The NCAA has suffered several legal stumbles in 2021: the unanimous defeat in the U.S. Supreme Court case NCAA v. Alston; setbacks in House v. NCAA and Johnson v. NCAA; and its general retreat on name, image and likeness rights. However, the nonprofit recently scored a victory in an arbitration proceeding over the disputed domain name “finalfourneworleans.com.”
Georges Nahitchevansky, an arbitrator for the World Intellectual Property Organization, ordered on Sept. 9 that finalfourneworleans.com be transferred to the NCAA.
During the last 40 years, the NCAA has sought and obtained trademark registrations from the U.S. Patent and Trademark Office for tournament-related marks. In 1988, the USPTO awarded the registration of “Final Four” to the NCAA, which has also been awarded “The Final Four”, “Final 4” and “Road to the Final Four.” Those registrations are for the tournament itself and related goods and services. Registration provides the NCAA with presumption of ownership in a mark, the exclusive right to use that mark and access to anti-counterfeit protections from the U.S. Customs and Border Protection agency.
In 2008, Jules Richard, through his business, registered finalfourneworleans.com. GoDaddy.com is the registrar for this domain name. Clicking on finalfourneworleans.com doesn’t lead to an active website.
In 2019, the NCAA sent Richard a demand letter over its objection to the registration. The NCAA sent follow-up communications as well. There was no response, according to the arbitration ruling.
In July, the NCAA filed a complaint with the WIPO Arbitration and Mediation Center, which provides dispute resolution services for domain name controversies. Nahitchevansky, a partner and intellectual property law expert at Kilpatrick Townsend in New York City, accepted arguments from both sides. Only the NCAA, represented by Loeb & Loeb, offered them.
The NCAA raised several contentions.
First, it asserted that it possesses strong rights in “Final Four” since it registered the mark and similar ones. Likewise, the NCAA has used “Final Four” in connection to the annual men’s and women’s college basketball tournaments for more than four decades. “Final Four,” in other words, is famous because of its ties to a renowned NCAA tournament.
Second, the NCAA insisted that finalfourneworleans.com is confusingly similar, and in part identical, to “Final Four.” The NCAA likewise noted that while finalfourneworleans.com refers to New Orleans, that reference doesn’t distinguish the domain name from “Final Four.” That is especially true, the NCAA insisted, since next year New Orleans will host the Final Four for the sixth time.
Third, the NCAA maintained that Richard lacks ties consistent with a valid stake in Final Four. For instance, he does not appear to possess interests in the domain name and hasn’t offered goods or services through it. Richard also isn’t affiliated with the NCAA and didn’t receive NCAA permission to register the domain name.
Fourth, the NCAA claimed Richard acted in “bad faith” given the close resemblance between finalfourneworleans.com and “Final Four,” and given that New Orleans has previously hosted the tournament and will host it again next year.
Nahitchevansky agreed with the NCAA. He found the domain name “confusingly similar” since it blatantly incorporates Final Four. Nahitchevansky also reasoned that the inclusion of “New Orleans” at the domain name’s tail doesn’t sufficiently distinguish it from “Final Four.”
Nahitchevansky acknowledged that the phrase “final four” enjoys “a common meaning and is commonly used for many references, such as by way of example ‘final four hours,’ ‘final four years,’ or the ‘final four contestants’ in a challenge.” Yet he found the NCAA “owns strong rights” in Final Four and that the domain name registration was likely motivated by the “trademark value related to [the NCAA’s] Final Four trademark.”
The arbitrator added that Richard including “New Orleans” seems reflective of the fact that the NCAA plays the tournament there with some frequency. He also found it “easy to infer” that both the registration and the “passive holding” of the domain name was done “with an aim of profiting from a domain name that consumers would likely believe is connected to [the NCAA] and its annual tournament.”
For the NCAA, the win will help it protect commercial interests related to the Final Four and ensure that its intellectual property is guarded from persons or organizations that might attempt to profit from NCAA brands.