WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Quester Group, Inc. v. Domain Capital Case No. D2010-0594 1. The Parties
Complainant is Quester Group, Inc. of Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by Berman Entertainment and Technology Law, United States of America.
Respondent is Domain Capital of Fort Lee, New Jersey, United States of America, represented by Lewis & Hand, LLP, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2010. On April 19, 2010, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On April 19, 2010, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the 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 Respondent of the Complaint, and the proceedings commenced on April 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 12, 2010. The Response was filed with the Center on May 13, 2010.
The Center appointed Ross Carson as the sole panelist in this matter on May 27, 2010. The Panel finds that it was properly constituted. 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
Complainant adopted and has used its trademark ULTIMATE-GUITAR.COM in association with the operation of a website that provides online music and musician related goods and services, including but not limited to tools for guitar players such as tablature and instructional videos, worldwide for over a decade. Operation of the website has been Complainant's primary business since at least October 13, 1999. Complainant's website and services are mainstays amongst guitar players and musicians, as evidenced by (a) the consistent Top-25 download ranking on iTunes App Store; (b) the over 1.5 million registered users of the “” website; and (c) the over 15 million unique visitors to the site each month.
Complainant is the registered owner of six trademarks registered in the United States of America for the trademarks; ULTIMATE GUITAR, Reg. No. 3707191 (Supplemental Register); ULTIMATE GUITAR, Reg. No. 3763253 (Principal Register); ULTIMATE-GUITAR .COM, Reg. No. 3707192 (Supplemental Register); ULTIMATE-GUITAR .COM, Reg. No. 3767464 (Principal Register); Logo/Design Mark ULTIMATEGUITAR.COM, Reg. No. 3707193 (Supplemental Register); Logo/Design Mark ULTIMATEGUITAR.COM, Reg. No. 3767465 (Principal Register).
Particulars of the above noted United States (U.S.) Registrations are as follows;
(1) United States Registration No. 3,707,191 for the trademark ULTIMATE GUITAR registered as a service mark on the Supplemental Register on November 3, 2009 in relation to: IC 042. US 100 101.G&S: Hosting an online website featuring music, sheet music and news and articles about music and musicians; Providing a website that gives users the ability to create customized web pages featuring user-defined profiles and information; Computer services, namely hosting online web facilities for others to showcase songwriting and musical talents and for facilitating and conducting on-line connections, collaboration, and interactive discussions about songwriting and music. FIRST USE: 19981009. FIRST USE IN COMMERCE; 20070711. IC 045, US100 101. G&S: Providing a social networking website for entertainment purposes. FIRST USE: 19981009. FIRST USE IN COMMERCE: 20070711
(2) United States Registration No. 3,763,253 for the trademark ULTIMATE GUITAR registered on the Principal Register on March 21, 2010 in relation to: IC 035, US100 101 102. G & S. Contests and incentive award programs to promote the sale of products and services of others; providing an Internet website portal featuring links to music-related merchandise for retail purposes. FIRST USE: 19981009. FIRST USE IN COMMERCE: 20040329. IC 041. US100 101 107. G & S: Providing an Internet website portal in the field of music; Entertainment services, namely, providing on-line articles about music, all on-line via a global computer network; Music composition and transcription for others. FIRST USE: 19981009. FIRST USE IN COMMERCE: 19981009.
The registration was effected on proof of acquired distinctiveness of the service mark pursuant to Section 2(f) of the United States trademark law.
(3) United States Registration No. 3,707,192 for the trademark ULTIMATE-GUITAR.COM registered as a service mark on the Supplemental Register on November 3, 2009 in relation to:
IC 042. US 100 101. G & S: Hosting an online website featuring music, sheet music and news and articles about music and musicians; Providing a website that gives users the ability to create customized web pages featuring user-defined profiles and information; Computer services, namely, hosting on-line web facilities for others to showcase songwriting and musical talents and for facilitating and conducting on-line connections, collaboration, and interactive discussions about songwriting and music. FIRST USE: 19981009. FIRST USE IN COMMERCE; 20070711.IC 045. US 100 101 G & S; Providing a social networking website for entertainment purposes. FIRST USE 19981009. FIRST USE IN COMMERCE; 20070711.
(4) United States Registration No. 3,767,464 for the trademark ULTIMATE-GUITAR.COM registered as a service mark on the Principal Register on March 30, 2010 in relation to:
IC 035. US 100 101 102. G & S: Contests and incentive award programs to promote the sale of products and services of others; Providing an internet website portal featuring links to music-related merchandise for retail purposes. FIRST USE: 19981009. FIRST USE IN COMMERCE: 20040329. IC 041. US 100 101 107. G & S: Providing an internet website portal in the field of music; Entertainment services, namely, providing on-line articles about music, all on-line via a global computer network; Music composition and transcription for others. FIRST USE: 19981009. FIRST USE IN COMMERCE: 19981009.
The Registration was registered on the basis of proof of acquired distinctiveness pursuant to Section 2(F) of the United States Trademark law. Complainant is also the owner of other recent United States Trademark registrations for a Logo/Design incorporating “” referred to above. The mark consists of the words “” with a stylized “G” with devil horns. Registration No. 3767465 for the Logo/Design was registered on the Principal Register pursuant to Section 2 (F). The claimed date of FIRST USE is 20030122 and the claimed date of FIRST USE IN COMMERCE is 20030122.
Complainant is the registrant of the domain name created on October 13, 1999.
The disputed domain name was created on August 5, 1999. 5. Parties' Contentions A. Complainant A.1 Identical or Confusingly Similar
Complainant states that as found in section 4 above it is the owner of trademark registrations in the United States for or including the trademarks ULTIMATE GUITAR and ULTIMATE-GUITAR.COM registered in relation to services of operation of a website that provides online music and musician related goods and services including but not limited to tools for guitar players such as tablature and instructional videos worldwide for over a decade. Operation of the website has been Complainant's primary business since at least October 13, 1999. The trademarks have been widely used by Complainant for over a decade in the United States of America and throughout the world and are mainstays amongst guitar players and musicians as evidenced by (a) the consistent Top-25 download ranking on iTunes App Store; (b) the over 1.5 million registered users of the “” website; and (c) the over 15 million unique visitors to the site each month.
Complainant submits that the disputed domain name is identical to Complainant's registered trademarks referred to above and virtually identical to Complainant's website domain name . Complainant further submits that Respondent's registration of the disputed domain name constitutes unauthorized use of Complainant's marks and is likely to cause confusion, cause mistake, and/or deceive consumers as to an affiliation, connection, or association between Respondent's products and/or services and Complainant's goods and/or services. A.2 No Rights or Legitimate Interests in respect of the Domain Name
Complainant submits that there is no evidence that Respondent has ever used the disputed domain name in connection with any bona fide offering of goods or services. Instead, Respondent is using the domain name for commercial gain by purposefully misleading consumers. Respondent is using the disputed domain name to host a website featuring “pay-per-click” links to third party websites, including links to direct competitors of Complainant and other confusingly similar music and musician related sites. This common “pay-per-click” scheme is misleading to consumers who will naturally believe that the domain name points to a site endorsed or otherwise associated with Complainant's website and services. This is especially true given the fact that the domain name links to third parties in direct competition with Complainant.
Complainant further submits that Respondent has never been commonly known by the domain name and has no rights and/or legitimate interests in any trademark or service mark. Respondent is in the business of financing and purchasing domain names for profit, but openly asserts that it does not operate any websites other than the one associated with its own business. There is no available evidence suggesting Respondent has any connection to the music industry or to any guitar related products or services. A.3 Registration in Bad Faith
Complainant states that Complainant adopted and has used its above-referenced trademarks for over a decade and has established substantial good will in these trademarks. Specifically, Complainant's marks identify the services found on Complainant's famous and distinctive website, . Operation of the website has been Complainant's primary business since at least, October 13, 1999. Complainant's website provides online music and musician related goods and services including but not limited to tools for guitar players such as tablature and instructional videos worldwide. Complainant's website and services are mainstays amongst guitar players and musicians as evidenced by (a) the consistent Top-25 download ranking on iTunes App Store; (b) the over 1.5 million registered users of the “” website; and (c) the over 15 million unique visitors to the site each month.
Complainant further states that Respondent registered the disputed domain name without Complainant's permission or consent.
Complainant further states that Respondent's business is buying and selling domain names and helping third parties buy and sell domain names, for profit. Respondent advertises its business as “the first and only financial services company to offer financing to businesses based on the inherent and recognized value of premium domain names.” It would be difficult to hold that Respondent who is in the business of providing financing for “premium domain names” was not aware of the “inherent and recognized value” of the domain name. A.4 Use in Bad Faith
Complainant states that Respondent registered the disputed domain name for the purpose of operating a “pay-per-click” website designed to capitalize on the substantial goodwill established by Complainant in relation to services and/or effectuating a for-profit sale of the disputed domain name.
Complainant further submits that as stated above the disputed domain name is currently being used by Respondent in connection with a website offering “pay-per-click” links to third party websites. Having already argued the issue of bad-faith in reference to “pay-per-click” schemes, in general, Complaint also states that many of the third party sites linked to the Respondent's website give access to tablature and lyrics which are not licensed or offered under agreement with the copyright holder of the tablature or lyrics rights.
Complainant through its “” website and associated trademarks built its reputation on offering legal access to licensed tablature and lyrics. Respondent's use of the domain name is damaging Complainant's reputation and substantial good will as it is leading consumers and rights-holders to believe that it is the Complainant that is offering the non-legally obtained and/or unlicensed copyright material.
While Complainant has not received any direct offer of sale regarding the disputed domain name from Respondent, it is worth noting that Respondent has been involved in several other domain dispute cases before the WIPO Arbitration and Mediation Center as a Respondent. See, CompuCredit Corporation, CompuCredit Intellectual Property Holdings Corporation III v. Domain Capital and Aspire Prints,WIPO Case No. D2007-0407; Online Buddies Inc. v. Domain Capital,WIPO Case No. D2007-0541. Complainant offers both of the referenced cases as examples of similar matters to the one brought forth under this Complaint. Both cases were decided in favor of the Complainant.
Complainant submits that Respondent is the registered owner of the disputed domain name, and any attempt to name a third party as the “owner” of the disputed domain name should be viewed as “cyberflying”.
Complainant states that it sent Respondent a cease and desist letter on March 31, 2010, demanding that Respondent stop using its marks. Respondent did not properly respond by the deadline set forth in the letter, further suggesting a lack of any rights or legitimate interest in the disputed domain name.
Complainant further states that Respondent's legal counsel did contact Complainant's counsel via telephone on both April 5, 2010 and April 15, 2010, to discuss this matter. Respondent's counsel also sent a letter to Complainant's counsel on April 9, 2010. At no time did Respondent's counsel deny that Respondent was the registrant of the domain name. Instead, Respondent's counsel tried to deflect liability by claiming that some unknown third party, and not Respondent, was the actual owner of the site connected to the domain name. Counsel also asked that Respondent be given time to “locate” this unknown third party.
Complainant extended its deadline to file this Complaint on two occasions in order to allow Respondent time to comply with the demands set forth in the March 31, 2010, letter.
Complainant further states that as of the filing of this Complaint, Respondent has yet to comply with the demands set forth in the letter, other than acknowledging receipt of the letter, and the domain name is still being used to host the website in bad faith. To date, no third party has contacted Complainant or come forward claiming any ownership interest in the domain name. All records available show Respondent as the owner and registrant of the domain name. Complainant brings these facts to light, as Respondent was found to have committed “cyberflying” in at least one previous instance. See, Compu Credit Corporation, CompuCredit Intellectual Property Holdings Corporation III v. Domain Capital and Aspire Prints, supra. The Panel should be aware that the issue of “cyberflying” may arise with regard to this matter based on the actions of Respondent in its contacts with Complainant. B. Respondent
Respondent is a financial services company that offers financing for high value domain name purchases to third parties through lease/buyout agreements. Respondent submits that in order to secure the domain name collateral it is commonly listed as the registrant of generic domain names it finances. Respondent states that on or about January 9, 2007, it financed the purchase of the disputed domain name on behalf of an undisclosed party. Respondent states that it is required by confidentiality provisions of its agreement with the purchaser not to disclose the identity of the purchaser of the disputed domain name.
Respondent through a Declaration of its Chief Operating Officer states that at the time of the financing transaction it was unaware of the Complainant and its claimed rights in the “ultimateguitar” and hyphenated “ultimate-guitar” trademarks. Respondent states that at the time of the financing transaction Complainant did not have any pending trademark applications or registered trademarks on file in the United States Trademarks Office and Respondent had no reason to believe that anyone could claim exclusive rights in a common dictionary phrase which combines two very commonly used words in connection with rock music – “ultimate” and “guitar”. Respondent states that it relied heavily on the absence of a trademark registration in making its financing decision in good faith. Respondent through its Declarant further stated that, at the time of the financing, the previous registrant of the disputed domain name had held the disputed domain name for nine consecutive years, and there is no question that it possessed legitimate interests in and to the disputed domain name.
Respondent further states that it has no input in the selection of the parked page links, and no control over the DNS for the disputed domain name, which determine which web site a user is directed to when he or she types the disputed domain name into a web browser.
Registrant states that it registered the disputed domain name as collateral securing a loan obligation, and not for the purpose of: (i) selling the disputed domain name to Complainant, (ii) preventing Complainant from reflecting its marks in a corresponding domain name, (iii) attracting for commercial gain Internet users to the disputed domain name or corresponding website, by creating a likelihood of confusion with Complainant's mark and the disputed domain name or corresponding website, or (iv) in any other way profiting off Complainant's alleged trademarks.
Respondent states that in choosing to register the disputed domain name it made the decision to finance the purchase of the disputed domain name based on a set of proprietary lending criteria including, evaluation of the ability of the purchaser to pay back the financing, and it financed a percentage of the market or appraised value of the disputed domain name being offered as security. B.1 Identical or Confusingly Similar
Respondent submits that Complainant has failed to establish ownership of any relevant registered or common law trademark rights sufficient to satisfy paragraph 4(a)(i) of the Policy, and the Complaint must be denied.
Respondent states that Complainant did not have any registered trademark rights for a trademark for or including ULTIMATE GUITAR prior to January 2007, the time that Respondent financed and registered the disputed domain name . The six trademark registrations of Complainant for or including ULTIMATE GUITAR were applied for on April 14, 2009.
Respondent further states that three of Complainant's trademark registrations Nos. 3,707,191, ULTIMATEGUITAR; 3,707,192, ULTIMATE-GUITAR.COM; and 3,707,193, ULTIMATE-GUITAR.COM design, applied for on April 14, 2009, are registered on the Supplemental Register. Respondent states that none of the three registrations on the Supplemental Register claim a date of first use in commerce in the U.S. that predates Respondent's registration of the disputed domain name on or about January 9, 2007. Respondent states that Complainant failed to disclose in its Complaint that three of its trademark registrations are on the Supplemental Register.
Respondent further states that Complainant is also the owner of three other trademark registrations Nos. 3,767,465, ULTIMATE GUITAR.COM design; 3,763,253, ULTIMATE GUITAR, and 3,767,464, ULTIMATE GUITAR.COM, also applied for on April 14, 2009. The immediately preceding three registrations are registered on the Principal register in the United States Trademarks Office as Section (F) registrations based on proof of acquired distinctiveness.
Respondent states that the only registrations that claim a first use in commerce date that predates Respondent's registration of the disputed domain name on January 9, 2007 are the three Section (F) registrations on the Principal Register.
Respondent submits that Complainant cannot rely on its trademark registrations for the inference that it possessed trademark rights prior to the date that Respondent financed the acquisition of the disputed domain name and registered the disputed domain name on January 9, 2007. Respondent states that Complainant does not even claim that its supplemental marks acquired distinctiveness, let alone provide any evidence to that effect. Respondent states that not one of the supplemental registrations claims a first use in commerce date that predates Respondent's registration date of January 9, 2007. The supplemental marks claim a first use in commerce date of July, 11, 2007, seven months after Respondent registered the disputed domain name. Further Respondent submits that all Complainants' trademarks which proceeded to registration were not applied for until April 14, 2009, well after the date of January 9, 2007 on which the Respondent registered the disputed domain name.
Respondent submits that Complainant provides no documentary evidence of any common law use of the claimed marks, or the nature or magnitude of what such use would have been at the time that Respondent acquired the disputed domain name on or about January 9, 2007. Respondent further submits that Complainant fails to support any of its allegations of use with a sworn statement. Respondent submits that in the absence of documentary evidence or sworn statements, conclusionary allegations of use are entitled to no weight and must be disregarded by the Panel. See, Priority Management Systems, Inc. v. C.E.O. Mentor Pty Ltd, WIPO Case No. D2000-1522 (dismissing complaint where complainant failed to submit evidence to support complainant's claims). B.2 No Rights or Legitimate Interests in respect of the Domain Name
Respondent states that it has rights and legitimate interests in the disputed domain name as: (i) collateral securing a commercial financing obligation; and (ii) a common dictionary word domain name; (iii) used in connection with its dictionary meaning.
Respondent states that it is a financial services company that offers financing for high value domain name purchases to third parties through lease/buyout agreements. Descriptive domain names and dictionary word domains such as are considered to be extremely valuable. Respondent has financed millions of dollars in such domain name transactions, and is commonly listed as the registrant of domain names that it is financing.
Respondent states that on or about January 9, 2007, it financed the purchase of the disputed domain name on behalf of an undisclosed party. The identity of the purchaser of the disputed domain name has not been disclosed to the service provider or the Panel. Respondent states in a footnote that it is required to maintain the confidentiality of the undisclosed purchaser of the disputed domain name in accordance with the terms of the financing agreement.
Respondent states that on or about January 9, 2007 when it financed the purchase of the disputed domain name, the previous registrant of the disputed domain name had held the disputed domain name for nine consecutive years, and there is no question that it possessed legitimate interests in and to the disputed domain name.
Respondent states that in accordance with the financing agreement with the purchaser of the disputed domain name Respondent is listed as the registrant of the disputed domain name for the sole purpose of securing its interest in the collateral. In the event of default of payment, Respondent has the right to seize the disputed domain name to satisfy any outstanding financing obligations from the proceeds of its sale. Respondent submits that registering a domain name for the purpose of maintaining a security interest in it, to protect the registrant/financier against a default in payment, is a legitimate interest.
Respondent submits that it has rights to as a common word domain name. Respondent states that the phrase “Ultimate Guitar” is widely used by third parties in connection with a variety of music-related goods and services, including song books, guitar tabs, and chord charts among other uses, as shown in Exhibit G to the Response, a Google search for “ultimate guitar”. Respondent states that the Google search for “ultimate guitar” returned over two million search results, which include numerous websites and book titles not affiliated with Complainant.
Respondent submitted the results of a search for the combined words “ultimate guitar” conducted on the publicly available U.S. Trademarks Office disclosed three applications or registrations belonging to third parties.
Respondent submits that panels have recognized that registration of domain names comprised of common dictionary terms establishes a respondent's legitimate interest in such domains, for the purposes of paragraph 4(a)(ii) of the Policy. See, Roderick W. Accetta v. Domain Admin et al., NAF Claim No. FA 826565 ( “respondent's use of the domain name to operate a pay-per-click search engine is a bona fide offering of goods and services”).
Respondent submits that numerous panels have held that the use of a dictionary word domain name in connection with its descriptive use gives rise to rights and legitimate interests in the domain name. See, the Roderick W. Accetta Case (supra) (domain names consisting of terms of common usage for pay per click advertising do not warrant relief to trademark holder under the Policy); The Landmark Group v, D L.P., NAF Claim No. FA28549 (finding that as long as the domain names have been registered because of their attraction as dictionary words, and not because of their value as trademarks, this business model is permitted under the Policy”).
Respondent further submits that the appearance of links created by a third party monetization service cannot constitute bad faith on the part of the domain owner if the domain owner has no input on the links. See, Mariah Media Inc. v. First Place Internet Inc.,WIPO Case No. D2006-1275, (“Panel is unwilling to attribute bad faith to this search software. And it does not feel warranted in presuming bad faith on the part of a company using such software when the ‘keywords' it provides are merely dictionary words.”). Respondent states that pursuant to the financing agreement with the purchaser of the disputed domain name, Respondent has no input in the selection of the parked page links, and no control over the DNS for the disputed domain name, which determine which web site a user is directed to when he or she types the disputed domain name into a web browser.
Respondent further submits that to the extent the Panel finds that Complainant possesses any rights in the combination of the words “ultimate” and “guitar”, such rights must be limited to the narrow scope of Complainant's Section 2(F) trademark registrations, which do not contemplate Respondent's use of pay-per-click parking services. B.3 Registration in Bad Faith
Respondent submits that Complainant alleges on page 10 of the Complaint that Respondent and not some “unnamed third party” is the proper Respondent in this action. Respondent further submits that Complainant has utterly failed to establish that Respondent registered the disputed domain name with a bad faith intent to profit off Complainant's purported trademarks. Respondent reiterates that it registered the disputed domain name as collateral securing a loan obligation, and not for the purpose of: (i) selling the disputed domain name to Complainant; (ii) preventing Complainant from reflecting its marks in a corresponding domain name; (iii) attracting for commercial gain Internet users to the disputed domain name or corresponding website, by creating a likelihood of confusion with Complainant's mark and the disputed domain name or corresponding website; or (iv) in any other way profiting off Complainant's alleged trademarks.
Respondent states that registering a domain name to secure a commercial financial transaction is a good faith purpose. In choosing to register the disputed domain name Respondent evaluated the ability of the purchaser to pay back its loan, and the value of the domain name being offered as security. Respondent states that at the time of the financing transaction Respondent had never heard of Ultimate-G and Complainant did not have any pending trademark applications or registered trademarks on file in the United States Trademarks Office for an “Ultimate-Guitar” or “Ultimate Guitar” mark. Respondent made the decision to finance the purchase of the disputed domain name based on a set of proprietary lending criteria that had absolutely nothing to do with Complainant or its claimed trademarks. B.4 Used In Bad Faith
Respondent submits that Complainant disingenuously cited two prior UDRP decisions against it (See, CompuCredit Corporation, CompuCredit Intellectual Property Holdings Corporation III v. Domain Capital and Aspire Prints,WIPO Case No. D2007-0407; Online Buddies Inc. v. Domain Capital,WIPO Case No. D2007-0541) in support of the proposition that Respondent is a repeat bad faith actor and has lost both cases previously filed against it. Respondent submits that Complainant neglected to mention a third decision, Hostess Brands, Inc. f/k/a Interstate Bakeries Corporation v. Domain Capital,WIPO Case No. D2009-1357, which Respondent submits is most factually analogous to this case, and which was decided in Respondent's favor. Respondent points out that the panel in the Hostess Case addressed the two prior UDRP decisions referenced by Complainant and distinguished them based on the facts in the Hostess Case. Respondent submits that likewise, in this case Complainant has not and cannot demonstrate that Respondent has made use of the disputed domain name, other than in connection with non-competitive word links, of the type widely found on the Internet on a Google search for “ultimate guitar”, or otherwise attempted to trade off the goodwill of Complainant's trademarks.
Respondent states that it is incredibly unlikely that Internet users would confuse Complainant's site with Respondent's pay-per-click page. Respondent submits that to the extent that any confusion exists, Complainant has only itself to blame as Complainant has, upon information and belief, for the past several years been promoting itself on its website as “UltimateG”. If Complainant's users, seeing Complainant's branding, visit the unrelated site and are confused into believing that an affiliation exists between the sites, Complainant is responsible for that confusion. Respondent submits that the best way for Complainant to clear up the confusion would be for Complainant to stop marketing and promoting itself as “UltimateG”, a domain name it does not own, and not to falsely claim that Respondent is the source of alleged consumer confusion. B.5 Reverse Domain Hijacking
Respondent states that reverse domain hijacking is defined as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” See, Rules para. 1. A finding of Reverse Domain Hijacking may be made if “the Complainant knew or should have known at the time it filed the Complaint that it could not prove that the domain name was registered in bad faith.” See, Futureworld Consultancy (Pty) Limited v. Online Advice,WIPO Case No. D2003-0297. Allegations of reverse domain hijacking have been upheld in circumstances where the registration date of the domain name at issue precede the dates of the complainant's trademark registration. See, Limited v. Alton L. Flanders,WIPO Case No. D2004-0047, (finding Reverse Domain Name Hijacking where the complainant failed “to disclose when it commenced business using or adopted its mark”).
Respondent submits that in this case Complainant failed to disclose to the Panel that three of its claimed trademark registrations were on the Supplemental Register, and had first use in commerce dates seven months after Respondent registered the disputed domain name in January, 2007. Complainant also failed to disclose that all of its trademark registrations were granted almost three years after Respondent registered the disputed domain name.
Respondent further submits that Complainant failed to provide any evidence that it possessed rights in the words “Ultimate Guitar” at the time that Respondent registered the disputed domain name. Respondent further submits that Complainant appears to have been marketing itself on its website as “UltimateG” for the past several years, even though it did not own the domain name. Complainant's actions appear to have been a part of a bad faith scheme to hijack the disputed domain name by manufacturing a false claim to the disputed domain name by promoting itself as “UltimateG” and applying for the ULTIMATEGUITAR.COM trademark. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “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”.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy Complainant must establish rights in a trade mark and secondly that the disputed domain name is identical to or confusingly similar to the trade mark in which Complainant has rights.
Complainant is the owner of six United States Trade mark registrations for or including the words “ultimate” and “guitar” in combination. Particulars of the six trademark registrations are reviewed in paragraph 4 above. The six trademarks were registered between September 2009 and April 2010. Respondent financed the purchase of the disputed domain name by an undisclosed purchaser and registered the disputed domain name in its own name on January 9, 2007 as security for the funds advanced for the purchase of the disputed domain name. Respondent's position is that Complainant is not entitled to rely on its registered trademark rights which were acquired more than two and a half years after Respondent registered the disputed domain name. While the UDRP makes no specific reference to the date on which the owner of the trademark or service mark acquired rights the Panel is of the view that in the absence of extenuating circumstances registered trademark rights should not be treated as regressive rights.
The UDRP recognizes that a Complainant may successfully assert common law or unregistered trademark rights. Common law rights are reviewed in Question 1.7 of the WIPO Overview Of WIPO Panel Views on Selected UDRP Questions. The Overview states that in order to establish common law rights a complainant must show that the mark has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.
Complainant has operated its website for over ten years. Complainant's website provides online music and musician related goods and services, including but not limited to tools for guitar players such as tablature and in structural videos worldwide. Complainant has for many years and continues to make use of its trademarks to identify the services found on Complainant's website. Complainant's website currently has over 1.5 million Internet users who are registered users of the website. Complainant's website receives over 15 million unique visitors per month. Complainant's website consistently maintains a Top-25 download ranking on iTunes App Store. The number of visitors per month and the iTunes App Store figures are independently generated data.
Complainant registered its trademarks ULTIMATE GUITAR,ULTIMATE-GUITAR.COM and ULTIMATEGUITAR.COM Design on the Principal Register in the United States Patent and Trademarks Office on the basis of evidence of acquired distinctiveness filed in the trademarks office in 2009 to satisfy the requirements of Section (F) of the U.S. trademark law. Each of the three trademark applications were advertised for opposition but no third party opposed any of the applications which proceeded to registration.
Respondent states that Complainant provided no documentary evidence of any common-law use of its trademarks at the time that Respondent acquired the disputed domain name on or about January 9, 2007. Complainant's U.S. Registrations on the Principal Register for ULTIMATE- UITAR.COM show a claimed first use date of October 9, 1998 which supports Complainant's statement that its domain name has been in use for over a decade. The same Registration shows a claimed first use in commerce date October 9, 1998 for services in International Class 041 and a first use in commerce date of March 29, 2004 for services in International Class 035.
A review of the webpages from the website from the years 2000 to 2008 appearing on the Internet Archive Wayback Machine support Complainants statements that the website has been in use for ten years and the number of registered users of the website and visitors to the website as measured by industry standards support a conclusion that the words “ultimate” and “guitar” in combination or separated by a “hyphen” and/or in combination with “.com” served to distinguish the services of the Complainant of “providing an Internet website portal in the field of music; Entertainment services, namely, providing on-line articles about music, all on-line via a global computer network; Music composition and transcription for others” from those of others by the end of 2006.
The Panel finds that Complainant had established common law rights in the words “ultimate “and “guitar” in combination or separated by a “hyphen” and/or in combination with “.com” in association with the services described in preceding paragraph by the end of 2006.
Complainant submits that the disputed domain name is confusingly similar to Complainant's common law trademarks ULTIMATE GUITAR and ULTIMATE-GUITAR.COM. Respondent did not make a submission on the issue of confusing similarity. The only difference between the disputed domain name and Complainant's common law trademark ULTIMATE-GUITAR.COM is the absence of a hyphen.
The Panel finds that Complainant has established on a balance of probabilities that the disputed domain name is confusingly similar to Complainants common law trademarks. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant's trademarks.
Complainant's position is that there is no evidence that Respondent has ever used the disputed domain name in connection with any bona fide offering of goods or services. As of March 31, 2010, Respondent was using the disputed domain name to host a website featuring “pay-per-click” links to third party websites, including links to direct competitors of Complaint and other confusingly similar music and musician related sites.
Complainant's evidence is that Respondent has never been commonly known by the disputed domain name, and has no rights and/or interest in any trademark or service mark associated with the disputed domain name. Respondent is in the business of financing and purchasing domain names for profit, but openly asserts that it does not operate any websites other than the one associated with its own business. There is no available evidence suggesting Respondent has any connection to the music industry or to any guitar related products or services.
It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a disputed domain name. Previous decisions under the UDRP have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once this showing is made, the burden of proof shifts to Respondent to demonstrate its rights or legitimate interests in the disputed domain name. A respondent is entitled to avail itself of the benefits of paragraph 4(c) of the Policy to demonstrate its rights and interests in the disputed domain name in responding to the Complaint.
The Panel finds that Complainant has made a prima facie case that Respondent has no rights to and legitimate interests in the disputed domain name.
Respondent is a financial services company that offers lease/buyout agreements to third parties to finance high value domain name purchases. On or about January 9, 2007, Respondent financed the purchase of the disputed domain name on behalf of an undisclosed party. Respondent states that it is required by confidentiality provisions of its agreement with the purchaser of the disputed domain name to maintain the identity of the undisclosed purchaser confidential. In order to secure the domain name collateral Respondent listed itself as the registrant of the disputed domain name it financed.
Respondent stated that it has no input in the selection of the parked page links appearing on the webpage associated with the disputed domain name, and no control over the DNS for the disputed domain name, which determine which web site a user is directed to when he or she types the disputed domain name into a web browser.
Respondent has not advanced any evidence of use of the disputed domain name or a name corresponding to the disputed domain at any time in connection with a bona fide offering of goods or services. Respondent did not advance any evidence that it has been commonly known by the disputed domain name or that it acquired any trademark or service mark rights in the disputed domain name. Respondent did not advance any evidence that it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
Respondent submits that it is a legitimate business to finance the acquisition of domain names by purchasers. That is an issue outside the jurisdiction of the UDRP. The financing of the acquisition of domain names for commercial gain does not of itself demonstrate rights to or legitimate interests in a disputed domain name any more than does mere registration of a domain name establish an automatic right or legitimate interest in it for the purpose of the second element of the Policy. See e.g., Wildfire, Inc. v. Namebase,WIPO Case No. D2007-1611. Reliance on Paragraph 4(c) of the Policy requires something more than mere acquisition of a disputed domain name.
Respondent implies that it is not responsible for the content of the parking page associated with the disputed domain name as it has no control over the use of the disputed domain name made by the purchaser and user of the disputed domain name. The purchaser of the disputed domain name is using it to host a website featuring “pay-per-click” links to third party websites, including links to direct competitors of Complaint and other confusingly similar music and musician related sites. Many UDRP panels have held that a registrant of a domain name is responsible for the content of the parking pages generated by others, appearing on the website associated with registrant's domain name. The Panel agrees with the reasons expressed in CompuCredit Corporation, CompuCredit Intellectual Property Holdings Corporation III v. Domain Capital and Aspire Prints,WIPO Case No. D2007-0407, where the panel stated: “Domain Capital asserts that it had leased the Disputed Domain Name and believes that it cannot be held responsible for the use that its undisclosed licensee made of it. The Panel rejects this assertion. Domain Capital was the named registrant of the Disputed Domain Name when it was used to maintain the website that attracted consumers away from the Complainant's services. Therefore it is the party that is responsible for the content of the website at that time.”
The use by the purchaser of a webpage associated with the disputed domain name which incorporates “pay-per-click” links to third party websites, including links to direct competitors of Complaint and other confusingly similar music and musician related sites, is not a bona fide use of the disputed domain name.
The Panel finds that Complainant has proven on a balance of probabilities that Respondent does not have any rights or legitimate interests in the disputed domain name recognized under the Policy. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy Complainant must prove that the disputed domain name has been registered and used in bad faith. C. 1. Registered in Bad Faith
The proper respondent in cases in which two entities have a legal interest in a disputed domain name will generally comprise both of these entities. The absence of identification of one such entity may result in the complainant being deprived of the ability to contact let alone identify the holder of interest in the disputed domain name who may be a former employee of the complainant, a competitor of the complainant or much other evidence relevant to the dispute. Respondent is the listed registrant of record of the disputed domain name, and has declined to disclose the name or identity of an alleged underlying purchase and use of the disputed domain name citing confidentiality. Respondent and the purchaser of the disputed domain name appear to have cooperated to hide the identity of the purchaser of the disputed domain name from Complainant. The proceedings under the UDRP are summary with no opportunity to discover documents or persons and discover and test the evidence presented by the opposing party. In this Panel's view, hiding the identity of a person or entity having a legal interest in the disputed domain name (and which the Response suggests may in fact be the one making use of it) frustrates the procedure and interferes the development of the issues.
The situation is akin to the cases in which the identity of a person or persons potentially having a legal interest in a disputed domain name are hidden through the use of a proxy service. The Panel agrees with the reasons of the panel in The Saul Zaentz Company d/b/a Tolkein Enterprises v. Eurobox Ltd. / “ The Saul Zaentz Company”,WIPO Case No. D2008-0156, where the panel found; “…the use of a proxy service would more usually (although not necessarily always) be indicative that the respondent is seeking to hide its activity from scrutiny in proceedings under the Policy. The natural inference from this is a negative one- that the respondent has ‘something to hide'.”
Respondent's position is that at the time of the financing transaction it was unaware of the Complainant and its claimed rights in the “ultimateguitar” and hyphenated “ultimate-guitar” trademarks. The evidence shows that ULTIMATE-GUITAR.com had been in use for over seven years before the disputed domain name was registered and was a known trademark in relation to many aspects of guitars and music prior to Respondent's registration of the disputed domain name on January 9, 2007. If the Respondent had undertaken a Google or Way Back Archival search in early 2007 it would have become aware of Complainant's trademark rights. Respondent conducted a Google search for “ultimate guitar” in 2010 which was filed as an Exhibit. The Google search document shows that five of the first six links are directly connected to Complainant's or website or to a Wikipedia site describing Complainant's Ultimate Guitar Archive, also known as or simply UG, a large guitarist community website.
Respondent's further position is that it had no reason to believe that anyone could claim exclusive rights in a common dictionary phrase which combines two very commonly used words in connection with rock music – “ultimate” and “guitar”.
Of course one could acquire exclusive rights in a combination of descriptive words in certain circumstances as is apparent from Complainant's registration of “ultimate” and “guitar” in combination on the Principal Register in the United States based on Section 2(F). Secondly, it is the Panel's assessment that the purchaser of the disputed domain name did not register intending to use the words “ultimate” “guitar” in a descriptive manner but rather to target Complainant's widely known trademarks incorporating “ultimate” and “guitar”. The Respondent is the registrant of record, and in this case ultimately responsible for the purchaser's use of the disputed domain name to target Complainant's trademarks.
Having regard to the fact that the identity of the purchaser of the disputed domain name was not disclosed; the fact that Complainant's trademark for or including ULTIMATE GUITAR had been in use for seven years and were widely known by the end of 2006; the fact that there is no evidence that the purchaser ever carried on business relating to guitars, music or musicians; the fact that there is no evidence that the purchaser ever used the words “ultimate” and “guitar” in combination in a bona fide manner; and the evidence that the purchaser used the disputed domain name in association with a webpage which incorporates “pay-per-click” links to third party websites, including links to direct competitors of Complaint and other confusingly similar music and musician related sites; the Panel infers that the purchaser acquired the disputed domain name with knowledge of Complainant's common law trademark rights.
The Panel finds on the basis of the evidence submitted that Respondent and undisclosed purchaser registered the disputed domain name in bad faith. C.2. Domain Name Used in Bad Faith
Paragraph 4(b)(iv) of the Policy provides that using a domain name to intentionally attempt to attract Internet users to your website for commercial gain by creating a likelihood of confusion with a complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website constitutes evidence of bad faith use of a domain name.
The disputed domain name is currently being used by Respondent in connection with a website offering “pay-per-click” links to third party websites, without any information relating to Respondent or the purchaser, their purpose, business or proposed business if any. Many of the third party sites linked to the Respondent's website including links to direct competitors of Complaint and other confusingly similar music and musician related sites and give access to tablature and lyrics which are not licensed or offered under agreement with the copyright holder of the tablature or lyrics rights.
Respondent is the registrant of the disputed domain name and seemingly permits an undisclosed purchaser of the domain name, which is confusingly similar to Complainant's well-known trademarks for or including ULTIMATE GUITAR, to use the domain name as a distinctive element which enables the purchaser to draw Internet users to the website for profit by misleading Internet users, associating the disputed domain name with Complainant. Previous UDRP panels have recognized that it is bad faith for a respondent to intend to attract Internet users “for commercial gain” whether the gain is derived by the respondent itself or a third party advertiser. Villeroly & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912.
The Panel finds that Complainant has proven on a balance of probabilities that Respondent has used the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy, and that Complaint satisfies the requirements under paragraph 4(a)(iii) of the Policy. D. Reverse Domain Name Hijacking
Paragraph 1 of the Rules defines reverse domain hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” To succeed on an allegation of reverse domain name hijacking a respondent must show that the complainant knew of respondent's unassailable rights or legitimate interests in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the complaint in bad faith. See, Sydney Opera House Trust v. Trilynx Pty. Limited,WIPO Case No. D2000-1224 and Goldline International, Inc. v. Gold Line,WIPO Case No. D2000-1151.
In view of the Panels finding that Complainant has proven each of the three element set forth in paragraph 4(a) of the Policy the allegation of Reverse Domain Name Hijacking is dismissed. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Ross Carson
Sole Panelist
Dated: June 10, 2010
Full & Egal Universal Law Academy