Another interesting, UDRP case decided today involved the domain name UltimateGuitars.com

If you think this domain sounds familiar, like it was already subject to a UDRP, you’re close.

The Complainant owns the domain ultimate-guitar.com and used the ownership of that domain, and a trademark on the very generic term to get the domain UltimateGuitar.com away from its owner (Domain Capital) in a UDRP on June 10, 2010.

See Quester Group, Inc. v. Domain Capital, WIPO Case No. D2010-0594.

At the time we called that decision which gave the domain name to the owner of the hyphenated domain one of the worst of 2010.

So now the same complaint filed a UDRP on the plural of the version they just won a few months ago.

But this time they lost.

You might think that the company that won the UltimateGuitar.com UDRP, which already owned the hyphenated domain Ultimate-Guitar.com and a trademark would certainly win the UDRP for the plural of the domain, UltimateGuitars.com?

Not so fast my friend.

After all it is a UDRP, where all sorts of inconsistent decisions are allowed to exist happily every after.

In this case the Respondent was DI S.A. which was described by the the panel as being:

“In the business of purchasing domain names for development and monetization.”

“The Respondent registers generic and descriptive domain names to use in advertising and developed websites. The Respondent is also known as DomainInvest.lu and the Response refers to other UDRP decisions involving DomainInvest in support of its arguments in relation to bad faith, as discussed below. The DomainInvest website currently states:”

“The field of domain name reselling has grown as the internet has expanded to include numerous personal websites. We are in the business of buying, selling, developing and monetizing Internet domain names with the goal of profit generation with the intent of resale, like real estate.

“If you are a Domainer and intend to buy or sell single domains or Domain portfolios, please follow the link and learn more about us.”

“The disputed domain name, <ultimateguitars.com>, was acquired by the Respondent in January 2009 and has been used as a pay-per-click (“PPC”) directory linking to sites that sell guitars.”

Yet the three member panel, in a 2-1 vote holds for the domain holder.

Here is the relevant parts of the decision:

“The Respondent is operating a PPC website from the disputed domain name. According to the exhibits presented by the Complainant, the links on Respondent’s site all point to third-party sites that relate to guitars. Respondent is using the site as a directory for such services and claims that is his business model.”

“Using domain names for the purpose of operating PPC websites is not necessarily an illegitimate use of a domain name, nor does such a use necessarily confer rights or legitimate interests in domain names by way of a bona fide offering of goods or services. ”

“Where domain names consisting of common words or phrases support PPC links that are genuinely related to the generic meaning of the domain name at issue, this may be sufficient to establish rights or legitimate interests in the domain name. ”

“However, where links are generated for the purpose of capitalizing on another’s trademark value, this will generally amount to misleading diversion of Internet traffic and will not evidence a legitimate interest or right in the relevant domain name. This is especially so where the PPC links divert users to goods and services competitive with the rights holder.”

“The dividing line can be difficult to draw.”

“The descriptive use of common dictionary words to link to sites that deal in the described goods may not avoid capitalizing on a similar trade mark using the same words. However, that is an exposure that owners of descriptive marks must accept when the select their brands using common product names. In fact, it is the very ability to draw consumers by the descriptiveness that leads mark owners to choose such terms in the first place. Absent some evidence that the Complainant was specifically targeted, it is the opinion of the majority of the Panel that the benefit of the doubt should favor the descriptive user. ”

“The majority of the Panel finds that the Respondent has a right and legitimate interest in the disputed domain name by virtue of its use in a descriptive fashion. Even if some of the links – as alleged but not substantiated by Complainant – link to direct competitors of the Complainant, so long as the wares of these competitors are accurately described by the term “ultimate guitars”, Respondent’s use is legitimate. As such, this case differs from Quester Group, Inc. v. Domain Capital, WIPO Case No. D2010-0594 where the Respondent was acting solely as a resale agent.”

“As the majority finds in favor of the Respondent on the element of rights and interests, the Complaint must fail.”

So this decision drew a quite long Dissenting Opinion by John Swinson:

“I dissent from the majority opinion and would find in favour of the Complainant on all three elements.”

“The majority disagrees with the USPTO’s ultimate conclusions in registering the Complainant’s trademark and considers the Complainant’s trademark to be descriptive. The majority therefore concludes that the Respondent’s use of the disputed domain name is legitimate.”

“It would be of some concern if a panelist finds for the Respondent in every case, regardless of the facts. But here, as the majority notes, different people can draw a different dividing line when applying the law to the facts. That is the reason for my dissent.”

“I agree with the USPTO and disagree with the majority when considering the nature of the Complainant’s trademark rights at the relevant time.”

“The majority, in reaching its conclusion, says inter alia that “ultimateguitars” is descriptive.”

“I disagree.”

“In this case, the website at the disputed domain name links to websites and itself contains material that is directly competitive with the Complainant’s business.”

“The majority would say, for example, that a website at a domain name “ultimateapple.com” that has PPC links to a website about fruit would be legitimate. I agree. ”

“However, in my view, that a website at a domain name “ultimateapple.com” that has some PPC links to a website about fruit and other PPC links to a website about computers would not be legitimate. ”

“I believe that, applying the rationale of the majority decision, that the majority would find otherwise.”

“Moreover, I do not believe that the PPC links genuinely relate to a possible generic meaning of the words “Ultimate Guitars”, but instead are based on the Complainant’s trademark value. I find that the Respondent is intentionally capitalizing on the similarity between the Complainant’s trademarks and the disputed domain name and the confusion caused to Internet users.”

“Therefore, in my view, the Respondent does not have any rights or legitimate interests in the disputed domain name.”

“The time to consider whether the Respondent registered the disputed domain name in bad faith is the time that the Respondent first acquired the disputed domain name, in this case in January 2009. ”

“The Respondent’s recent use of the disputed domain name is clearly bad faith use. The website at the disputed domain name is a website with PPC links that have relevance to the Complainant’s trademark ”

“For these same reasons, Respondent’s argument that domain name holders have an automatic right to post PPC landing pages keyed to what may be generic or dictionary words is incorrect. ”

“To the contrary, as the Panel recently recognized in the mVisible Technologies, Inc. case, many domain names have both dictionary word meanings and trademark (or secondary) meanings, and when the links on the PPC landing page ‘are based on the trademark value of the domain names, the trend in UDRP decisions is to recognize that such practices generally do constitute abusive cybersquatting.’”

“When the Respondent acquired the disputed domain name in January 2009, the Complainant had not filed its trademark registrations. As stated above, the Complainant’s registered trademark rights did not arise until April 2009, a few months after the Respondent acquired the disputed domain name.”

“Accordingly, to succeed under this element, the Complainant must show that it had common law trademark rights in ULTIMATE GUITARS prior to January 2009.”

“Based on the evidence presented in this case, at the time the Respondent acquired the disputed domain name, the Respondent could or should have contemplated the Complainant’s then common law trademark rights. In such circumstances, the Respondent did register the domain name in bad faith.”

So going back to the majority opinion they said that :

“The dividing line can be difficult to draw.”

Difficult to draw?

How about impossible?

If you want to look for a real difference between the 1st case which held for the trademark holder and this case is that  the first case which the trademark holder won was a 1 person panel while this case was a 3 member panel.

So if you let a one member panel decide your case and that panelist is John Swinson (the dissenting panelist here) or Ross Carson the sole panelist in the first case your going to lose.