For the fourth time this year, the National Collegiate Athletic Association has filed a cybersquatting lawsuit accusing an Internet company of unauthorized use of NCAA trademarks.
According to the NCAA suit, Phoenix, Arizona-based Desire, Inc. used the NCAA-registered trademark “Final Four” in at least 10 different domain names for sites selling NCAA championship tickets at brokered prices.
NCAA assistant general counsel Scott Bearby told the E-Commerce Times that all of the site names at issue included some combination of the words “Final Four” and a phrase connoting tickets, such as FinalFourSeats.com.
“We’ve alleged that Final Four is our registered trademark and that a member of the public who goes to one of these sites would be confused and believe that [the site] is sanctioned by the NCAA, which gives the impression that we endorse ticket brokering, which we are adamantly opposed to,” Bearby said.
Bearby said the NCAA is alleging that Desire, Inc. registered the domain names with domain registration service eNOM, Inc., knowing in advance that the public would be misled into believing the site names were affiliated with the NCAA.
Thursday, a visit to the home page of FinalFourSeats.com showed a large disclaimer.
“We are not a NCAA March Madness Basketball box office, nor are we associated with any NCAA March Madness Basketball venues,” the site said. “All NCAA March Madness Basketball organizational labels, titles and names are used for descriptive purposes only.”
Get Off My Name
According to Bearby, the four NCAA lawsuits have cited violations of the Anti-Cybersquatting Consumer Protection Act, which states that cybersquatting, or registering the name of a well-known company or celebrity with the intent to hold it hostage, is illegal.
The law allows trademark holders to sue for possession of Internet addresses that are the same or “confusingly similar” to their trademarked names, providing that the person or entity that registered the addresses did so in “bad faith.”
The first three trademark suits filed by the NCAA this year involved gambling affiliated sites, Bearby said. The NCAA received two favorable judgements in those cases and settled the third by receiving ownership of the domain names in question without compensation.
Going To Court, Twice
According to Bearby, the NCAA has filed close to a dozen arbitrations this year alleging Internet trademark violations, winning all but two. One of the arbitration cases the NCAA lost was the current case with Desire, Inc.
Online companies with registered domain names can take up trademark disputes through a set of Internet rules called the Uniform Domain Name Dispute Resolution Policy (UDRP). Under the policy, most types of trademark-based domain-name disputes must be resolved by agreement, court action or arbitration before a registrar will cancel, suspend or transfer a domain name.
Bearby said that while this arbitration process is legally binding, it does not preclude companies from filing a lawsuit. He added that the UDRP is “a little more liberal” in its judgments than the Anti-Cybersquatting Act.
Lost in Arbitration
“As a result, there can be some inconsistencies of how the court can rule versus how the arbitrator can rule,” Bearby said.
The NCAA lost its arbitration in the Desire, Inc. case by a 2-1 decision, in which the majority found that the use of “Final Four” was as a descriptor and not a trademark infringement.
However, Bearby said the panel did find evidence of consumer confusion, and he noted that the minority opinion was highly critical of the majority ruling.
The key point in this case should be the fact that the domain names in question were allowed to be registered in the first place. Surely the company that registered these names for the accused carried out a trademark infringement check, well actually obviously they didn’t! Domain names are important when used in advertising. As such, all domain name registers should be forced to take responsibility for trademark infringements and I recommend changes in the laws to enforce this. Too many registrars simply register any name without any checks in their greedy attempts to make lots of money for doing extremely little.
As long as the disclaimer is on the site – the public is informed. The NCAA does not own the english language…
Once again, corporate AM erica slam dunks the little guy…i guess he should of named his web site. dkeisdlxlkc.com to be safe of all trademarks.
Great story , well written and interesting to read.