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Recent Case Notes & Commentary

What’s in a Name? Nothing, Apparently: Common Law Trademark Rights in a Name Not Yet Used

Often, common law trademarks must be proved, as the Complainant does not have a registered trademark. That was the case here. Pac 10 was a grouping of 10 US college sports teams, considering an expansion to 12, a fact that was made known publicly. But its registered trademark was Pac-10, so it had to establish a common law trademark in Pac-12. The 3 person panel unanimously held that the Complainant could do this, as it had announced it would be rebranding as Pac-12.

As the next question was whether the domain name was confusingly similar to the trademark, it has to be emphasised that the trademark was Pac-10, not Pac-12 and the domain name was <> and its equivalents. The panel however, was able to say the domain name was confusingly similar to the trademark.

The decision thus means that a domain name may be confusingly similar to a trademark despite the fact that they are spelt differently, the common law trademark at issue has never been used and a generic word has been added to the “old” trademark to make the domain name.

Nominative fair use. The case is also useful for this principle. The panel noted that:

“…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 <> and <>: Toyota Motor Sales USA v Tabari 671 F.2d 1171 (9th Cir. 2010). In that case, the Court summarised its case law as requiring three questions:

“In cases where a nominative fair use defence 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.”

Several domain name cases have referred to this case : e.g. Tacitica International, Inc. v., 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].

However, the principle was not available for the Respondent to rely on as the Respondent had never used the domain name in a nominative fair use way or declared that he would do so but had just used it as a parking page link.

Bad faith

There was held to be bad faith registration. Generally, there will be no bad faith if the domain name is registered before the trademark and in the present case that was so because the common law trademark rights had not yet arisen. But that general rule does not apply where there is speculation and here the Respondent had speculated that the Complainant would register Pac-12; that was enough to raise bad faith registration. There was also bad faith use because the domain name was used for a passive, link generating website; respondents in such circumstances “typically” give permission for this use of their domain names and receive part of the revenue from it.

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