The Complainant is Pacific-10 Conference of Walnut Creek, California, United States of America, represented by Cooley LLP, United States of America.
The Respondent is Kevin Lee of Kanata, Ontario, Canada, represented by Ogilvy Renault LLP, Canada.
The disputed domain names <pac-12network.com>, <pac12network.com> and <pac-12network.org> are registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2011. On February 2, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On February 2, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response:
(a) confirming that the disputed domain names are registered with it;
(b) confirming that the Respondent is listed as the registrant; and
(c) providing the relevant contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced February 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 24, 2011. On February 18, 2011, the parties submitted a joint request to extend the Response due date to March 3, 2011. On February 21, 2011, the Center confirmed to the parties that the Response due date had been extended until March 3, 2011. The Response was filed with the Center March 3, 2011.
The Center initially appointed a three member panel on March 24, 2011. After the appointment of the Panel, however, unforeseen circumstances meant that it became necessary to reconstitute the Panel. Accordingly, the Center appointed Warwick A. Rothnie, David W. Quinto and David E. Sorkin as panelists in this matter on May 2, 2011. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant is an unincorporated California business association. It is among the pre-eminent collegiate athletic conferences in the United States of America (U.S.A.). Its 10 member schools participate in over 20 National Collegiate Athletic Association (NCAA) sports. In the past 20 years, it has won 171 NCAA team titles, including eight in 2009-2010. The titles have been won across 26 NCAA sports. It has won the most NCAA Championships in 44 of the last 50 years and finished second five times. UCLA, Stanford and University of Southern California are the three schools with the most NCAA champions and they are all members of the Complainant. As a result, the Complainant is known as the “Conference of Champions”, which is apparently a registered trademark. The Complainant claims to have used a family of PAC-10 trademarks consistently since 1978.
On February 9, 2010, the Complainant’s Commissioner announced that the Complainant was looking to expand the membership of the conference. This announcement was widely reported in the press.
Following the announcement on February 9, 2010, there was speculation in the media of a number of other colleges joining the Complainant, with plans to expand up to 16 schools mooted.
On February 10 and 11, 2010, the Respondent registered the disputed domain names.
The Respondent is a sports journalist. He is the president of a company which operates the website at “www.prosportsblogging.com”. Apparently, this website was founded in 2008 under the name “Sportstalkbuzz.com” and changed to its current name in March 2010. The Respondent states that he has personally contributed 170 articles to the website. The website also hosts contributions from over 300 amateur and professional sports bloggers and receives around 60,000 hits each day.
On June 10, 2010, the University of Colorado signed an agreement joining the Complainant. On June 14, 2010, the University of Texas announced that it was not joining the Complainant. On June 17, 2010, the University of Utah signed an agreement joining the Complainant.
On July 27, 2010, the Complainant announced that it would be re-branding as the PAC-12. A number of US trademark applications featuring PAC 12 were also filed that day. These applications are still pending.
Colorado and Utah will commence competing in the Complainant’s conference in the 2011-2012 academic year.
At the time the Complaint was submitted, the disputed domain names did not resolve to active websites. Instead, they resolve to “parking pages” with advertisements and links to pay per click sites, which the Respondent says were set up by the Registrar.
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain names have been registered and are being used in bad faith.
Under paragraph 15(a) of the Rules:
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
There are two parts to this inquiry: does the Complainant have trademark rights in a mark and, if so, are the disputed domain names identical or confusingly similar to that mark?
The Complainant relies on its trademark registrations featuring PAC-10, its pending applications based on PAC-12 and its extensive promotion of those marks.
The Respondent correctly points out that the Complainant’s pending trademark applications do not constitute trademark rights under the Policy. The Respondent also contests the Complainant’s claim that it has rights at common law in the, or a, PAC-12 trademark, pointing out that the Complainant has not commenced competition as the PAC-12 and arguing that the Complainant does not use the name yet.
This latter criticism is only true to an extent. As noted above, the Complainant announced it would be rebranding as the PAC-12 and that announcement attracted significant media coverage. Such circumstances, often in the case of mergers and the launch of new businesses, have been recognized by the courts and other panels as sufficient to confer protectable rights at least at common law. See e.g. Glaxo plc v. GlaxoWellcome Ltd [1996] FSR 388; Fletcher Challenge Ltd v. Fletcher Challenge Pty Ltd [1981] 1 NSWLR 196; [1982] FSR 1, both approved in British Telecom plc v One in a Million Ltd [1998] 4 All ER 476; 42 IPR 289 (Eng CA); Clifford Chance LLP And Pünder GmbH v. CPIC Inc., WIPO Case No. D2000-1603 and SBC Knowledge Ventures LP v. John Huberdeau aka J. Johnston, WIPO Case No. D2003-0642.
Accordingly, the Panel finds that the Complainant has established common law trademark rights in PAC-12 sufficient for the purposes of the Policy.
The disputed domain names are not identical to the rights established by the Complainant. The second question, therefore, is whether or not the disputed domain names are confusingly similar to the Complainant’s rights.
On this part of the inquiry what is required is simply a comparison and assessment of the domain name itself to the Complainant’s proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
On this question, the addition of the gTLD to the disputed domain names can be disregarded as simply a functional requirement of the domain name system.
The Complainant contends that the mere addition of the generic term “network” to its trademark does not distinguish the disputed domain names from its rights. The Respondent contends the opposite. He further points out that PAC is an inherently weak distinguishing feature as there are many other organizations which also use the term.
The Complainant’s trademark rights, however, lie in PAC-12. To many sports fans, particularly in North America, that term, and quite probably PAC itself, will suggest the Complainant and the sports activities of its conference members. The addition of the descriptive word “network” and the presence or absence of the “-” do not teach away from that association.
Accordingly, the Panel finds that the Complainant has established the first requirement under the Policy.
The second requirement that the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain names.
A respondent may have rights or legitimate interests for the purposes of the Policy in the circumstances set in paragraph 4(c) of the Policy:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
These are examples only and not an exhaustive enumeration of the ways in which rights or legitimate interests can be shown.
The Complainant bears the overall burden of establishing this requirement. In view of the difficulties inherent in proving a negative and because the relevant information is often in the possession of the Respondent only, however, it will be sufficient for the Complainant to establish a prima facie case which, if not rebutted by credible evidence from the Respondent will lead to this ground being established. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
The Complainant points out that it has not licensed or authorized the Respondent to use the disputed domain names. Nor is the Respondent otherwise connected with it. Further, the Respondent does not have any registered trademarks or pending applications for PAC-10 or PAC-12. In addition, there is no evidence that the Respondent has ever been known as PAC-12 or PAC 12.
Taken cumulatively, these considerations are sufficient to raise a prima facie case against the Respondent.
The Respondent does not dispute these matters. Rather, he points to his employment as a sports journalist and his interest in many aspects of professional, amateur and college sports. He then says:
“While the Respondent had no clear idea of what he would do with the Disputed Domain Names, his registration of a domain name related to an athletic organization is consistent with his business model and personal interests. There are therefore any number of ways in which these domains could be used so as not to offend the Policy. The Policy does not require that domain names are registered with a specific purpose already in mind. The Respondent’s connection to the sports world is sufficient to maintain the presumption that he has a legitimate interest in the mark prior to the dispute.”
Although not expressly stated, this appears to invoke paragraph 4(c)(iii) of the Policy or the principle underlying that paragraph.
The Panel readily accepts that, both as a matter of national trademark laws and under the Policy, there are, or can be, many circumstances where a respondent’s use of a trademark owner’s trademark to refer to the goods or services provided by the trademark owner, or under the owner’s aegis, does not, or would not, infringe the trademark owner’s rights and so is legitimate. Under the Policy, so much necessarily follows from the inclusion of paragraph 4(c)(iii).
Thus, for example, with respect to national trademark laws, in the U.S.A., the Ninth Circuit Court of Appeals has held that it was legitimate for a car broker who legitimately sold Lexus brand cars to register and use the domain names <buy-a-lexus.com> and <buyorleaselexus.com>: Toyota Motor Sales USA v Tabari 671 F.2d 1171 (9th Cir. 2010). In that case, the Court summarized its case law as requiring three questions:
“In cases where a nominative fair use defense is raised, we ask whether (1) the product was “readily identifiable” without use of the mark; (2) defendant used more of the mark than necessary; or (3) defendant falsely suggested he was sponsored or endorsed by the trademark holder.”
The approach outlined in Tabari is not controlling under the Policy. However, a number of panels have referred to it: see e.g. Tacitica International, Inc. v. YouCanSave.com, Inc., WIPO Case No. D2002-0018; Pfizer Inc v. Van Robichaux, WIPO Case No. D2003-0399 and Miss Universe L.P., LLLP v. The Marketing Model / Steven Roddy, WIPO Case No. D2010-1939. In addition, an arguably similar approach to fair use questions appears to be applicable generally under EU law: e.g. Case 228/03 Gillette Co v. LA-Laboratories Ltd Oy [2005] ECR I-2337 at [30] – [39].
While there are many ways that a website intending to discuss the Complainant’s conference activities could be named, the Panel accepts that it would be difficult, if not impossible, to convey specific reference to the Complainant’s (expanded) conference without some use of PAC-12. Thus, the first question outlined in Tabari would be answered “No”.
The Panel considers that it would be necessary to use the whole of PAC-12 in the domain name to accurately refer to the Complainant and its conference activities. While the Panel considers it likely that many sports fan would recognize PAC in a sporting context as signifying the Complainant’s conference, use of PAC alone would be ambiguous for many members of the public given the many other organizations which also use the term. Thus, the answer to the second question is also “No”.
Turning to the third question, the uses in this case are in domain names rather than on websites. While some panels have considered such use to be unnecessary or a factor increasing the risk of false suggestion or confusion, this Panel does not consider it appropriate to adopt such a bright line test. It is a factor to be assessed in context. In this case, the uses are not use of the Complainant’s trademark alone. That consideration points in favour of the Respondent to some extent: see e.g. Miss Universe L.P., LLLP, supra. The addition of the word “network” to the Complainant’s trademark, however, is arguably ambivalent and does not clearly remove the potential for confusion. Contrast for example the addition of “sucks” to a trademark used in a criticism site.
When making an assessment of this type of issue, panels typically look to how the respondent is actually using the disputed domain name. Generally, such an examination is necessary to assess whether the explanation is in good faith or being advanced as a pre-text. So, when a reseller or distributor claims fair use, the panel typically examines the website to which the domain name resolves to confirm whether or not only the trademarked goods are being offered: see paragraph 2.3 of the WIPO Overview 2.0; similarly, for criticism sites: paragraph 2.4 of the WIPO Overview 2.0 and “fan” sites: paragraph 2.5.
Some panels have gone so far as to point to the contrasting wording of paragraphs 4(c)(i) and (iii), pointing out that sub-paragraph (iii) applies to someone who is “making” use, while sub-paragraph (i) addresses “demonstrable plans to use”. As noted above, however, paragraph 4(c) is not an exhaustive enumeration of situations which are legitimate. It is only illustrative.
In Pfizer Inc, supra, the learned panelist noted there were some limited exceptions to the requirement that the respondent actually be making use of the domain name for the claimed fair use and in that case was able to draw the inference of fair use from the respondent’s other conduct. The respondent was a lawyer who maintained a website providing information for potential litigants including information about specific brands of drugs to assist people in deciding whether they had grounds for legal complaint against the drug’s manufacturer. It would appear that he had, or planned to have, clear disclaimers of association with the trademark owners on his website. The respondent had not set up a website for the particular domain name in question, <lipitorinfo.com>. The learned panelist accepted the respondent’s explanation that he intended to use the domain name only to provide information for potential litigants relevant to Lipitor, but did not yet have enough information about the drug in question to provide meaningful information. The learned panelist considered it could not seriously be suggested that the respondent would use the disputed domain name for any other purpose.
As the learned panelist in Pfizer Inc, supra, noted, each case necessarily turns on its own facts and is heavily context specific.
In the present case, the Respondent does already operate a sports news site. However, as paragraph 55 extracted from the Response makes plain, the Respondent did not have any definite plans in mind when he registered the disputed domain names: he “had no clear idea of what he would do”. He invites us to assume that he could, not would, use the disputed domain names in the same way as his “www.prosportsblogging.com” site.
The Respondent has not used the disputed domain names in this way. Instead, he has allowed the disputed domain names to be used passively for link and pay-per-click generation. The Respondent contends that his non-use is explicable by reason of the fact that the Complainant’s conference in its expanded 12 member form has not commenced operating. The Panel is not persuaded by this explanation, however. The Respondent could quite easily have prepared and posted material on the website dealing with what the PAC-12 was (or would be), who its members were, their history and when it was planned to commence operations. In these circumstances, it appears that the Respondent registered the disputed domain names quite speculatively and has allowed them to lie passively as link generators.
The argument that the Policy does not require a domain name to be registered with a specific purpose in mind is only true to an extent and has no application where, as here, the Respondent is seeking to establish rights or legitimate interests in the domain name through nominative fair use.
The Respondent also refers to third parties who have apparently registered similar domain names and, according to the Respondent, are making genuine noncommercial fair use. The noncommercial nature of those sites is arguably an important difference with the nature of the Respondent’s own activities at “www.prosportsblogging.com”. Whatever third parties may, or may not, be doing, however, does not bear on the question before this Panel: whether or not the Respondent has rights or legitimate interests.
Accordingly, the Panel finds that the Complainant has established the second requirement under the Policy.
The third requirement that the Complainant must demonstrate to succeed is that the disputed domain names have been registered and used in bad faith. Under this requirement, the Complainant must show that the disputed domain names have both been registered and used in bad faith. It is not sufficient to show only that they have been registered in bad faith or are being used in bad faith.
The Respondent registered the disputed domain names before the Complainant’s trademark rights arose. In such circumstances, there is generally no registration in bad faith. That general rule, however, is subject to qualification. As the learned panelist explained in ExecuJet Holdings Ltd. v. Air Alpha America, Inc., WIPO Case No. D2002-0669:
“This finding does not necessarily dispose of the matter. For the purposes of the Policy, a domain name registration can have been undertaken in bad faith even if the trade marks rights at which such bad faith was directed arose after the registration of the domain name. This might be the case where a registrant speculated on an impending merger between companies that would create a new name combining in whole or in part the names of the merger partners. Another example concerns the situation where a registrant based its registration of the domain name on its insider knowledge of the intentions of a (former) business partner or employer in relation to the latter's development of a new trademark. From the intent of the Policy, it is clearly irrelevant whether a registrant intended to abuse an existing trademark right or one which that registrant specifically knew would arise”. (emphasis supplied)
It is true in this case, as the Respondent points out, that at the time he registered the disputed domain names, the Complainant had not settled on PAC-12 as its trademark. In February 2010, the Complainant did not know whether it would in fact expand from 10 members or, if it did, whether it would have 12 or up to 16 teams. Nonetheless, the Respondent registered the disputed domain names speculating on the likely outcome of the Complainant’s announced expansion project. As it happens, he ‘guessed’ right. It is that speculation on the likely outcome, in the absence of rights or legitimate interests in the resulting domain names, that carries the Respondent outside the scope of good faith for the purposes of the Policy. The timing of the registration of the disputed domain names, immediately after the Complainant announced its plans to expand, together with the subsequent non-use of the disputed domain names (except as ‘parking’ pages as discussed below), therefore leads the Panel to find that the Respondent registered the disputed domain names in bad faith.
The Respondent invokes the decision in Union des associations europeennes de football (UEFA) v. Chris Hallam, WIPO Case No. D2001-0717 in support of his position. Later panels are not bound by the decisions of earlier panels, but the Panel accepts that similar fact situations should generally be treated similarly in the interests of certainty, predictability and fairness. The Panel notes that at the time UEFA v. Chris Hallam, supra, was decided, UEFA had already held the Euro 96 and Euro 2000 championships. The Panel also notes that other panels have reached different conclusions to that in UEFA v. Chris Hallam, supra. One example is Madrid 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598. Further, the Panel considers that the approach set out above in ExecuJet Holdings Ltd., supra, more accurately reflects the purpose and intent of this requirement under the Policy. Accordingly, the Panel declines to accept the Respondent’s invitation to apply UEFA v. Chris Hallam, supra, in the present case.
As already noted, each of the disputed domain names resolves to a passive ‘link generating’ parking site which features pay-per-click advertising. While the advertising is not directed to competitors of the Complainant, traffic to the ‘parking pages’ (from which it is hoped that pay-per-click revenues may be derived) stems in large measure, if not wholly, from the trademark significance of PAC-12 or PAC12. The attempt to derive revenue from traffic to the disputed domain names in this way does not qualify as ‘good faith’ use for the purposes of the Policy. The Respondent says this advertising is generated by the Registrar and he has no hand in it. However, it is typically the case that the domain name holder gives permission to the Registrar to use the domain name in this way and very often derives a percentage of the fees generated or some other financial benefit.
Accordingly, the Panel finds that the disputed domain names have been both registered and used in bad faith, and that the Complainant has established the third requirement under the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <pac-12network.com>, <pac12network.com> and <pac-12network.org> be transferred to the Complainant.
Warwick A. Rothnie
Presiding Panelist
David W. Quinto
Panelist
David E. Sorkin
Panelist
Dated: May 17, 2011