Ultimate Search keeps control of Domain

December 13th, 2002
By Demys News service

There is no "reasonable connection between pornography and narrow-minded people with intolerant views" said a three member WIPO panel in the fight for Bigot.com between a tobacco company and an online search/domain name developer known as Ultimate Search (Ult Search). But the panel went on to find for the registrant who had pointed the domain to pornographic sites.

Venezuelan company C A Cigarrera Bigott Sucesores made a complaint under the UDRP against Ultimate Search, a Hong Kong based search engine and domain name developer in respect of the domain name Bigot.com, claiming that the name was identical or confusingly similar to its 'Bigott' trademarks. The complainant took its name from its founder, Luis Bigott.

Ultimate Search's claimed business practice is the registration of short, generic or otherwise useful domain names for development in its searching service. Unsurprisingly, given this activity, Ultimate is no stranger to UDRP proceedings. It was involved in a famous case against PriceWaterhouseCoopers in which it successfully defended its registration of pwc.com (see: PriceWaterhouseCoopers loses domain name challenge - 27th May, 2002) and also successfully managed to obtain a finding of reverse domain name hijacking against a Brazilian company who tried to claim its domain name paparazzo.com.

Any complainant taking on Ultimate Search should therefore be very careful of its approach, one would think. However, in the Bigott case, the panel found that the complainant had submitted "only circumstantial evidence - that the respondent is using a domain name confusingly similar to complainant's mark to conduct some business". Ultimate had also claimed that Bigott had conducted no research on Ultimate's business or record and had made no contact to determine why the domain name was registered before launching the complaint.

The decision was not an easy one for the panel, however. The over-riding question was whether Ultimate's argument that 'bigot' is a common word in the English language, meaning someone who is offensive, could stand against a mark holder doing significant business under a very similar name. Regular readers of Demys News will recall that we characterise the UDRP as a boxing match of three rounds. The complainant must 'win on points' in each:-

The first round is the trademark round. In this, the complainant did succeed. The panel found that the trademark Bigott is confusingly similar to the Bigot domain name. Ultimate's common word argument did not determine the question because the UDRP is international and Spanish speakers unfamiliar with the word 'bigot' might still be confused.

The second round is the legitimate interests round. Here, Ultimate prevailed, even though the panel found its relationship argument that bigot=offensive person=pornographic websites "extremely tenuous". The panel saw no reason why anyone looking for pornography would log on to a domain name defined as one for narrow-minded people with intolerant views. However, the fight turned Ultimate's way when the panel noted that its business was bona fide (offering goods and services in an arbitrary asociation with pornography) and was conducted without knowledge of the complainant's claim.

As Ultimate had won the second round, the panel did not need to put the combatants back into the ring, but they proceeded to do so when they decided that the case deserved further discussion. The third round therefore proceeded, and as usual, it dealt with bad faith. In this round, the panel focused on the lack of evidence of any malign intent on Ultimate's part. While Bigott is well known in parts of South America, Ultimate operates in Hong Kong and its domain seems mainly aimed at English speakers.

Once again, a panel has confirmed the criticality of the evidence presented to it in assisting with the question of bad faith. The case also indicates that complainants should consider any effects of the language either of the respondent or its business before launching a complaint.