NBA Battles Cybersquatting in China Through International Arbitration
Even though the NBA’s relationship with China has been complicated of late, the league continues to enforce its intellectual property rights as vigorously there as in any other country. This spirit was evident in the NBA’s recent victory at the World Intellectual Property Organization over the domain name “nbaplus.com.”
On June 10, WIPO arbitrator Karen Fong ordered the domain name be transferred from a person residing in China to the league on grounds that it is confusingly similar to the NBA’s trademark for “NBA” and that it is being used in bad faith. The dispute raises the problem of cybersquatting, where a domain name is registered on account of it being highly similar to trademarked phrases.
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Sportico has obtained a copy of the decision.
In January 2019, Wang Hai Tao (the respondent) registered nbaplus.com with Alibaba Cloud Computing, a company based in China. The domain name didn’t direct to an active website, and as of this writing, it still doesn’t direct anywhere.
Fast forward to April 2022. NBA Properties—the league’s arm for merchandising, licensing and other intellectual property activities—filed a complaint with the WIPO Arbitration and Mediation Center. Alibaba, like other domain registration companies, is bound by the rules of WIPO, which is an agency of the United Nations that administers international IP treaties. One of WIPO’s key functions is to arbitrate disputes over domain names and to provide an out-of-court vehicle for bona fide parties to contest cybersquatting and other deceptive domain name practices. Alibaba shared the respondent’s contact info, which WIPO used to relay the NBA’s complaint. According to Fong, who is an attorney at Keystone Law in London, the respondent didn’t respond.
Fong concurred with the NBA’s legal reasoning for taking control of nbaplus.com.
The NBA has held a trademark of “NBA” since 1997 and holds trademarks in China as well. The mere addition of “plus,” Fong noted in the decision, “does not prevent a finding of confusing similarity.” She also concluded the respondent lacked “rights [to] or legitimate interests [in]” nbaplus.com, which was “being passively held” and not offering any goods or services.
Fong further reasoned that the respondent must have been aware of the NBA’s trademark given the NBA’s “global reputation,” with games and programming spanning 215 countries and with nba.com receiving about 50 million visits every month. She also emphasized that the registration of nbaplus.com occurred 25 years after the NBA registered nba.com and many years after the league secured relevant trademarks. Fong deemed it “implausible” to believe the respondent “was unaware of [the NBA] when it registered the domain name.” Therefore, the 2019 registration was done in bad faith. Fong also regarded the passive holding of nbaplus.com as evidence of bad faith.
Over the last two decades, NBA Properties has filed several WIPO complaints and obtained the transfer of domain names illegitimately held by other people and businesses, including Mynba.com, nbafit.com, knicks.com, washingtonwizards.com, houstonrockets.com, newjerseynets.com and denvernuggets.com. These domain names were passively held or would redirect to spam websites.
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