are not evidence of bad faith because they "did not receive notice of the complaint until after registration of the domain names final-4.org and final-4.net."

At pages 6 - 9, Halpern and Front & Center purport to describe their business and its relationship to NCAA. Citing Tabs 1, 2, 4 - 10 and 13), they aver --

Halpern founded Front & Center in 1990 to provide hard to find and premium seat tickets for various entertainment events.

In 1995, Halpern launched "FrontRow.com" on the Internet.

"FrontRow" through affiliates (e.g. Halpern, Front & Center) own 1000 domain names, "a large percentage of which are generic or highly descriptive terms."

"FrontRow Network" now consists of 812 printed pages at websites "FrontRow.com", A1Tickets.com", "FrontRowNetwork.com", and "active websites at various domain names ... linked to "FrontRow.com" and VenueMaps.com."

"FrontRow", i.e. Halpern and Front & Center, spent "about $200,000 to build its FrontRow Network. In the last 14 months, it launched over 200 websites ... as portals to direct traffic to the primary FrontRow Network."

Halpern obtained a travel agents license. "FrontRow" sells travel packages to events, travel agency services, and ancillary services.

FinalFourTickets.net was launched in August 1999.

Halpern and Front & Center quote from their business plan, "initiated in April, 2000, prior to the present dispute and during a time when the NCAA had resolved certain issues with FrontRow." Halpern and Front & Center reportedly have "become known as a leading secondary market ticket broker in the South Florida area" with numerous customers, substantial revenue and "a history of profitability." 4 The Company has "gained a national footprint." Halpern and Front & Center plan to grow their business.

"FrontRow is a profitable business with a high growth potential." Halpern and Front & Center report their revenues through the first five months of fiscal 2000 and project their revenues in specific terms for the fiscal year from the "core ticket business." Also, Halpern and Front & Center quote from the business plan with regard to their "Growth Strategy".

"The FrontRow websites [cites] are fed by 200 active domain websites [cite] to channel consumers to the FrontRow Network. The benefit to consumers is substantial. FrontRow provides maps of venues ... travel packages to the event site, airline, hotel, restaurant and supplemental attraction information and limousine services."

The NCAA has never authorized a ticket reseller, of whom there are a large number. There are "no official NCAA ticket resellers." "Most consumers searching for FINAL FOUR tickets know that the NCAA only allocates 5 - 10% of the seats to outside sales." These are sold only via lottery and are sold out instantly, almost one year before the FINAL FOUR tournament. It is "well know[n] to consumers seeking FINAL FOUR tickets that they must locate a ticket re-seller ... ."

FINAL FOURS tickets in prime locations "typically cost $10,000 per seat." These are "hard to find" and "premium" tickets. Halperns and Front & Centers services "are directly related to" the five remaining disputed domains "because all the domains include the descriptive term tickets."

After noting at page 9 the provisions of Policy Paragraphs 4.a., 4.b. and 4.c. and a complainants burden of proof, Halpern and Front & Center, at pages 10 - 12, argue their domain names are neither identical nor confusingly similar to the NCAA trademarks. Halpern and Front & Center assert each domain has the "highly descriptive term tickets which precisely describes the goods and services offered to the consumer ... ," and thus are not identical. They argue also that their use of the domain names does not confuse consumers because --

Their consumers are sophisticated.

They know they must locate a ticket re-seller.

The tickets are expensive.

A search for final four tickets would not lead to an NCAA official site because the event is sold out and the NCAA does not sell tickets.

Anyone searching for Final Four tickets would be searching for a ticket broker (citing a list of brokers at Tab 13), and "FrontRow provides the public a valuable service" through "FinalFourTickets.net which was operable in August, 1999."

There are over 672,393 websites about the NCAA. Consumers are sophisticated enough to locate the official NCAA website "since that site is clearly marked on search engine results" (citing Tab 15, pp. 1394 and 1396).

There are 114,141 web pages showing "Final Four" (citing Tab 17, p. 1407). The "Official NCAA FINAL FOUR website is clearly marked in this extraordinarily large list" (citing Tab 17, pp. 1406, 1409, 1414, 1428). More than 230 "non-official FINAL FOUR domain names [are] registered to third parties" (citing Tab 16). "Further, there are over 650 registered, non-official NCAA domain names registered by third parties" (citing Tab 14).

Apparently referring to Tabs 14 - 17, Halpern and Front & Center aver "These records show" (a) consumers are sophisticated in locating and sorting out desirable sites, (b) sites are clearly marked, and (c) the sophistication of the search engines differentiates the sites.

There is no evidence of actual confusion in this case, notwithstanding that the FinalFourTickets.net website has been active since August 1999.

Halpern and Front & Center sell genuine NCAA tickets, citing Draw-Tite v. Plattsburgh Spring, WIPO Case No. D2000-0017, in support of the proposition that the domain names in dispute are used "in connection with the bona fide offering of complainants goods or services," plus Adaptive Molecular v. Priscilla Woodward et al.,WIPO Case No. D2000-0006, in support of the proposition that Halperns and Front & Centers websites "may constitute fair use," and complainants have not met their burden of establishing bad faith registration and use under Policy, Paragraph 4.b.(iv).

At pages 12 - 13, with respect to Halperns and Front & Centers use of disclaimers, they aver their "primary web pages" are clearly marked with a disclaimer that they are not an official NCAA website, which disclaimer the NCAA approved. Citing NCAAs letter of April 25, 2000 (Tab 11), they aver NCAA "endorsed the following disclaimer" --

"The National Collegiate Athletic Association (NCAA)® has neither licensed nor endorsed Front & Center Entertainment Group to sell goods and services in conjunction with NCAA Championships."

They note also that the April 25, 2000, letter states --

"The NCAA appreciates that trademarks, such as NCAA and "Final Four" are sometimes used in connection with the description of event tickets being sold. Although these types of uses may fall within the category of fair use, there should be no commercial or promotional use of logos or marks without the advance permission of the NCAA."

At page 13, Halpern and Front & Center aver that consumers --

"would not confuse FrontRows website with the NCAA official websites because (1) FrontRow uses no official logos of the NCAA ...; (2) there are no claims on the websites that the sites are official; and (3) FrontRow places disclaimers on many, if not all, of the sites displaying the sale of NCAA tickets."

Halpern and Front & Center aver also

"... the "FinalFour.org" web page attached to NCAAs amended complaint showing an Official NCAA box header was a page that was temporarily released without management approval. Respondent [sic] respectfully apologizes for any inconvenience that this page may have caused the NCAA ... FrontRow management did not approve of the designation Official NCAA on the site and, upon discovery thereof, withdrew the website from the Internet. FrontRow has initiated steps to avoid publishing these erroneous statements in the future."

At pages 13 -15, Halpern and Front & Center contend that the use of the five domain names in dispute is descriptive and is fair use. They contend the domain names "precisely describe the products and services offered to the public by FrontRow," namely, hard to find and premium tickets to NCAA events including the Final Four tournament. One reason Halpern and Front & Center "assigned or transferred" the other domain names is "the present domain names include the term tickets and the assigned domains do not." Halpern and Front & Center sell the tickets described in the remaining five domain names. Further,

"The domain names act like billboards along the Internet highway. Just as retailers can justifiably display on a billboard goods available for sale at their stores, so can FrontRow use the disputed names to advertise and draw customers into its website to sell those customers genuine NCAA and Final Four tickets. Domain names are the Internet billboards and the web pages are the retail stores."

In support of their fair use contention, Halpern and Front & Center cite Adaptive Molecular Technologies, WIPO Case No. D2000-0006, Allocation Network GmbH, WIPO Case No D2000-0016, Cosmetically Sealed Indus., Inc. v. Chesebrough-Ponds USA Co., 125 F.3d 28, 30 (2 Cir. 1997), and Igloo Prods. Corp. v. Brantex, Inc., 202 F.3d 814 (5 Cir. 2000).

Halpern and Front & Center submit that their use and "bona fide intent to use" the five domain names in dispute is fair use. Each website "will be clearly marked with a disclaimer and will be used to sell genuine NCAA tickets ... This has been FrontRows business since 1990 (Tab 2), has been FrontRows business on the Internet since 1995 (Tab 6) and will continue to be FrontRows business (Tab 1)."

At pages 15 - 17, Halpern and Front & Center contend that third party use of NCAAs trademark is "rampant" on the Internet. At the outset, at pages 15 - 16, Halpern and Front & Center repeat virtually verbatim their assertions as to numbers of websites at page 11 of the response, supra. References to "final four" and "march madness" in the literature include the last four people in a contest and various sports (e.g., tennis, baseball, soccer, volleyball, non-NCAA basketball and lacrosse). Halpern and Front & Center submit that if NCAA were to secure "exclusive rights to all Final Four domains and descriptive usage" it would "remove that phrase from our literature." The third party use of "final four" cited by Halpern and Front & Center "supports FrontRows arguments that (a) consumers are sophisticated, (b) there is no confusion, and (c) its use is descriptive, fair use."

Further, at page 16, Halpern and Front & Center aver --

"The primary domain name finalfourtickets.com is owned by ticket reseller St. Francis Tickets of Beverly Hills, California since 1996. This site (a) is not authorized by the NCAA, (b) is not subject to a domain name dispute procedure, (c) has no disclaimer, and (d) uses many trademarks with the descriptive term tickets."

At pages 16 - 17, Halpern and Front & Center aver that a literature search shows 84 MARCH MADNESS domain names (Tab 20) and a "reasonable number" of articles describing "March Madness" in connection with financial matters, membership drives, sale of goods in the spring time, public protests, extreme college sporting events and employment opportunities (Tab 21).

At page 17, Halpern and Front & Center contend they have legitimate interests in the disputed domain names. They repeat they are using FinalFourTickets.net in a descriptive manner, are adequately notifying consumers it is not an official NCAA site, and are providing consumers substantial benefits not provided by the NCAA. They repeat also that (1) the NCAA "effectively" does not sell tickets, and (2) the only place to find hard to find and premium tickets is the "secondary market". Also, consumers benefit from "FrontRows ownership of these domain names and website portals" because consumers can (a) buy NCAA event tickets, (b) locate hotels and transportation, and (c) view the venue seating chart before selecting their tickets. The NCAA sites, allegedly, do not offer these benefits. Halpern and Front & Center cite Allocation Network GmbH, WIPO Case No. D2000-0016, for the proposition that descriptive or generic use of domains shows "a legitimate interest in the domain name."

Also at page 17, Halpern and Front & Center intend to build website portals on all of their 1000 domain names. They are raising money to build these sites "as a feeder network into the existing "FrontRow.com" Network." Also, "FrontRow will expand its business into other consumer goods which will enhance the FrontRow brand name and feed more consumers into the FrontRow ticket sales and travel related Internet businesses."

At pages 18 - 19, Halpern and Front & Center assert they have not registered or used the domain names in bad faith. They address each of the four factors in Policy, Paragraph 4.b. First, with respect to Policy, Paragraph 4.b.(i), they assert there is no evidence they acquired the domain names in order to sell them. Halpern "affirmatively states that FrontRow will never sell its domain names other than in a sale of its entire business." They assert further that their business plan provides "clear and unequivocal evidence that FrontRow intends to build out its remaining 800 domain names into feeder portals for the FrontRow Network. It has done this with FinalFourTickets.net."

At page 18, they assert that they are not warehousing domain names. They have activated almost 200 of their 1000 domain names, have a "bona fide and genuine" business plan to raise "a substantial sum of money to bring the remaining 800 domain names on line ... . The FrontRow business plan cost $25,000 and was drafted prior to initiation of the present domain name dispute." They assert the present "dispute" was initiated June 29, 2000, more than two months after the business plan was initiated.

At page 19, with respect to Policy, Paragraph 4.b.(ii), Halpern and Front & Center aver that "NCAA has possession of the naked and non-descriptive NCAA, FINAL FOUR and MARCH MADNESS domains. There is no evidence that FrontRow attempted to prevent the owner ... from reflecting the mark in a corresponding domain name." The "tickets" domain names in dispute are all descriptive of Halperns and Front & Centers services.

At page 19, with respect to Policy, Paragraph 4.b.(iii), Halpern and Front & Center aver there is no evidence that "FrontRow has disrupted NCAAs business." There is no evidence of actual confusion. The FinalFourTickets.net website portal has been active since August, 1999 without complaints.

At page 19, with respect to Policy, Paragraph 4.b.(iv), Halpern and Front & Center aver there is no likelihood of confusion, as "set forth above."

At pages 19 - 20, Halpern and Front & Center aver they have legitimate interests in the domain names and address the three factors in Policy, Paragraph 4.c. First, with respect to Paragraph 4.c.(i), they aver --

"FrontRows business plan, which was initiated prior to this dispute resolution process ..., the 812 pages in "FrontRow.com" ...; "AlTickets.com" ...; "FrontRow Network.com" ... and "VenueMaps.com", and the websites at 200 domains ... clearly establish demonstrable preparation to use the 1000 domain names ... in connection with a bona fide offering of goods or services. FrontRows 14 month bona fide use of FinalFourTickets.net cannot be disputed."

At page 20, Halpern and Front & Center aver that Policy, Paragraph 4.c.(ii), does not apply in this case. They use the trade name "FrontRow" on the Internet.

At page 20 with respect to Policy, Paragraph 4.c.(iii) Halpern and Front & Center aver they are making fair use of the domains in dispute, as set forth in their section regarding fair use, supra. Further, they are not "tarnishing" NCAAs reputation. They sell only genuine NCAA tickets, they do not criticize the NCAA or call it into disrepute, they do not "misleadingly divert customers", and they use disclaimers "on numerous sites." They assert the NCAA approved the disclaimer.

At page 22, the response contains the requisite certification as to its completeness and accuracy, etc. It is signed both by Halpern and his counsel.

Halpern and Front & Center request that their ownership and use of the disputed domain names be confirmed and the complaint be denied.

2. Respondents August 22, 2000 Supplemental Response

This response addresses the claim that "the NCAA marks are famous" and that Halpern and Front & Center have violated the AntiCybersquatting Consumer Protection Act. 5

At pages 1 - 5, Halpern and Front & Center contest the allegation that the trademarks are famous. At the outset, they submit that this is not an appropriate forum to determine this issue, because they do not have an adequate opportunity to contradict information supplied by complainants regarding the eight factors set out in the Federal Trademark Dilution Act, 15 U.S.C. 1125(c)(1) (A) - (H). Halpern and Front & Center assert they do not have the ability to cross-examine witnesses, subpoena documents or submit contradictory evidence with respect to factors A - D. At the same time, they aver (pages 3 - 4) factors E, F and G favor Halpern and Front & Center, viz. --

Channels of trade -- Hard to find NCAA tickets are effectively not available from NCAA. The only avenue available to consumers for premium seat and hard to find tickets to NCAA events in the secondary market or ticket resellers. Thus, "original, first-issued NCAA tickets are sold through a substantially different channel of trade as compared with the hard to find tickets and premium tickets sold by ticket resellers like FronRow" (citing Tabs 12, 15 and 17).

Degree of recognition -- Conceding that NCAA, FINAL FOUR and MARCH MADNESS are "relatively well known", on the Internet it is well known by consumers that the NCAA does not sell tickets and there are an "enormous number" of ticket resellers that provide tickets to NCAA events (citing Tabs 12, 13, 15, 17, 20).

Use by third-parties -- As already shown by Halpern and Front & Center, the marks NCAA, FINAL FOUR and MARCH MADNESS "are used by many companies on the Internet" (citing Tabs 14 - 17, 20).

At pages 4 -5, with respect to "dilution", Halpern and Front & Center assert that neither blurring nor tarnishment will occur as a result of the use of the five domain names in dispute. Blurring will not occur because (a) "all of FrontRows sites have disclaimers"; (b) there is "substantially" no other source for hard to find FINAL FOUR and MARCH MADNESS tickets except through ticket resellers; and (c) tickets sold by "FrontRow do not compete with genuine, original, first-issue NCAA tickets." Also, the disclaimers on "FrontRow property are prominent" (citing Tab 18). There is no tarnishment, because Halpern and Front & Center are "not appropriating or misappropriating or riding on or trading on the goodwill of the NCAA." They are not placing the NCAA in disrepute. They sell only "genuine NCAA tickets" and have never been charged with selling forged or improper hard to find and premium seat tickets.

At page 5, Halpern and Front & Center urge that the Panel not render an opinion as to "whether or not" the NCAAs marks are famous. Notwithstanding that Halpern and Front & Center urge they do not have an adequate opportunity to discover facts, they aver --

"... there are sufficient facts to contradict NCAAs evidence regarding its allegations that its marks are famous; and FrontRows use of the domain names in dispute do not cause dilution, blurring or tarnishment of NCAAs trademarks."

At pages 5 - 13, Halpern and Front & Center contend they are not cybersquatters and have not violated the U.S. AntiCybersquatting Consumer Protection Act. In light of the Panels ruling in Section 5.a., (that this is not an appropriate forum in which to determine claims under the U.S. AntiCybersquatting Consumer Protection Act), the Panel mentions here only Halperns and Front & Centers assertions which appear relevant to the issues under Policy, Paragraph 4.

At page 6, Halpern and Front & Center repeat their prior assertion that the domain names in dispute are not "identical or confusingly similar" to NCAAs marks because --

"All of the marks [sic] in dispute use tickets as a root term. As stated in its primary Response, consumers would not confuse these ticket marks [sic] with genuine NCAA trademarks."

Also, Halpern and Front & Center iterate this forum is not appropriate for determining whether the NCAA marks are famous.

At page 7, Halpern and Front & Center aver, inter alia, they have "intellectual property rights in the disputed domain names" in that they sell genuine NCAA tickets. This is fair use, citing Draw-Tite, WIPO Case No. D2000-0017. They state that the domain names in dispute "do not consist of a trade name or mark of FrontRow."

At pages 7 - 8, they acquired the five domain names between November 1998 and February 2000, but built only one active website, viz. FinalFourTickets.net, in August 1999. The use of FinalFourTickets.net is clearly bona fide. Their acquisitions of the five domain names do not show a pattern of misappropriation and misuse of NCAA property. Halpern and Front & Center assert that their launching of 200 other websites acting as feeder portals show they have "not specifically targeted NCAA trademarks." Their business activity in building out websites "is somewhat random." Most of their 1000 domain names are generic or highly descriptive (citing Tab 5). They aver generic terms as domains are available on a first-come, first-served basis, citing Allocation Network GmbH, WIPO Case No. D2000-0016.

At page 9, Halpern and Front & Center iterate they have "no intention of diverting consumers from NCAAs official website." They place disclaimers on their NCAA, FINAL FOUR and MARCH MADNESS websites (citing Tab 18). The websites do not harm the goodwill represented by the NCAA trademarks. Halpern and Front & Center provide a valuable consumer service, since FINAL FOUR and MARCH MADNESS tickets are virtually impossible to obtain. The goodwill of the NCAA and its marks "is enhanced by the secondary market makers and FrontRow" (citing the business plan, Tab 1).

At page 10, Halpern and Front & Center iterate they have never offered to sell or transfer any of their domain names for compensation. "FrontRow has a bona fide intent to use and offer goods and services under the disputed domain names" (citing the business plan and other evidence).

At page 11, Halpern and Front & Center aver the contact information they have provided to domain name registers has been complete and accurate.

At pages 11 - 12, Halpern and Front & Center aver that only 40 of their 1000 domain names are "potentially barren or naked trademarks." They iterate that the five domain names in dispute all contain the term "tickets". They are descriptive of the goods and services sold and offered. Halpern and Front & Center have been ticket resellers for over ten years and have sold tickets on the Internet for over five years. Accordingly, they do not "know these domain names are confusingly similar." They assert that Draw-Tite, WIPO Case No. D2000-0017, supports their "right to use these 40 barren trademarks."

A pages 12 - 13, Halpern and Front & Center aver, inter alia, that their business plan and their creation of 200 websites in 14 months demonstrate that they reasonably believed their use of the domain names was a fair use.

At page 13, this response concludes with the requisite certificate as to completeness and accuracy. It is signed by both Halpern and his counsel.

 

3. August 29, 2000 Supplemental Complaint

Complainants contend this supplemental complaint is necessary due to "the voluminous annex material submitted by the Respondents as well as the allegations made in the response."

With regard to the five assigned domain names, NCAA avers (pages 1 - 2) it received on August 23, 2000, signed and notarized transfer papers for the five domain names that do not include "tickets" in the name. The NCAA states it will not file the papers with NSI until WIPO notifies NCAA that such filing will "not harm the disposition of this case." The NCAA requests a ruling on all ten domain names.

At pages 2 - 3, NCAA and MMAA note that respondents admit that (1) complainants are owners of the U.S. trademark registrations, (2) respondents own all the domain names at issue, and in addition over 1000 domain names of which "many appear to be identical to the protected trademarks of well-known sports organizations and events," and (3) respondents are not licensed by NCAA and "NCAA has never licensed or authorized a ticket reseller."

At page 3, NCAA and MMAA aver the trademarks ought to be considered "famous", arguing that "Respondents [sic] own use of the marks to attract business should offer some proof that the marks are famous." They argue also that the "fact the official site is clearly marked in the results of a search engine query ... is further proof that these are famous marks."

At pages 3 - 4, NCAA and MMAA address respondents denial of violation of the AntiCybersquatting Consumer Protection Act, as follows --

WIPO arbitrators have "weighed evidence of registration of multiple domains infringing on trademarks as an example of cybersquatting" (citing Stanley Works, WIPO Case No. D2000-0113 (registering many domain names using many combinations of complainants trademarks "is a pattern and a calculated attempt by Respondent to foreclose Complainant from using its own trademarks in cyberspace. This is classic cybersquatting.")).

Regardless of a business plan, the registration of domains that "infringe on the trademark rights of other well-known sports organizations and events" (e.g. "NBAfinals.org", "BreedersCup.net" and ".org", "CottonBowl.net", NotreDameFootball.net, etc.) represents a "calculated effort to infringe on the trademarks of well-known and famous sporting events and organizations for the purpose of profit."

The registration of ten domain names, some just containing an NCAA trademark itself, "show a calculated effort to infringe on NCAA marks."

NCAA and MMAA cite the following WIPO decisions re multiple registrations: YAHOO! Inc. v. Eitan Zviely, et al., WIPO Case No. D2000-0273, PACCAR, Inc. v. Enyart Associates and "Truckalley.com LLC", WIPO Case No. D2000-0289, University of Wyoming v. David Horton, WIPO Case No. D2000-0366, and Embratel v. Kevin McCarthy, WIPO Case No. D2000-0164.

With respect to the resale of NCAA tickets, NCAA and MMAA aver, at pages 4 - 6, NCAA does sell tickets through a lottery one year before each basketball championship. Consumers do contact NCAA about the sale of tickets to the FINAL FOUR. Instructions for applying for such tickets are on the official NCAA website (Annex 2 6). NCAA does on occasion release additional tickets (Annex 3). These are "premium, hard to find tickets." The NCAA discourages the sale of NCAA tickets for more than face value. Cities hosting the FINAL FOUR are required to enact an ordinance banning ticket scalping. Also,

"The public frequently contacts the NCAA perceiving that the NCAA gives ticket brokers the premium seats to NCAA championship events. The NCAA disputes Respondents claim that consumers are not confused by the use of NCAA trademarks by ticket brokers within domain names."

NCAA and MMAA quote from the Stanley Works decision, supra, to the effect that --

"... the collateral trademark use necessary to allow resell [sic] of Complainants products is not enough to give Respondent proprietary rights in Complainants trademarks, and certainly not enough to confer the right to use these trademarks as domain names."

Also, in PACCAR, supra, --

"Respondents have admitted use of Complainants names in part to divert prospective customers to Respondents business. This fact alone is sufficient to constitute bad faith as to the domain names using only complainants trademarks."

* * *

"... use of Complainants marks even with the suffix is likely to cause confusion with those marks."

At pages 5 - 6, NCAA and MMAA aver --

"The NCAA discourages ticket brokers from selling FINAL FOUR tickets at inflated prices. Some in the business are engaged in deceptive, fraudulent activities. The NCAA has the right to protect its name by not allowing any ticket broker to use NCAA trademarks in domain names and to require disclaimers on generic ticket sites offering FINAL FOUR tickets."

At page 6, NCAA and MMAA aver they are not attacking respondents right to sell tickets to NCAA events "as long as Respondents business is legal in jurisdictions where it is doing business." They note that Front & Center owns "many generic domains referring to college basketball that do not contain NCAA trademarks, as well as their portal site Frontrow.com." Also, "Consumers on the web can also be led to ticket brokers that do not use NCAA trademarks within their domains" (citing the "search engine attachment" provided by Halpern and Front & Center).

At pages 6 - 7, with regard to Halpern and Front & Centers use of disclaimers, NCAA and MMAA aver the disclaimer authorized in the April 25, 2000, letter was in reference to "content within Respondents [sic] website and not an authorization to register domain names containing NCAA trademarks." NCAA and MMAA aver Front & Center had "gone beyond the limits of fair use with the content of the site in its non-NCAA branded domain name."

NCAA and MMAA aver that the use of the FINAL FOUR and NCAA mark in connection with "tickets" lures consumers to the sites on the "mistaken belief that it is an official ticket sale site. A disclaimer is ineffective after the consumer already has chosen a site." A disclaimer is effective "to warn the consumer that the tickets being offered were acquired in a secondary market and not from the NCAA directly."

At pages 6 - 7, NCAA and MMAA contend that the allegedly erroneous release showing an "Official NCAA" box header at the "finalfour.org" site "is precisely why the Respondents should not have use of the NCAA trademarks within a domain name." The "harm caused is the same" regardless of whether this posting was deliberate or not.

Finally with respect to disclaimers, at page 7, NCAA and MMAA contend that if they had been aware of "Respondents NCAA-branded registrations" (presumably, when they proposed a disclaimer in April 2000), the NCAA would have demanded transfer of those registrations.

At pages 7 - 8, with regard to Halperns and Front & Centers use of the domain names, NCAA and MMAA argue that domain names act as the name of a company, not as "billboards". "The public expects to find either the NCAA or an NCAA authorized or licensed site at the address." NCAA and MMAA contend that Halpern and Front & Center should not keep their "tickets" domains, and --

"FrontRow may still sell tickets within the "frontrow.com" portal and other generic college basketball domains as long as the trademark laws and laws of fair use are respected. FrontRows retention of the domains will create an official status perception that it is authorized by the NCAA to sell tickets to NCAA championship events."

NCAA and MMAA argue --

"... the addition of generic terms to dominant trademarks in domain names has been found to create a likelihood of confusion in many WIPO decisions. Trademark holders have been able to recover in cases of misspellings, use of hyphens, or other generic terms." (Citing D2000-0273, -0428, -0587, -0363, -0383, -0386, -0389, -0435, -0464, and -0494)

In NAF Case No 94444, International Speedway Corporation (NASCAR) v. 24/7(doing business as "Webtickets.com"), NASCAR allegedly was able to have "daytona-500.com" transferred from the ticket broker. The Panel stated inter alia --

"By using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, internet users to [Respondents] website .... by creating a likelihood of confusion with the Complainants mark as to the source, sponsorship, affiliation or endorsement of Respondents website."

Finally, NCAA and MMAA urge that, when the disclaimer was discussed "earlier this year," Halperns and Front & Centers intent to register any of the ten domains at issue was not discussed. If it had been discussed, NCAA would have advised "FrontRow not to register any domains containing NCAA trademarks." Halpern and Front & Center must have been aware of the trademark rights held by NCAA, and of the other sports organizations, when they registered over 1000 domain names between 1999 and present. This should be considered evidence of bad faith.

At pages 8 - 9, with regard to third party use of NCAA trademarks on the Internet, NCAA and MMAA aver that due their popularity, they have become a target for unauthorized use of their trademarks on the Internet.

"The NCAA has engaged in an anti-ambush campaign to contest such unauthorized use, has contacted media to advise how to use the phrase properly, contacted domain name holders, and filed WIPO complaints to recover many of the domain names. Five other cases are pending involving 52 domain names, and many of the domains on the list have been recovered."

At page 9, NCAA and MMAA request that the ten domain names be transferred. Also, they provide the requisite certification as to the completeness and accuracy of the information in this response.

 

4. Response to Supplemental Complaint

At page 2, with respect to the assignment of the five domain names, Halpern and Front & Center contend that NCAA never demanded they cease using any of the ten domain names in issue, and thus, prior to the initiation of this action, they never had "any reason to transfer the five enumerated domains to the NCAA." Further, the exchange of letters "indicated that all outstanding issues with FrontRow had been resolved." The assignment is complete and irrevocable, the five assigned domain names are now in the possession of NCAA, and "neither the Panelist nor WIPO have jurisdiction over these domains."

At pages 3 - 4, with respect to the 1000 domain names, Halpern and Front & Center aver that only 4% of the 1000 domain names "utilize naked trademarks." No evidence shows that "FrontRow is depriving or blocking third parties from accessing primary NCAA domains." Halpern and Front & Center sell genuine tickets, and they are in negotiations with "some of these trademark owners with respect to these forty naked domain names."

As already pleaded at pages 5 - 13 of the Supplemental Response, Halpern and Front & Center are not cybersquatters, are engaged in a bona fide offering of goods and services, and are engaged in fair use of the domains. They do not intend to divert customers from NCAAs site, their use of the domains does not harm the goodwill represented by "the NCAA mark," they do not tarnish or disparage "the NCAA marks at issue," there is no likelihood of confusion, Halpern and Front & Center have never offered to sell or otherwise transfer the domain names in dispute, they have never supplied material misleading contact information, and their acquisition of "multiple domain names similar to others is minimal (less than 4%)," and the AntiCybersquatting Consumer Protection Act provides "bad faith intent ... shall not be found in any case in which the court determines that a person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful."

Halpern and Front & Center iterate their averments as to their business activities and future plans and point to Adaptive Molecular Technologies. WIPO Case No. D2000-0006, and Draw-Tite, WIPO Case No. D2000-0017, as supporting "FrontRows good faith use of the NCAA marks." They argue that NCAAs allegation as to a pattern of misappropriation is "not supported by the evidence in that there are only five (5) domains in dispute herein out of approximately 1,000 owned by FrontRow."

At page 5, with respect to NCAAs allegation that its trademarks are "famous", Halpern and Front & Center repeat that this dispute procedure is not adequate to determine whether NCAAs marks are famous, and that they have shown that three of the eight factors to be considered favor Halpern and Front & Center. They urge the Panel to "deny or withhold an adjudication on this issue."

At pages 5 - 7, with respect to "FrontRow as a Ticket Reseller", Halpern and Front & Center contend --

"... NCAA fails to contradict or dispute that (i) these NCAA tickets are extremely hard to obtain (e.g., the NCAA does not provide evidence as to how many applications it receives for the 12,000 men event tickets and 9,000 women event tickets they make available via lottery to the public); (ii) a large percentage of the seats for these NCAA events are dedicated to players, NCAA teams, players and coachs families, faculty etc.; and (iii) that good NCAA tickets cost as much as $10,000 per seat."

Halpern and Front & Center contend it cannot be disputed they provide a valuable service to the public, and notwithstanding that NCAA discourages resale of its tickets, (i) there is a "severe scarcity" of these tickets, (ii) there are willing sellers, and (iii) there are many willing buyers. "FrontRow facilitates the economic transfer of NCAA tickets between buyers and sellers with the disputed domain names." They contend also "NCAA does not provide any documentary evidence of confusion with respect to FrontRow or any other ticket seller."

At pages 6 - 7, they contend there is no evidence of diversion of customers, the Stanley Works case is contrary to Adaptive Molecular Technologies and Draw-Tite, and Stanley Works is distinguishable from the present case (e.g. the record included disparaging comments by respondent, disruption of complainants business, and consumer confusion).

At pages 7 - 8, with respect to "FrontRows Disclaimers", Halpern and Front & Center assert the disclaimers on their web pages were approved by the NCAA. With respect to the erroneous release of the web page with the "small box header Official NCAA," (i) the header was a hyperlink to the genuine NCAA site; (ii) the release of the web page was a mistake, and (iii) "FrontRow has taken steps to avoid mistakes of this nature in the future." The Panel should not "draw an adverse conclusion from this mistake in view of the size of the FrontRow network."

At page 8, with respect to "Domain Names as Billboards", Halpern and Front & Center repeat that the Internet is indeed like a public highway, and

"Domain names give Internet travelers a location (an Internet address) and information about goods and services at that location."

The NCAA owns domain names, including the five transferred by Halpern and Front & Center to the NCAA. The five domain names Halpern and Front & Center want to keep are "descriptive and informative of FrontRows ticket reselling services ... and ... its services of providing hard to find and premium seats tickets for well known sporting events."

At pages 8 - 10, with respect to cases cited by NCAA, Halpern and Front & Center attempt to distinguish those cases on the grounds they were decided by default, involved little or no evidence, or the evidence was not credible. Halpern and Front & Center contend that "the quality and quantity of evidence [in this case] far exceeds that found in all of the cited WIPO and NAF decisions."

This response concludes with the requisite certificate and signatures of both Halpern and his counsel.

 

5. Discussion and Findings

Paragraph 4.a. of the Policy directs that NCAA and MMAA must prove, with respect to the each domain name in issue, each of the following:

(i) The domain name is identical or confusingly similar to at least one of NCAAs or MMAAs trademarks in issue and in which the specific complainant has rights, and

(ii) Respondent has no rights or legitimate interests in respect of the domain name, and

(iii) The domain name has been registered and is being used in bad faith.

Paragraph 4.b. of the Policy sets out four illustrative circumstances, which for purposes of Paragraph 4.a.(iii) above shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4.c. of the Policy sets out three illustrative circumstances any one of which, if proved by respondent, shall demonstrate respondents rights or legitimate interests to the domain name for purposes of Paragraph 4.a.(ii) above.

a. U.S. AntiCybersquatting Consumer Protection Act

The Policy does not give this Panel jurisdiction to determine claims under the U.S. AntiCybersquatting Consumer Protection Act. Therefore, the Panel declines to determine the merits of NCAAs and MMAAs claims under that Act.

b. The Five Domain Names Transferred to NCAA and MMAA

NCAA and MMAA do not dispute that the five domain names which do not include "tickets" have been assigned by Halpern and Front & Center to complainants. NCAA and MMAA state only that they are withholding the filing of the assignments with the registrar until WIPO notifies NCAA and MMAA such filing will "not harm the disposition of this case."

The five domain names subject to the assignments are "final-four.org", "final4.org", "march-madness.org", "final-4.net", and "final-4.org". As a result of those assignments, these five domain names are no longer in issue, and the Panel has no jurisdiction to determine whether or not they should be canceled or transferred. This does not mean, however, that the Panel cannot take into account Halperns and Front & Centers conduct with respect to any of the five domain names.

In light of the foregoing, this decision will be directed to the five domain names that remain in dispute, viz.: finalfourtickets.net, "finalfour-tickets.com", "finalfour-tickets.net", "ncaatickets.org", and "finalfourticketsforsale.com". NCAA owns the U.S. registrations for the marks NCAA and FINAL FOUR. Accordingly, the balance of this discussion will be directed to NCAA as the complainant.

c. Identity or Confusing Similarity

NCAA has the burden of proving this element, as well as each of the other two elements of Paragraph 4.a. of the Policy.

Halpern and Front & Center do not dispute NCAAs ownership of U.S. trademark registrations for NCAA and FINAL FOUR, or its ownership of "ncaa.org" and "finalfour.net" websites. Halpern and Front & Center do dispute that the marks are famous and assert that this forum is inappropriate for resolving that issue.

The Panel is not required to resolve the issue of whether or not a mark is "famous" in order to determine whether or not a domain name is identical or confusingly similar to the mark. The issue here is whether or not the addition of the suffix "TICKETS" or "TICKETSFORSALE" is sufficient to compel a determination of no identity or no confusing similarity.

At the outset, ample authority demonstrates that merely adding a suffix or a prefix to a mark does not insulate the domain name from a finding of identity or confusing similarity. E.g., NCAA v. Rodd Garner et al, WIPO Case No. D2000-0940; also, ISL Marketing et al v. J.Y. Chung et al, WIPO Case No. D2000-0034, Wal-Mart v.Walmarket Canada, WIPO Case No. D2000-0150, Yahoo! v. David Ashby, WIPO Case No. D2000-0241, PACCAR v. Enyart Associates et al, WIPO Case No. D2000-0289, Ermenegildo Zegna v. Estco Enterprises, WIPO Case No. D2000-0395, Chanel v. Estco Technology, WIPO Case No. D2000-0413, Yahoo! v. Jorge O. Kirovsky, WIPO Case No. D2000-0428, USOC v. Tri B-U-N Eco. Project, WIPO Case No. D2000-0435, Toshiba v. Distribution Purchasing, WIPO Case No. D2000-0464, Yahoo! v, Domain Collection, WIPO Case No. 2000-0476, Wal-Mart v. Walsucks et al, WIPO Case No. Dw000-0477, Guerlain v. HI Investments, WIPO Case No. D2000-0494, Yahoo! et al v. Data Art et al, WIPO Case No. D2000-0587.

Here, the identity or confusing similarity of the five domain names to the NCAA and FINAL FOUR marks is plain and confirmed by the admitted intention of Halpern and Front & Center to channel consumers to their "FrontRow Network" in order to sell, inter alia, tickets to NCAA and FINAL FOUR events. The principal feature of each of the five domain names in issue is either "NCAA" or "FINAL FOUR". In light of Halperns and Front & Centers emphasis on the value of tickets to NCAA events, it necessarily follows that these are well known marks among collegiate sports enthusiasts.

Halpern and Front & Center expect consumers to recognize the marks "NCAA" and "FINAL FOUR", and as a result, visit their sites. It is highly likely that anyone interested in acquiring tickets via the Internet to an NCAA event, and more specifically, to the Final Four collegiate basketball tournament, would start a search with NCAA or FINAL FOUR. A searcher may well expect "tickets" to be used by the NCAA in connection with its marks. The record here is more than sufficient to support the conclusion of identity or confusing similarity under Policy, Paragraph 4.a.(i).

d. Rights or Legitimate Interests

NCAAs averments in the complaints as to Halperns and Front & Centers lack of any rights or legitimate interests in the five domain names in issue are generally folded into their averments of bad faith registration and use. Paragraphs 10 and 17 of the complaints are directed to rights and interests -- in conclusory terms. At paragraph 10, NCAA simply quotes Policy, Paragraph 4.a.(ii). At paragraph 17, NCAA avers that Halpern and Front & Center are not "Corporate Partners" or licensed to use NCAA marks in any form, and accordingly, Halpern has "no rights or legitimate interests in the domain name [sic] in issue."

In the August 29, 2000, supplemental complaint, NCAA continues to focus on bad faith. However, at page 5, NCAA quotes from Stanley Works, WIPO Case No. D2000-0113 --

"... the collateral trademark use necessary to allow resell [sic] of Complainants products is not enough to give Respondent proprietary rights in Complainants trademarks, and certainly not enough to confer the right to use these trademarks as domain names."

At pages 5 - 6, NCAA avers it "discourages ticket brokers from selling FINAL FOUR tickets at inflated prices. ... The NCAA has the right to protect its name by not allowing any ticket broker to use NCAA trademarks in domain names ... ." At page 6, NCAA contends that the disclaimer authorized in its April 25, 2000, letter to Halpern and Front & Center was "in reference to content within the Respondents[] website and not an authorization to register domain names containing NCAA trademarks." At pages 8 - 9, NCAA asserts that it is policing its trademarks to contest unauthorized use of the marks in domain names.

Notwithstanding that many of NCAAs assertions as to Halperns and Front & Centers alleged lack of rights and legitimate interests are in reply to their responses to the complaints, NCAA has at minimum satisfied prima facie its burden with respect to Policy, Paragraph 4.a.(ii).

However, that Halpern and Front & Center are not expressly authorized to use the NCAA and FINAL FOUR marks is not the end of the inquiry. As provided in Policy, Paragraphs 4.c.(i) - (iii), a domain name registrant can demonstrate rights or legitimate interest if the registrant proves that one of the illustrative situations exists. Halpern and Front & Center contend that under Policy, Paragraph 4.c., subparagraphs (i) and (iii), they have demonstrated their rights or legitimate interests in the five domain names in issue.

1. Paragraph 4.c.(i)

Halpern and Front & Center contend, inter alia, their "FinalFourTickets.net" site has been up and running since August 1999, well before any notice of this dispute. 7 Through that site, Halpern and Front & Center indisputably sell "genuine" NCAA tickets. Pursuant to their business plan, initiated in April 2000, roughly contemporaneously with the alleged resolution of the question of disclaimers, Halpern and Front & Center have continued to raise money, have enlarged and expanded their business, and plan to continue to do so in the foreseeable future.

Halpern and Front & Center assert that they offer genuine, premium and hard to find tickets to NCAA events that NCAA does not offer. They contend there is substantially no other source for hard to find FINAL FOUR and MARCH MADNESS tickets except through ticket resellers 8. NCAA attempts to contravene these assertions by averring that (1) NCAA does sell tickets through a lottery one year before each FINAL FOUR basketball championship, (2) consumers contact NCAA about the sale of tickets to the FINAL FOUR, (3) NCAA occasionally releases additional tickets, including "premium, hard to find tickets," (4) the NCAA discourages the sale of NCAA tickets for more than face value, and (5) the public "frequently contacts the NCAA perceiving that the NCAA gives ticket brokers the premium seats." 9

NCAA offers tickets via lottery during a short period about a year before the FINAL FOUR. Halpern and Front & Center offer tickets over a much longer period prior to the event, and perhaps to a more affluent segment of potential customers. This distinction, however, does not detract from the fact that both NCAA and Halpern and Front & Center are selling tickets to the same events.

Moreover, NCAA has not authorized the use of its marks in any Halpern or Front & Center domain name. Indeed, NCAAs April 25, 2000, letter to counsel for Halpern and Front & Center makes it abundantly plain that --

"... there should be no commercial or promotional use of logos or marks without the advance permission of the NCAA." (Emphasis added)

Halperns and Front & Centers incorporation in the five domain names in issue of the marks NCAA and FINAL FOUR is clearly commercial, without permission, and in direct contravention of NCAAs April 25, 2000, letter.

Halpern and Front & Center concededly intend to direct visitors to their NCAA and FINALFOUR websites to their primary sites, at which not only NCAA tickets are offered at premium prices, but also other tickets, goods and services. Halpern and Front & Center repeatedly refer to the goods and services, other than NCAA tickets, they offer through their FrontRow Network. Since the April 25, 2000, letter, Halpern and Front & Center have continued their commercial use of the NCAA and FINAL FOUR marks without any permission, much less "advance permission", from NCAA. At bottom, Halpern and Front & Center have consciously arranged their network of websites (1) to ride the goodwill associated with NCAAs marks, (2) to attract consumers to Halperns and Front & Centers primary sites, (3) to sell NCAA tickets at highly inflated prices, (4) to sell other tickets and other goods and services not provided or endorsed by the NCAA, and (5) to make a profit. 10

Draw-Tite does not avail Halpern and Front & Center because (1) respondent there sold "genuine" goods provided by complainant directly to respondent -- even after the complaint in that proceeding was filed, and (2) the evidence supported an inference that complainant had acquiesced in the offending website. Nor does Adpative Molecular compel a determination in favor of Halpern and Front and Center. There (1) respondent acquired goods directly from complainant, (2) respondent sold only complainants goods at the single site in issue, (3) there apparently were not multiple registrations of variations on the mark in issue, and (4) respondent submitted an affidavit that complainant had acquiesced in respondents registration.

On this record, the Panel concludes that Halperns and Front & Centers use, and preparations for use, of the five domain names still in issue have not been in connection with a "bona fide" offering of goods or services.

2. Paragraph 4.c.(iii)

Halpern and Front & Center contend they are making a legitimate fair use of the domain names, without intent to misleadingly divert consumers or to tarnish the marks at issue. They assert that as a result of the exchange of correspondence in April 2000, they believed all disputes had been resolved. As a result of their efforts since they founded their business in 1990, and launched their Internet sales in 1995 (through "FrontRow.com"), they have become known as "a leading secondary market ticket broker" in South Florida, have "gained a national footprint," and plan to grow their business -- witnessed by their business plan, substantial investments in growing their business, the launching of 200 active domain sites in the last 14 months, and the substantial benefit they provide to sophisticated consumers who want genuine, hard to find, premium tickets to NCAA events and are willing to spend $10,000 per seat.

Halpern and Front & Center note that in the NCAAs April 25, 2000, letter, the NCAA agreed that the use of "NCAA" and "Final Four" "in connection with the description of event tickets being sold ... may fall within the category of fair use." Halpern and Front & Center assert that each website will be "clearly marked with a disclaimer and will be used to sell genuine NCAA tickets."

Halpern and Front & Center aver that the "primary" domain name "finalfourtickets.com" is owned by a ticket reseller in California, and the site is not authorized by the NCAA and contains no disclaimer 11. Halpern and Front & Center claim they are using "FinalFourTickets.net" in a descriptive manner, are adequately notifying consumers it is not an official NCAA site, and are providing consumers substantial benefits not provided by the NCAA. They iterate the only place to find hard to find and premium tickets is the secondary market. They intend to build websites at all of their 1000 domain names "as a feeder network into the existing "FrontRow.com" Network."

Halpern and Front & Center clearly intend to attract customers to their primary websites for the purpose of commercial gain. They intend to do so by taking commercial advantage of the goodwill associated with the NCAA marks which form parts of their domain names. It is difficult to believe that consumers are not misled by this use of the NCAA marks. Halpern and Front & Center expect consumers looking for NCAA tickets to be led to the Halpern and Front & Center sites simply because of the inclusion of the NCAA marks in the domain names in issue. Such customers are necessarily misled by those domain names because they are not directed to an authorized NCAA site, but rather to Halperns and Front & Centers primary sites, where NCAA tickets are offered without authorization from NCAA, and where other tickets, goods and services are offered.

Halpern and Front & Center mistakenly, and unreasonably, rely on the April 25, 2000, letter to justify their alleged "fair use". That letter does refer to "fair use", but only in the context of use of NCAA marks in the text at a website itself, not in a domain name. Halpern and Front & Center overlook entirely the plain admonition in the April 25, 2000, letter that no commercial use of NCAA marks should be made without advance permission of NCAA. 12

Halperns and Front & Centers use of the NCAA and FINAL FOUR marks in the domain names in issue is commercial, is not authorized, and is with the intent to divert consumers to the Halpern and Front & Center primary sites which offer not only NCAA tickets but also other goods and services not sanctioned by NCAA. Thus, consumers are misled.

Apart from the Paragraph 4.c. factors, which are only illustrative, Halpern and Front & Center do not have any rights or legitimate interests in the domain names that are superior to the rights and legitimate interests of NCAA in the marks incorporated in those domain names. Halpern and Front & Center have attempted to diminish the validity of those marks by pointing to the number of "non-official" FINAL FOUR and NCAA domain names registered by third parties. NCAA counters by stating it is attempting to police such uses of its marks. Halpern and Front & Center point to the large number of references to "final four" in the literature. Notwithstanding that NCAAs U.S. trademark registrations are not a part of this record, it is apparent from their registration numbers that they were issued more than five years ago and are presumptively valid, as well as "incontestable". 15 U.S.C. 1057(b), 1065.

While Stanley Works is not on all fours with the facts in this proceeding, the discussion there regarding rights and interests is instructive:

"... even if Respondent is a retail seller of Complainants products, the collateral trademark use necessary to allow resell [sic] of Complainants products is not enough to give Respondent proprietary rights in Complainants trademarks, and certainly not enough to confer the right to use these trademarks as domain names.

d. Registration and Use in Bad Faith

Registration and use of the domain names in issue in bad faith are matters of the appropriate inferences to draw from circumstantial evidence. On this record, the facts and appropriate inferences compel the Panel to find under Policy, Paragraph 4.b.(iv), Halpern and Front & Center have registered and have used in bad faith the five domain names remaining in issue.

Halpern and Front & Center do not dispute, indeed they tout, the fact that they have intentionally attempted (or, with respect to sites not yet operational, will attempt) to attract for commercial gain Internet users to their primary websites by way of the domain names incorporating the NCAA and FINAL FOUR marks. This is precisely how they expect to profit and do profit. Halpern and Front & Center deny vigorously, however, that they have created "a likelihood of confusion with the complainants mark as to the source, sponsorship, affiliation, or endorsement" of their "website or location or of a product or service on [their] website or location." On balance, however, the record here shows that the likelihood of confusion is what Halpern and Front & Center count on.

It is clear that Halpern and Front & Center have engaged in a pattern of registering, using, and purportedly preparing to use domain names that incorporate the marks of others. They proudly point to their having registered over 1000 domain names -- all with the intention and expectation of developing a network that will direct prospective customers to their primary sites so Halpern and Front & Center can sell a variety of tickets, goods and services 13. Among the 1000 domain names are the five now in issue and the five previously transferred to NCAA.

That only five of the 1000 domain names are in issue here does not cut in favor of Halpern and Front & Center. The Panel measures the propriety of respondents conduct against the Policy, Paragraph 4. There is no basis in the Policy or in logic for arguing that a respondents registering large numbers of domain names should evidence good faith. Indeed, large numbers of domain names of the kind in issue here tend to show bad faith registration and use. Overkill in registering domain names incorporating well-known trademarks for commercial purposes logically leads to an inference of bad faith registration and use.

Halpern and Front & Center contend that the marks in issue are not "famous". As the Panel has already noted, whether or not the marks are "famous" is not necessary to a determination in this proceeding. The Policy is not limited to "famous" marks. The fact is that Halpern and Front & Center have registered, used and planned to use the five domain names in issue to sell "hard to find" and "premium" tickets to events sponsored by NCAA under NCAA and FINAL FOUR marks, as well as tickets to other events plus other goods and services. Halperns and Front & Centers reliance on, and intent to profit from, the well and favorably known events associated with the marks in issue eliminate any need to show the marks are "famous" in a technical trademark sense. Tickets to NCAA events would not be "hard to find" and would not command upwards of $10,000 each, if the marks were not widely known and favorably so. Halpern and Front & Center cannot, and do not attempt to, deny that they are counting on the demand for tickets associated with these well known marks to turn a profit.

Halperns and Front & Centers conclusory contentions that their consumers are sophisticated and know they must go to a ticket reseller for hard to find and premium NCAA tickets are not dispositive on the issue of likelihood of confusion as to source or endorsement of their websites incorporating the NCAA and FINAL FOUR marks. Also, a large number of domain names incorporating NCAA, FINAL FOUR, or variants, in itself does not dispel any likelihood of confusion as to source, sponsorship, or endorsement. It cannot be correct that a large number of domain names registered by such registrants without authorization in itself mitigates any confusion as a result of the incorporation of the NCAA and FINAL FOUR marks in the domain names currently in issue. Not until a consumer searches on one of the domain names in issue and actually visits the site associated with the domain name, will the consumer learn that the site is not an authorized NCAA site, or is no site at all. Indeed, the consumer will be channeled to Halperns and Front & Centers primary sites -- not to an authorized NCAA site.

Initial confusion is enough to demonstrate bad faith under Paragraph 4.b.(iv). Initial attraction is what Halpern and Front & Center are counting on. Consumers are likely to be drawn to Halperns and Front & Centers FINALFOURTICKETS.NET site in the belief that Final Four tickets will be available. Indeed they are -- at a very high price.

It is fair to conclude that a consumer seeking information about NCAA or FINAL FOUR tickets would start the search by using one of these marks. Halpern and Front & Center are knowingly taking advantage of the normal conduct of the interested public.

Importantly, other goods and services are also offered to consumers who visit the site. The consumers are channeled to Halperns and Front & Centers primary sites where many goods and services unrelated to NCAA are offered. In short, Halpern and Front & Center are using NCAAs marks and associated good will to attract consumers who are offered many goods and services other than "genuine" NCAA tickets.

Even if Halperns and Front & Centers offerings were limited to "genuine" NCAA tickets, the domain names in issue would not be analogous to ordinary "billboards". The domain names are addresses. Each domain name implies an authorized relationship with the owner of the mark included in the domain name. In this case, the NCAA mark or the FINAL FOUR mark is the indisputably, eye-catching feature of the domain name. Notwithstanding that the domain names may well be descriptive of some (but, admittedly, not all) of the services offered by Halpern and Front & Center, the registration and use of the marks in the domain names has been in bad faith.

Halpern and Front & Center contend that their registration, after the first complaint was filed in this proceeding, of two domain names later transferred to NCAA is not evidence of bad faith. They urge that the two names were registered before they received "notice of the complaint" and only to obtain 1000 domain names for their business plan. This excuse rings hollow. Halpern and Front & Center had already registered eight other domain names utilizing NCAA and MMAA marks. Five of those previously registered domain names included "Final-Four" and other variants of the FINAL FOUR mark. The rush to register these two additional domain names, followed a few weeks later by the assignment to NCAA, suggests strongly that not only these two, but all ten, domain names were registered in bad faith.

"finalfourtickets.net" has been used as an active site since August 1999. The other four domain names in issue have apparently not been used as active sites. For their own reasons, Halpern and Front & Center have apparently elected not to activate sites at those four domain names. Non-use of those four domain names does not in itself preclude a finding of bad faith as to them. Telstra v. Nuclear Marshmallows, WIPO Case No. D2000-0003 ("inaction is within the concept" of being used in bad faith).

In light of this record, the Panel concludes that Halperns and Front & Centers registration and use of the five domain names in issue has been in bad faith.

 

6. Decision

In view of the foregoing, the Panel decides that NCAA has met its burden of proving (a) the five domain names still in issue are confusingly similar to the NCAA and FINAL FOUR marks they embody, (b) Halpern and Front & Center have no rights or legitimate interests in respect of the five domain names, and (3) Halpern and Front & Center have registered and used each of the domain names in bad faith.

Accordingly, the Panel requires that the registrations of the five domain names still in dispute (i.e. "finalfourtickets.net", "finalfour-tickets.com", "finalfour-tickets.net", "ncaatickets. org", and "finalfourticketsforsale.com") be transferred to NCAA.

As the Panel has noted supra in Section 5.b., the other five domain name registrations having already been assigned by Halpern and Front & Center to NCAA, nothing further remains to be determined by the Panel with regard to those domain names.

Finally, the Panel has no authority in this proceeding to determine whether or not the United States AntiCybersquatting Consumer Protection Act has been violated.

 


 

David W. Plant
Panelist

Dated: December 10, 2000


 

Footnotes:

1. "final-4.net" and "final-4.org" are referred to only in the amended complaint.

2. Throughout their responses, Halpern and Front & Center refer to themselves collectively as "Respondent FrontRow" or as "FrontRow". The Panel has elected to refer to each respondent individually.

3. Hereafter, "Tab ___" refers to the Tab at which documents appear in the three binder of exhibits accompanying the August 22, 2000 responses.

4. Halpern and Front & Center quote specific numbers of customers and annual revenues, which specifics need not be stated in this decision.

5. This response is said to be necessary "due to the word limit imposed by WIPO and the allegations made in NCAAs complaint."

6. "Annex __" refers to an Annex to the Supplemental Complaint.

7. Halpern and Front & Center are silent as to whether or not any of the other four domain names in issue is an address of an active site.

8. Neither party states where Halpern and Front & Center obtain the tickets they sell.

9. Although NCAA contends that some ticket brokers are engaged in deceptive and fraudulent activities, NCAA does not assert that Halpern and Front & Center are in this category. The Panel does not regard this general contention as relevant to this proceeding. It is unnecessary, and would be improper, for the Panel to take any position with regard to the legality in any jurisdiction of Halperns and Front & Centers activities. The Panel has not considered any averments on this subject.

10. Halpern and Front & Center are not shy about touting the profitability of these endeavors.

11. The Panel has found no web page from this site among the exhibits and annexes accompanying the pleadings.

12. Correspondence between NCAA and counsel for Halpern and Front & Center, in addition to the April 25, 2000 letter, appears at Tab 11. That correspondence focused on the use of NCAA marks in the text at the "frontrow.com" website. None of the correspondence is directed to the embodiment of NCAA marks in domain names. Counsel for Halpern and Front & Center referred only to their principal domain name and did not mention any domain names incorporating NCAA trademarks.

13. E.g., "The FrontRow websites ... are fed by 200 active domain websites ... to channel consumers to the FrontRow

 

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