In a case which was decided about a month ago, but just brought to my attention by a reader today, a one person WIPO panel took the domain name, UltimateGuitar.com away from Domain Capital which financed it on behalf of an undisclosed owner and gave it to the owner of Ultimate-Guitar.com, based on a “common law” trademark.
This decision has made it onto my worst of 2010 list.
Here are the facts.
Complainant’s owns the domain ultimate-guitar.com which was created on October 13, 1999.
The disputed domain name, ultimateguitar.com was created on August 5, 1999.
So the domain name taken was registered earlier than the domain through which the Complainant “established” his rights.
The Complainant that owned the domain ULTIMATE-GUITAR.COM since 1999 did not file for a trademark until November 2009 citing a first use date of 1998, even prior the registration of the domain.
Domain Capital lent on the domain in January 2007, some 2 1/2 years before the trademarks were filed and took title to the domain as they typically do to secure their loan.
Here is what the sole panelist found:
“”Complainant is the owner of six United States Trademark registrations for or including the words “ultimate” and “guitar” in combination…The six trademarks were registered between September 2009 and April 2010.
“”Respondent financed the purchase of the disputed domain name <ultimateguitar.com> 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…. 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 <ultimate-guitar.com> 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 <ultimate-guitar.com> website. Complainant’s website currently has over 1.5 million Internet users who are registered users of the website. Complainant’s <ultimate-guitar.com> website receives over 15 million unique visitors per month. Complainant’s <ultimate-guitar.com> 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.””
“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 <ultimate-guitar.com> 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 <ultimate-guitar.com> 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” “”
“”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.””
So to recap the domain name with hyphen wasn’t registered until 1999, yet the panel says they have a common law right dating back to 1998 and although their was no trademark filed on the domain until 2 1/2 years after Domain Capital acquired it they took the domain away.
Moreover the Domain Capital did not make any offers to sell the domain to the Complainant, yet the panel cited 2 other cases where Domain Capital lost to negate this factor:
“”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….Both cases were decided in favor of the Complainant.””
Panelist are always quick to question domain holders intention, in this case why Domain Capital would not disclose who the beneficial owner of the domain was:
“””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.””
But panelist never question the “trademark Holders intention or in this case why did the owner of the hyphenated domain, being so well know and so valuable wait a full 10 years before filing a trademark?
I mean sometime between 1999 and 2009 the “trademark holder” must have realized they had a valuable asset and if so they should have protected it.
To me this looks like not a case of using trademark laws to protect your asset but to steal another asset.