Athletic association wins 'marchmadness.com' under ACPA

In March Madness Athletic Association LLC v Netfire Inc (2003 WL 22047375 (ND Tex)), the US District Court for the Northern District of Texas has ordered the transfer of 'marchmadness.com' to the plaintiff - the owner of rights in the MARCH MADNESS mark. The court held that the defendant's registration (i) infringed the plaintiff's trademark rights under the Lanham Act, and (ii) had been registered in bad faith pursuant to the Anti-cybersquatting Consumer Protection Act (ACPA).

March Madness Athletic Association (MMAA) was formed by the Illinois High School Association (IHSA) and the National Collegiate Athletic Association (NCAA) to consolidate their respective rights in the MARCH MADNESS mark. The mark was used to promote an NCAA basketball tournament. Netfire operated a website at 'marchmadness.com' from 1997 through July 1999 that was devoted exclusively to the NCAA tournament. It had attempted to profit from the website by selling advertising space. In response to this use, the MMAA filed an action against Netfire with the district court.

In accordance with the Lanham Act and the ACPA, the court concluded that:

• the disputed domain name was identical to the MARCH MADNESS mark;
  
  
• the mark was distinctive at the time of registration; and
  
  
• Netfire had acted in bad faith.

The court was satisfied that the mark was distinctive at the time Netfire registered 'marchmadness.com' on the basis that the IHSA had been using the mark in connection with basketball tournaments for more than 50 years and owns a registration for the service mark MARCH MADNESS. It also accepted that the NCAA had been using the mark in connection with its telecasts of the tournament for almost 15 years and had been licensing the mark for approximately eight years.

In concluding that Netfire had acted in bad faith, the court noted, among other things, that Netfire had:

• no intellectual property rights in the MARCH MADNESS mark;
  
  
• not made any prior use of the domain name in connection with the bona fide offering of goods or services;
  
  
• the intention of diverting internet traffic away from the websites authorized by the MMAA;
  
  
• falsely implied association with the MMAA when the domain name registration was obtained from the original registrant; and
  
  
• a history of registering domain names that were identical or confusingly similar to distinctive marks.

Accordingly, the court ordered the transfer of 'marchmadness.com' to the MMAA. However, it did not award it damages under the ACPA because in July 1999 Netfire's website had been placed on hold by the registrar. Damages are not available for violations of the ACPA that occurred prior to November 29 1999.

Diane M Reed and Jesse A Rothwell, Knobbe Martens Olson & Bear LLP, Newport Beach