But the decision, issued under the Internet Corporation for Assigned Names and Numbers’ Uniform Domain Name Dispute Resolution Policy, allowed Giancola to keep all of the domain names that used the NCAA mark in connection with various Internet gambling sites.
So the NCAA took the matter to a different court. On March 7, it filed suit in the Eastern District of Virginia, alleging trademark infringement and seeking transfer of the remaining 12 names. NCAA v. NCAAbasketballodds.com, 01-374-A (E.D. Va., filed March 7, 2001).
The Giancola suit is just one of several the NCAA has filed in recent weeks seeking transfer of domain names that use its registered trademarks in association with gambling on the Internet.
On March 21, the NCAA celebrated victory in another case when a federal district judge issued a preliminary injunction requiring the shutdown of two gambling-related Internet sites that include the NCAA mark in their domain names. NCAA v. BBF Int'l, 01-422-A (E.D. Va. March 22, 2001).
The NCAA’s dilemma is starting to sound familiar. When legitimate businesses learn of unauthorized use of their trademarks in domain names, their first line of attack is usually the Uniform Domain Name Dispute Resolution Policy.
The policy’s simple rules provide for a virtually automatic transfer of a domain name if the complainant can prove that the complainant has a legitimate right to a mark; that the domain name at issue is identical or confusingly similar to that mark; that the domain-name holder has no legitimate interest in the mark; and that the domain name has been registered and is being used in bad faith.
Until recently, most trademark holders safely assumed that they could obtain a domain-name transfer simply by proving that the registrant of the domain name was using their mark to lure customers to its own Web site. But several recent decisions indicate that proof that another business is using one’s registered trademark in its domain name is not enough to obtain a transfer under the ICANN procedure. A complainant must be able to show that the alleged infringer has "no legitimate interest in respect of the domain name."
Although there is no litmus test for establishing a legitimate interest with respect to a domain name, the ICANN policy describes three circumstances that can demonstrate a legitimate interest. The domain-name holder can submit proof that before receiving notice of the dispute, he or she used the name or prepared to use the name in connection with a bona-fide offering of goods or services, that he or she has been commonly known by the domain name, or that he or she is making a legitimate, noncommercial, fair use of the mark at issue.
Giancola’s success stemmed from the arbitrator’s conclusion that despite the NCAA’s registered mark, she had shown a legitimate interest in domain names such as ncaabasketballodds.com, ncaafootballbetting.com and ncaafootballgambling.com because those names were used to offer bona-fide goods or services related to gambling on NCAA sporting events.
The arbitrator rejected the NCAA’s argument that promoting gambling was not a legitimate interest and refused to consider the fact that the NCAA was lobbying the United States government to make Internet gambling illegal. Indeed, he found the fact that the NCAA strongly opposed gambling diminished the likelihood of confusion with respect to the NCAA’s mark.
In holding that "a [W]eb site devoted to providing information or access to gambling on NCAA games qualifies as the bona-fide offering of goods or services," the arbitrator reinforced the complainant’s burden to prove each of the four criteria necessary for a domain-name transfer — even when the domain name at issue appears to be infringing an uncontestable mark.
The Giancola decision follows a trend that became evident in the highly publicized battles over celebrity names. Earlier this year, an ICANN panel refused to transfer brucespringsteen.com to the famous musician on the ground that he had failed to establish that the domain-name holder had no legitimate interest with respect to the domain name. See Springsteen v. Burgar, WIPO D2000-1532.
In certain respects, the respondent, an individual named Jeff Burgar, fits the billing of a standard cybersquatter: He owns around 1,500 domain names, many of which take the Internet user to his own celebrity1000.com site. And brucespringsteen.com was no exception.
But Burgar argued that Springsteen had failed to establish that he had "no legitimate interest" in the name. He also submitted that his use of the name matched the third example described in ICANN’s policy as a legitimate interest. Specifically, he argued that the site was not operated for profit, that the site indicated it was not an official or authorized site and that it in no way tarnished Springsteen’s name. The panel agreed.
Ironically, its finding that the respondent had a legitimate interest in the name was premised, in part, on the fact that a user who entered brucespringsteen.com would be taken to the celebrity1000.com site, which clearly was not an official Bruce Springsteen site. In other words, the panel based its finding of legitimacy on the site’s obvious lack of official sponsorship.
Although the brucespringsteen.com decision could be viewed as an aberration in light of numerous other celebrity domain-name cases that have sided with the celebrity (juliaroberts.com, for instance), the Giancola decision and others like it suggest that a greater percentage of panelists are refusing to transfer domain names even though the complainant clearly demonstrates an unauthorized use of a registered trademark in an identical or confusing manner.
In another decision involving gambling, for example, the owner of the monopoly for the casino and gambling industry in the Princedom of Monaco, as well as the registered mark for Casino de Monte-Carlo, tried unsuccessfully to prevent a business in Hungary from using its mark in the domain name of a site the Hungarian business planned to build for online gambling. La SociØtØ des Bains de Mer et du Cercle des Etrangers ~ Monaco v. Martimi Bt., WIPO D2000-1318.
The Hungarian business had registered numerous domain names consisting of the word "casino" followed by a dash and the name of a country. The domain name at issue was casino-monaco.com.
Preliminarily, the panel found that the words Monaco and Monte Carlo are used indifferently to designate the Princedom of Monaco. Next, it concluded that even though the complainant had established that the domain name used the complainant’s registered mark in a confusingly similar manner, it failed to establish that the name had been registered in bad faith as no evidence existed that the respondent knew of the complainant’s trademark or exclusive rights.
And, although it did not discuss the legitimate interest test per se, the panel seemed to rely on the Hungarian business’s intent to set up a series of gambling sites in connection with the names of several countries.
The panel even went so far as to distinguish three other decisions, by other panels, that held in favor of the complainant on similar domain names (casino-montecarlo.com, casino-monte-carlo.net and monacogambling.com). In these other decisions, the panels found that the complainant had demonstrated no legitimate interest and/or bad faith.
Coincidentally, one day before the panel issued its decision in the casino-monaco.com case, a different panel ruled in favor of the same complainant with respect to the domain name casinomonaco.net. Casinomonaco.net, like casino-monaco.com, was an Internet gambling site. La SociØtØ des Bains de Mer et du Cercle des Etrangers ~ Monaco v. Javier Llorens, WIPO D2000-1319.
The respondent asserted that he had a legitimate interest in his site, which he had already developed and activated. This panel, however, concluded that the respondent had not established a bona-fide offering of goods or services, noting that the activities associated with the respondent’s site were not terribly different from the activities associated with the complainant’s site.
In each of these decisions, the fact that the domain name included an unauthorized use of a registered mark was not the deciding factor. Rather, the panel looked to the legitimacy of the respondent’s interest in the domain name — not whether the respondent had a legitimate interest in the registered mark itself.
Where a domain name directs the Internet user to a Web site that offers bona-fide goods or services that are different from those offered by the trademark holder, panels are more likely to find that the domain-name holder has a legitimate interest in that name and refuse to order a domain-name transfer.
In short, complainants can no longer rely upon their possession of a registered trademark to secure domain names that incorporate their marks. As the NCAA found out the hard way, evidence of every element required under the policy must be submitted with the complaint, even in cases that appear to be a slam dunk.