WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Quester Group, Inc. v. DI S.A.

Case No. D2010-1950

1. The Parties

The Complainant is Quester Group, Inc. of Road Town, Tortola, British Virgin Islands, Overseas Territory of the United Kingdom (“BVI”) represented by Berman Entertainment and Technology Law, United States of America.

The Respondent is DI S.A. of Luxembourg, Luxembourg represented by Law.es, Spain.

2. The Domain Name and Registrar

The disputed domain name <ultimateguitars.com> is registered with EuroDNS S.A.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2010. On November 17, 2010, the Center transmitted by email to EuroDNS S.A. a request for registrar verification in connection with the disputed domain name. On November 18, 2010, EuroDNS S.A. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On November 30, 2010, the Complainant filed an Amendment to its Complaint.

The Center verified that the Complaint together with the amendment to 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 December 1, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response December 21, 2010. The Response was filed with the Center December 21, 2010.

The Center appointed John Swinson, Diane Cabell and Andrew Bridges as panelists in this matter on January 20, 2011.

On January 25, 2011, Andrew Bridges recused himself from hearing the matter due to a potential conflict, discovered upon review of the case materials. On January 31, 2011, 2011, Neil A. Smith was appointed as a Panelist and the Parties were notified.

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.

4. Factual Background

The Complainant is Quester Group, Inc., a BVI corporation. The Complainant operates a popular website relating to guitars and guitar music from the domain name <ultimate-guitar.com>. The Complainant’s website includes music reviews, music news, interviews, guest articles and a community forum. The Complainant’s website has been operated since at least October 13, 1999.

The Complainant has six trademarks that have been registered with the United States Patent and Trademark Office. These trademarks include ULTIMATE GUITAR, ULTIMATE-GUITAR.COM and a stylized version of ULTIMATEGUITAR.COM. The trademarks were registered between November 30, 2009 and March 30, 2010. The Complainant also has two applications for trademarks pending in the United States Patent and Trademark Office (“USPTO”) including the word mark ULTIMATEGUITAR.COM and a logo/design mark depicting a guitar pick. Three of the issued marks are on the Supplemental Register awaiting 5 years’ commercial use in order to give the Complainant the opportunity to validate distinctiveness.

The Respondent is DI S.A. The Respondent is 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.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following submissions and arguments:

Identical or Confusingly Similar

The Complainant has six trademarks registered and two applications for trademark registrations pending in the USPTO. The registered trademarks including a word mark for ULTIMATE GUITAR and another for ULTIMATE-GUITAR.COM as well as trademark registrations for a stylized version of ULTIMATE-GUITAR.COM. These were registered between November, 30 2009 and March 30, 2010. However, the Complainant has adopted and used these trademarks for over a decade, and has established substantial goodwill in these marks. The Complainant’s marks identify the services found on the Complainant’s famous and distinctive website operating from the domain <ultimate-guitar.com>. Operation of the website has been the Complainant’s primary business since, at least, October 13, 1999. The Complainant’s website and services are mainstays amongst guitar players and musicians. Specifically, there are over 1.5 million registered users of the <ultimate-guitar.com> website and over 15 million unique visitors to the site each month.

The Complainant submitted a declaration stating that the Complainant first used ULTIMATE GUITAR and ULTIMATE-GUITAR.COM as trademarks in connection with the sale of a mobile phone application at least as early as June 2009.

The Complainant obtained rights to the domain name <ultimateguitar.com> by virtue of a UDRP Panel decision against another respondent dated June 10, 2010. See Quester Group, Inc. v. Domain Capital, WIPO Case No. D2010-0594.

The disputed domain name is virtually identical to the Complainant’s registered trademarks and registered domain names. The only difference is that the Respondent uses the plural of the Complainant’s marks. The Respondent’s use of the disputed domain name is an unauthorized use of the Complainant’s marks and is likely to cause confusion. The Respondent’s unauthorized use is also likely to dilute the distinctive qualities of the Complainant’s marks.

Rights or Legitimate Interests

There is no evidence that the Respondent has ever used the disputed domain name in connection with any bona fide offering of goods and services. Instead the Respondent is using the disputed domain name for commercial gain by purposefully misleading consumers. As of November 15, 2010, the Respondent has used the disputed domain name to host a website featuring PPC links to third-party websites, including links to direct competitors of the Complainant and other confusingly similar music and musician related sites. The PPC scheme is misleading to consumers who will believe the disputed domain name points to a site endorsed by or associated with the Complainant.

Further, the Respondent has never been commonly known by the disputed domain name and has no rights and/or interests in any trademark or service mark.

Registered and Used in Bad Faith

The Respondent registered the disputed domain name for the purpose of operating a PPC website designed to capitalize on the substantial goodwill established by the Complainant’s services. The Respondent was operating in bad faith when it registered the disputed domain name and used it to gain commercial advantage while harming the valuable reputation and substantial goodwill of the Complainant.

PPC schemes, in general, denote bad faith.

Further, here the Respondent’s website gives access to tablature and lyrics which are not licensed or offered under an agreement with the copyright holder. The confusion over the origin of the Respondent’s website and third-party links will lead Internet users to believe the Complainant is offering unlicensed copyright material. Therefore, the Respondent’s registration of the disputed domain name is damaging to the Complainant’s reputation and goodwill.

The Respondent registered the domain name for the purpose of effectuating a for-profit sale of the disputed domain name. The Respondent is in the business of buying and selling domain names and assisting third-parties buy and sell domain names for profit. The Respondent must have known of the “inherent and recognized value” of the domain name.

The Complainant relies on the Panel’s decision in Quester Group, Inc. v. Domain Capital., WIPO Case No. D2010-0594, given the similar factual matrix. In that case the Panel decided in favor of the Complainant and as such, the Complainant asserts that a similar finding should be made here.

Therefore, the Complainant requests that in accordance with paragraph 4(i) of the Policy, the disputed domain name be transferred to the Complainant.

B. Respondent

The Respondent makes the following submissions and arguments, citing numerous prior decisions under the Policy in support of its contentions:

Identical or Confusingly Similar

The Complainant’s claim of trademark rights are rebutted given all the Complainant’s registered trademark rights post-date the date when the Respondent acquired the disputed domain name.

In addition, three of the Complainant’s registrations are supplemental registrations that are not trademarks and that are not accepted as evidence of rights under the Policy. The Respondent asserts that the marks on the principal register were issued under Section 2(f) meaning that the USPTO found them descriptive and required the mark applicant to provide additional evidence of distinctiveness which evidence, Respondent claims, was limited to a self-serving declaration by the Complainant.

Further, the Complainant did not have a common law trademark as of January 2009. The Complainant is not exclusively using the phrase “Ultimate Guitar”. The term “Ultimate Guitar” is descriptive and widely used. Therefore, the phrase “Ultimate Guitar” is not primarily linked to the Complainant as a source. The Complainant has not provided sufficient evidence to establish a common law trademark prior to January 2009.

Rights or Legitimate Interests

The burden of proof is on the Complainant to prove absence of rights or a legitimate interest. If the Respondent puts forward a plausible case contradicting the prima facie argument of the Complainant, the panel must decide the case on the basis of all of the evidence, with the Complainant carrying the burden of proof. The Respondent refers to Exotiq Properties Ltd v. David Smart, WIPO Case No. D2009-1672, with approval.

The Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. The use of a generic/descriptive domain name to provide information related to the subject matter of which the name is descriptive is a legitimate use under the Policy (see e.g. Commune of Zermatt and Zermatt Tourismus v. Activelifestyle Travel Network, WIPO Case No. D2007-1318; EAuto, L.L.C. v. EAuto Parts, WIPO Case No. D2000-0096; Modern Beauty Supplies Inc. v. MDNH, Inc. c/o Jay Bean, NAF Claim No. 0975334). Therefore, the Respondent has a legitimate interest in using the descriptive disputed domain name in its descriptive sense.

“Ultimate” is a laudatory term reflective of quality, and is used in connection with many goods and services offered on the Internet.

The Complainant’s contention that the Respondent’s website contains links to some third-party sites which contain unauthorized copyright materials is unsupported by any evidence and as such does not indicate a lack of legitimate interest in the disputed domain name.

The Respondent is making a fair use of the disputed domain name without intent to misleadingly divert consumers. The Respondent’s use is fair under the Policy (see Combined Insurance Group Ltd v. icklicks c/o Michael Mayder, NAF Claim No. 01261538).

The Respondent does not finance or purchase domain names for profit. The Respondent purchases domain names for development and monetization. Trading in domain names is a bona fide business and may constitute a legitimate interest under the Policy absent evidence of bad faith (see Allocation Network GmbH v. Steve Gregory, WIPO Case No. D2000-0016).

Further, there is no requirement that the Respondent be commonly known by the disputed domain name; or conduct business under that name; and the Respondent does not require authorization or a license from the Complainant to register the disputed domain name, given the disputed domain name consists of generic terms; and the disputed domain name was registered by the Respondent prior to the Complainant registering its marks or domain names.

Registered and Used in Bad Faith

The Complainant must prove that the disputed domain name was both registered in bad faith and used in bad faith. The question to be asked is: “Did the Respondent register the Domain Name with the Complainant’s trademark in mind?”

The Respondent has continuously owned the disputed domain name since January 2009. The disputed domain name was purchased as part of a large portfolio from Internet REIT Inc. There was a change in the name of the Respondent from Internet Services Corporation S.A. to DI S.A. after that acquisition. At the time of the acquisition, Markus Schnermann, the General Manager of the Respondent, states that he had no knowledge of the Complainant.

The phrase at issue is descriptive. The absence of any established rights when the Respondent acquired the disputed domain name prevents a finding of bad faith as the Respondent could not have targeted the Complainant’s non-existing rights. Tellus B.V. v. Mr. Oren Nehoray, WIPO Case No. D2010-1115. The Respondent purchased the disputed domain name because of its descriptive value.

The Respondent did not register the disputed domain name in order to sell it to the Complainant or its competitors. At the time of registration, the Respondent was not aware of the Complainant or its asserted rights. The Complainant held no valid trademark in the term “Ultimate Guitars” or other variations. The Respondent is a Luxembourg company and its ignorance of an asserted common law trademark in a different country is understandable and reasonable.

A “premium domain name” and its inherent value is directly related to its descriptive or generic nature and not to its similarity to a trademark or other third-party right. Therefore, the Respondent did not recognize the “inherent and recognizable value” of the disputed domain name for its similarity to the Complainant’s marks and no bad faith can be imputed to the Respondent by reason of its registration and use of the disputed domain name.

Further, the Respondent did not register the disputed domain name to preclude the Complainant from reflecting its asserted marks in a domain name given that the domain name was first registered in 1999, long before the Complainant established any trademark rights in the descriptive terms.

Moreover, the Respondent did not register the disputed domain name primarily for the purpose of disrupting the business of the Complainant, the Respondent registered the disputed domain name because of its generic nature.

Finally, the Respondent did not register the disputed domain name to attract Internet users by creating a likelihood of confusion. The Respondent was unaware of the Complainant or its asserted rights until September 2010. The Respondent is not located in the United States or the BVI. The Complainant has not proffered any evidence of reputation or of consumer recognition in or outside North America such that it could be assumed that the Respondent should have been aware of the Complainant. Also, as of January 2009, when the Respondent acquired the disputed domain name, the Complainant had not applied for a trademark. Further, the term “Ultimate Guitars” and its variations are not inherently distinctive or famous such that registration and use of a domain name containing the terms by anyone other than the trademark owner would be impossible or would cause the registrant of the domain name to suspect that there may be trademark issues.

The Respondent requests that the Panel deny the Complaint.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The onus of proving these elements is on the Complainant.

A. Identical or Confusingly Similar

The Panel considers the question of trademark rights under this element of the case in the context of present time, i.e. whether Complainant has trademark rights as of the time of filing the Complaint in this case.

The United States Trademark Act provides for the registration of trademarks on either the Principal or Supplemental Registers. "Descriptive" marks, those that immediately convey information about a quality or characteristic of a product or service, are registrable on the Supplemental Register. TMEP § 202.02(b). The Principal Register is designed for arbitrary and suggestive terms, and for "descriptive" marks that have acquired distinctiveness. Id. The Supplemental Register is reserved for marks "capable of distinguishing applicant’s goods or services not registrable on the principal register . . ." 15 U.S.C. § 1091(a). The Complainant provided copies of six United States trademark registrations as Exhibits to its Complaint. Three of these registrations are on the Supplemental Register; the other three are on the Principal Register but refer to Section 2(F).

Principal Register Section 2(F)

The Complainant has had rights in the ULTIMATE GUITAR trademark at least as of April 14, 2009, when the USPTO registered the mark (Registration No. 3,763,253) under Section 2(F) of the Lanham Act, 15 U.S.C. § 1052(f), on grounds that the mark, while merely descriptive, had acquired distinctiveness. Registration creates a presumption of validity under United States law. See Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503. The Panel recognizes Complainant’s 2(f) registrations as valid marks for the purpose of establishing UDRP standing.

Supplemental Register

Unlike Principal Register registrations, Supplemental Register registrations do not enjoy any prima facie or conclusive presumptions of validity or exclusive right to use the mark. 15 U.S.C. § 1115(a). Registration of a mark on the Supplemental Register has been held to constitute an admission that the mark is merely descriptive. E.g., Clairol Inc. v. Gillette Co., 389 F2d 264 (2d Cir. 1968). However, registration of a mark on the Supplemental Register does not constitute an admission that the mark has not acquired distinctiveness. 15 U.S.C. § 1095. See America’s Community Bankers Corporation v. Charles R. Wing and Wing Broadcasting, Inc., WIPO Case No. D2000-1780.

Common law rights

Complainant may well have common law trademark rights that long predate the registration of the disputed domain name. While Complainant does not specifically claim such rights, the registrations and the Complaint both allege commercial use dating from the 1998. There is no specific evidence before the Panel of the date that such a mark may have become distinctive.

Identical or Confusingly Similar

The Panel considers that the disputed domain name is confusingly similar to the Complainant’s registered trademark ULTIMATE GUITAR.

Accordingly, the Panel finds that the first element of the Policy has been satisfied by the Complainant.

B. Rights or Legitimate Interests

Paragraph 4(c)(i) of the Policy provides that the respondent may demonstrate rights or legitimate interests in a domain name by 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, before any notice to it of the dispute.

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. (See e.g. Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267; Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; Gold Medal Travel Group plc v. Damir Kruzicevic, WIPO Case No. D2007-1902; Legacy Health System v. Nijat Hassanov, WIPO Case No. D2008-1708; Trade Me Limited v. Vertical Axis Inc, WIPO Case No. D2009-0093; Mpire Corporation v. Michael Frey, WIPO Case No. D2009-0258; Compart AG v. Compart.com / Vertical Axis, Inc., WIPO Case No. 2009-0462; Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp., WIPO Case No. D2010-1404; Paris Hilton v. Deepak Kumar, WIPO Case No. D2010-1364; Lardi Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2010-1437).

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. See Allocation Network GmbH v. Steve Gregory WIPO Case No. D2000-0016; Porto Chico Stores, Inc. v. Otavio Zambon, WIPO Case No. D2000-1270, and Asphalt Research Technology, Inc. v. National Press & Publishing, Inc., WIPO Case No. D2000-1005, Gorstew Limited v. Worldwidewebsales.com, WIPO Case No. D2002-0744 among others.

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.

C. Registered and Used in Bad Faith

The Complainant must demonstrate that the Respondent both registered the disputed domain name in bad faith and used the disputed domain name in bad faith. A. Nattermann & Cie. GmbH and Sanofi-aventis v. Watson Pharmaceuticals, Inc., WIPO Case No. D2010-0800.

Paragraph 4(b) of the Policy enumerates several circumstances that are evidence of registration and use of a domain name in bad faith. Respondent has not offered to sell the domain nor is its business model based on resales. Complainant has not been deprived of a domain reflecting its mark. Complainant does not allege that its business has been disrupted – only that it’s good name has been tarnished and diluted. Complainant’s main allegation therefore is that the registration was intended to mislead consumers.

The majority of the Panel has already determined that the use of the domain is legitimate and therefore not in bad faith, hence Complainant has failed to establish the bad faith element. Further, the majority finds little evidence that it was Respondent’s intention to register the domain in bad faith. Respondent supplied evidence of its business model which is based on registration and monetization of domains that use terms of common meaning. Because many marks are based on commonly used words, such a business model will quite likely occasionally register domain names that are identical or similar to someone’s mark somewhere in the world. Respondent also claims to have acquired the domain as part of a sizable portfolio purchased from another dealer. This additionally weakens the argument that this mark was a particular target for cybersquatting. Because Complainant’s site is successful does not mean that the entire world is aware of its mark or whether it is a figurative one or not, nor would the majority obligate directory services to thoroughly search the business and trademark registries of the entire world to ensure that no mark anywhere might possibly be compromised. Here, anyway, such registrations would not have been found when the disputed domain name was registered.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel, by majority, denies the Complaint.

John Swinson
Presiding Panelist (dissenting)

Diane Cabell
Panelist

Neil A. Smith
Panelist

Dated: February 14, 2011

DISSENTING OPINION

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.

A. Identical or Confusingly Similar

I agree with the majority that the Complainant’s 2(f) registrations are valid marks for the purpose of establishing UDRP standing.

Essentially, the effect of Registration No. 3,763,253 for ULTIMATE GUITAR filed on April 14, 2009, is that the USPTO has determined that Complainant has legal rights in the ULTIMATE GUITAR mark as of the date of application to the USPTO in April 2009, based on exclusive and continuous use of the mark from (in this case) at least 1998. The registration does not establish when Complainant first had trademark rights in ULTIMATE GUITAR, but that issue is not relevant under this element of the Policy. Business Filings Incorporated v. John Thalacker D/B/A Traffico, WIPO Case No. D2010-1332.

Thus, I agree with the majority that the first element of the Policy has been satisfied.

B. Rights or Legitimate Interests

The majority, in reaching its conclusion, says inter alia that “ultimateguitars” is descriptive. I disagree. So does the USPTO. As noted in the majority opinion, the Complainant has three relevant registrations on the Principal Register. The majority correctly states that the Principal Register is designed for arbitrary and suggestive terms, and for "descriptive" marks that have acquired distinctiveness. The trademark ULTIMATEGUITARS is suggestive, or if descriptive, was found to have acquired distinctiveness. But the majority devalues the Complainant’s registrations. In effect, the majority finds that the Complainant has relevant trademark rights when considering the first element, but does not consider these rights to be dispositive when considering the second element. This, in my view, is incorrect.

I agree with the majority’s statement that 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.

I disagree with how the majority has applied this test.

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.

C. Registered and Used in Bad Faith

I agree that the Complainant must demonstrate that the Respondent both registered the disputed domain name in bad faith and used the disputed domain name in bad faith. A. Nattermann & Cie. GmbH and Sanofi-aventis v. Watson Pharmaceuticals, Inc., WIPO Case No. D2010-0800.

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. Dixons Group Plc. V. Mr. Abu Abdullaah, WIPO Case No. D2000-1406

Paragraph 4(b) of the Policy enumerates several circumstances that are evidence of registration and use of a domain name in bad faith.

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 (see mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; Ustream.TV, Inc. v. Vertical Axis, Inc., WIPO Case No. D2008-0598; BAB, Inc. v. Eighty Business Names WIPO Case No. D2010-0478 and discussion above).

As stated in Asian World of Martial Arts Inc. v. Texas International Property Associates WIPO Case No. D2007-1415:

“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.

The following evidence was submitted by the Complainant:

the Complainant first used ULTIMATE GUITAR on the Internet in 1999.

the Complainant’s iPhone App is a consistent top 25 download on the iTunes App Store

the Complainant’s website has over 1.5 million registered users throughout the world

the Complainant’s website receives over 15 million unique visitors to the site each month.

Indeed, when entering “ultimate guitars” into the Google search engine, the Complainant’s website is (at the time of drafting) listed as the first four results by Google.

If a complainant shows that it has been using the mark in association with its business for a number of years, this is often sufficient to demonstrate that the complainant had trademark rights under the Policy at the necessary time. Uitgeverij Crux v. W. Frederic Isler, WIPO Case No. D2000-0575; c.f. Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322.

I consider the Complainant’s ULTIMATE GUITAR website to be very well known in the music community, including in the United States, prior to January 2009.

The Respondent states that it was not aware of the Complainant or its trademark rights when the Respondent purchased a large portfolio of domain names (including the disputed domain name) in January 2009. This does not save the Respondent. The Respondent cannot turn a blind eye, and escape a finding of bad faith merely because the Respondent acquired a large number of domain names in one transaction. The Respondent’s evidence makes it clear that the Respondent acquired this portfolio of domain names for the primary purpose of generating traffic, or possibly, for later resale. If necessary, the Panel can draw the inference that the Respondent would have been aware of the traffic volume for the domain names in the acquired portfolio, and it would have acquired and valued the domain names based upon that traffic volume. Here, for the disputed domain name, I infer from the evidence provided by the parties that traffic volume that made the disputed domain name valuable was due to the trademark of the Complainant, not the generic nature of the term.

The Respondent must accept the consequence of turning a blind eye to any third party rights when purchasing a large portfolio of domain names. Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964.

Paragraph 2 of the Policy contains warranties made the Respondent when registering the disputed domain name, and paragraph 2 is relevant to the question of assessing bad faith registration in certain appropriate cases. For instance, given that paragraph 2 requires a domain name registrant "to determine whether your domain name infringes or violates someone else's rights", this requirement could be regarded as creating or reinforcing an obligation on a registrant to conduct some form of due diligence in order to determine whether the domain name at issue infringes any third party rights, especially if the registrant intends to use the domain name for commercial purposes such as a PPC website. Paragraph 2 may also be relevant in cases where, at the time of original registration, there was evidence of a registrant's "willful blindness" to the infringement or violation of someone else's existing trademark rights. If the Respondent conducted a Google search in January 2009, it would have easily found the Complainant’s website and, from reviewing traffic patterns to the Complainant’s website and the website at the disputed domain name at that time, realised that the Complainant likely had relevant trademark rights. Mobile Communication Service Inc. v. WebReg, RN,supra; Media General Communications, Inc. v. Rarenames, WebReg, supra; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141.

Although the Respondent has strongly argued that “ultimate guitars” is a generic term and the Panel acknowledges that, prima facie, the registration of a generic term as a domain name is a legitimate commercial enterprise, in the circumstances of this case I am swayed by the common sense approach of the decisions cited above. See also Terroni Inc. v. Gioacchino Zerbo, WIPO Case No. D2008-0666.

Accordingly, 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.

John Swinson
Presiding Panelist (dissenting)
Dated: February 14, 2011