"The dividing line can be difficult to draw," wrote the majority panel in a UDRP decision over ultimateguitars.com. "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."
In a decision published on March 8, UDRP panellists Diane Caball and Neil Smith wrote that complainant Quester lacked evidence showing that respondent DI SA specifically targeted the Ultimate Guitar mark.
Coupled with the descriptive nature of the combined words comprising ultimateguitars.com, the panel ruled in the respondent's favour.
This clashed with presiding panellist John Swinson's view, who argued that the complainant established that its website ultimate-guitar.com was well-known through continued use from 1999 and its mark had acquired descriptiveness.
But panellists Caball and Smith found that the respondent had had a legitimate interest in the domain through 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," they wrote.
Caball and Smith found the respondent did register and use the domain in bad faith because the domain is based on common words. They added that because the domain was part of a portfolio of purchased domains, the complainant's argument was weakened further.
Swinson did not buy into this logic. He disagreed that the combination of words "ultimateguitars" is descriptive. "So does the USPTO," he said. "The majority devalues the complainant's registrations."
He added: "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."
For Swinson, the pay-per-click links did not relate to the generic nature of the domain, but instead capitalised on the complainant's trade mark.
Finally, Swinson argued that the domain was registered and used in bad faith. He considered the complainant's website ultimate-guitar.com to be well-known before the respondent's purchase of the domain in 2009, and took issue with the majority's argument that because the domain was part of a portfolio of domains purchased by the respondent, any claim about targeting was weakened.
"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," he wrote.
Swinson was in the minority, however, and so Quester Group was unsuccessful unlike when it filed a complaint over ultimateguitar.com, in a decision made last June. The majority panel recognised the apparent contradiction and wrote: "[T]his case differs from Quester Group, Inc. v. Domain Capital… where the Respondent was acting solely as a resale agent."
In that case the named respondent tried to absolve himself from blame for pay-per-click links, as he purchased the domain on behalf of a client, who wished to remain anonymous. His argument that he had no control over what appeared on the site held no sway.
