The Pac-10 Conference will add the University of Colorado and the University of Utah to its league next fall and will subsequently undergo a rebranding from the PAC-10 to the PAC-12. Whether rebranding or launching a new brand, one important consideration should be whether the domain names you want to use for your brand are available. The Pac-10 just found out that PAC12.COM - likely the most vital domain name for the launch of the Pac-10’s new brand - is registered to someone else.
Because the Pac-10 wants to use PAC12.COM to promote its goods and services and because the domain name is identical or confusingly similar to the Pac-10’s new PAC-12 trademark, the conference has filed a Uniform Domain Name Dispute Resolution Policy (“UDRP”) Complaint with the World Intellectual Property Organization (WIPO). The UDRP is an administrative proceeding created by the Internet Corporation for Assigned Names and Numbers (ICANN) that allows a trademark owner to file a complaint with an approved provider when the owner believes its trademark rights are infringed by a domain name. The sole remedy available under the UDRP is transfer of the domain name from the registrant/respondent to the complainant.
Under the UDRP, a complainant (in this case, the Pac-10) must establish three elements to succeed: (1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (2) the registrant does not have any rights or legitimate interests in the domain name; and (3) the registrant registered the domain name and is using it in “bad faith.” The second and third elements are often interrelated, i.e., a finding that a registrant has no rights or legitimate interests in a domain name is typically followed by a finding of bad faith registration and use and vice versa. Here, the Pac-10 can easily establish that the PAC12.COM domain name is identical or confusingly similar to the PAC-12 mark. However, the difficulty in this case - and nearly all other UDRP proceedings - is establishing the second and third elements.
Apparently, the registrant of PAC12.COM is rather clever. It has used the PAC12.COM domain name for a website that displays an Amazon.com “widget” titled “A 12PAC from Tupac.” The widget displays twelve albums by the late rap artist Tupac Shakur; each album’s picture links to the respective album’s purchase page on Amazon.com. Why is this clever? Because the registrant of the domain name presumably anticipated a UDRP action and made an attempt, however weak or lame, to establish “legitimate interests” and rights in the PAC12.COM domain name through use of the slogan “A 12PAC from Tupac,” thereby making the second and third elements of a UDRP claim much harder for the Pac-10 to establish.
Note that the registrant of PAC12.COM obtained the domain name only after the Pac-10’s expansion was announced. This is important for two reasons: (1) it illustrates the importance of obtaining desired domain names prior to publicly announcing a brand; and (2) it is at least some evidence of bad faith registration and use of the domain name.
It is difficult to say whether the Pac-10 can muster enough evidence to overcome the registrant’s attempt to establish “legitimate interests” in the domain name. The guess here is that the Pac-10 will prevail. But, had the Pac-10 registered PAC12.COM before, or even immediately after publicly announcing the PAC-12 brand, it could have saved itself a 12PAC of trouble.