Not as easy as A-B-C
As many news outlets reported over the weekend, the soon-to-be-Pac-12 Conference has discovered that the domain pac12.com has already been claimed by a fan of the late (unless he isn’t) Tupac Shakur, who has been using the site to offer an Amazon widget selling 2Pac albums. The Pac-10 has responded by filing a claim with the World Intellectual Property Organization, seeking control of the Pac12.com site.
Most people seem to assume this is nothing but a momentary hiccup in the conference’s plans. After all, the Pac-10 is a well-established — and well-funded — preeminent national sporting organization, and a one-page CD ad with the heading “Tupac Lives!” doesn’t exactly strike fear into the hearts of conference partisans everywhere. But, if it can’t (or won’t) cough up a check with enough zeroes on it in order to buy the Pac12.com domain peacefully, the conference may have a real problem wresting away control of the domain by legal force.
Why is that, you ask? The answer requires us to first play a quick game of alphabet soup.
Pursuant to the policies of most domain name registrars (like godaddy.com, purveyors of the most pointless and irritating Super Bowl commercials of the last several years), the vast majority of domain name disputes are handled via the Uniform Domain Name Dispute Resolution Policy, or UDRP (rhymes with…U-D-R-P). The UDRP is overseen by the International Corporation for Assigned Names and Numbers, or ICANN (almost rhymes with “Zicam”), a non-profit corporation based in Marina Del Rey, California which oversees many Internet-related tasks that used to be handled directly by various national governments. And the World Intellectual Property Organization, or WIPO (rhymes with “wino”), is a specialized agency of the United Nations which also serves as one of a few ICANN-approved arbitration services. So: foiled by 2Pac, the Pac-10 went to WIPO, which administers the UDRP on behalf of ICANN. Got it?
Cancellation or transfer of a domain name under the UDRP requires a party in the Pac-10’s position to prove three things: (1) that the disputed domain is identical or confusingly similar to a protectable mark; (2) that the original registrant has no legitimate rights in the mark/domain; and (3) that the original registrant showed bad faith in the registration and the use of the domain. The first two factors will probably be no sweat for the still-months-away-from-becoming-the-Pac-12: the domain name at issue is identical to the conference’s mark, and the person using it is promoting Tupac records — he or she is not Tupac himself. But, as in most such cases, this case will rise and fall on the third factor: bad faith.
The UDRP test is typically very tough on parties like the Pac-10, because it forces them to prove that their opponent acted in bad faith when registering and when using a disputed domain. Arbitrators will generally find bad faith if the domain was acquired primarily to sell it to the complainant, as part of a pattern of conduct of similar “cybersquatting”-type behavior, primarily to disrupt the business of a competitor, or to attract consumers for commercial gain via likelihood of confusion.
There are, to be sure, some fishy things going on here. For example, Pac12.com was last updated only a day before the Pac-10 filed its WIPO claim. Inconsistent with his or her Tupac-promotion theme, the same person apparently didn’t also register 12pac.com or 12-pac.com (which, equally confusingly, redirects one to the website for Ception Insurance Services), thereby forfeiting a pretty obvious pun opportunity (i.e., “buy a 12-pack of Tupac!”). Plus, it’s reasonable to guess that there were some behind-the-scenes negotiations going on before the Pac-10’s WIPO filing, and arbitrators will often consider a late offer to sell the domain as evidence (albeit not conclusive evidence) of bad faith.
But the owner of pac12.com — a certain “NA” of Draper, Utah — first registered it back in July 2005, long before anyone could imagine that Larry Scott would emerge as the leader of the Pac-10, immediately try to raid the entire Big 12 South, and ultimately settle for Colorado, Utah, and being the Pac-10+2. Unless the Pac-10 is unable to unearth some pretty direct evidence of bad faith, the timing of the pac12.com registration alone could well be enough to defeat the conference’s WIPO domain transfer claim, because it evidences a lack of bad faith in registration. Moreover, the fact that “NA” has been using the site for something reasonably connected to its name — even something as lame as an Amazon.com Tupac sales widget — will make it hard for the Pac-10 to win the bad faith point on the domain’s use, as well.
Perhaps the Pac-10 can take some solace in knowing that it isn’t alone in these challenges. Because of the stringent “bad faith” requirement — especially the requirement that a registrant act in bad faith with respect to both registration and use of a domain — domain name disputes are one of those rare areas of the law where you can’t just readily assume that the big guy will win. For instance, Nissan Computer and its founder/president Uzi Nissan have been fighting an 11-year war with Nissan Motor Company over control of www.nissan.com.
While WIPO proceedings are not considered full-fledged arbitrations, and therefore receive no deference or precedential effect if the lower appeals or re-files their claim in an American federal court, the governing U.S. law on this subject — the pithily-named Anticybersquatting Consumer Protection Act — also looks to bad faith in registration as a requirement for liability. Which means that the Pac-10 can’t necessarily expect to do better before a U.S. judge than it will before a WIPO arbitrator.
And, as one blogger has noted, the not-yet-the-Pac-12 was apparently so late in getting into the domain registration game, it also lost Pac-12.com, Pac-12.org, and Pac12.org to Bet-R Sites LLC, a company whose website boasts that it makes things “for fun and profit.” So if the conference’s bid to claim control of Pac12.com and Pac-12.com fails (and it looks like it very well might), it may have a serious problem developing a strong presence on the Web.
It’s not unreasonable to think that the Pac-10 is using its recent UDRP filing as leverage in its ongoing negotiations to acquire the pac12.com domain peacefully from the owner. But unless the Pac-12 can convince this Tupac fan to part with his or her domain for a reasonable price, the conference’s best alternative might be to take another stab at expansion. And Pac14.com and Pac16.com appear to be taken too, so Commissioner Scott is going to have to think big.