NCAA Final Four trademark legal victory in domain name dispute – Sportico.com
NCAA suffered several legal stumbles in 2021: unanimous defeat in US Supreme Court case NCAA v. Alston; setbacks in House vs. NCAA and Johnson v. NCAA; and its general withdrawal of rights to name, image and likeness. However, the association recently won an arbitration proceeding concerning the disputed domain name “finalfourneworleans.com”.
World Intellectual Property Organization arbitrator Georges Nahitchevansky ordered on September 9 that finalfourneworleans.com be transferred to the NCAA.
For the past 40 years, the NCAA has applied for and obtained trademark registrations with the United States Patent and Trademark Office for tournament-related trademarks. In 1988, the USPTO awarded the recording of “Final Four” to the NCAA, which also received “The Final Four”, “Final 4” and “Road to the Final Four”. These registrations relate to the tournament itself and the associated goods and services. Registration gives the NCAA a presumption of ownership of a mark, the exclusive right to use that mark, and access to anti-counterfeiting protections from the U.S. Customs and Border Protection Agency.
In 2008 Jules Richard, through his company, registered finalfourneworleans.com. GoDaddy.com is the registrar for this domain name. Clicking on finalfourneworleans.com does not lead to an active website.
In 2019, the NCAA sent Richard a formal notice regarding his objection to the registration. The NCAA has also sent follow-up communications. There was no response, according to the arbitration award.
In July, the NCAA filed a complaint with the WIPO Arbitration and Mediation Center, which provides dispute resolution services for domain name disputes. Nahitchevansky, partner and expert in intellectual property law at Kilpatrick Townsend in New York, accepted the arguments on both sides. Only the NCAA, represented by Loeb & Loeb, offered them.
The NCAA has raised several arguments.
First, it claimed that it had significant rights in “Final Four” since it had registered the mark and similar marks. Likewise, the NCAA has used the “Final Four” as part of the annual men’s and women’s college basketball tournaments for over four decades. “Final Four”, in other words, is famous because of its connection to a renowned NCAA tournament.
Second, the NCAA has insisted that finalfourneworleans.com is confusingly similar, and in part identical, to “Final Four.” The NCAA also noted that although finalfourneworleans.com refers to New Orleans, that reference does not distinguish the domain name from “Final Four”. This is especially true, insisted the NCAA, that next year, New Orleans will host the Final Four for the sixth time.
Third, the NCAA maintained that Richard lacked ties consistent with valid participation in Final Four. For example, he does not appear to have any interest in the domain name and has not offered any goods or services through it. Richard is also not affiliated with the NCAA and has not received permission from the NCAA to register the domain name.
Fourth, the NCAA claimed that Richard acted in “bad faith” given the close resemblance between finalfourneworleans.com and “Final Four”, and given that New Orleans has already hosted the tournament and will host it again. ‘next year.
Nahichevansky agreed with the NCAA. He found the domain name “puzzlingly similar” since it blatantly incorporates Final Four. Nahichevansky also felt that the inclusion of “New Orleans” at the tail of the domain name did not distinguish it sufficiently from “Final Four”.
Nahichevansky acknowledged that the phrase “final four” has “a common meaning and is commonly used for many references, such as for example” last four hours “,” last four years “or the” last four candidates “in a challenge. . Still, he found that the NCAA ‘has strong rights’ to Final Four and that the registration of the domain name was likely motivated by’ brand value related to [the NCAA’s] Final Four trademark.
The referee added that Richard, including “New Orleans”, seems to reflect the fact that the NCAA plays the tournament there with some frequency. He also found “easy to infer” that both the registration and “passive ownership” of the domain name were carried out “for the purpose of profiting from a domain name that consumers would likely believe to be related to. [the NCAA] and its annual tournament.
For the NCAA, the victory will help it protect business interests in the Final Four and ensure its intellectual property is protected from people or organizations who may attempt to profit from NCAA trademarks.