6th Jun 2014

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Javier Zetter Casillas v. Domain Hostmaster/ Vertical Axis Inc.

Case No. D2014-0400

1. The Parties

The Complainant is Javier Zetter Casillas of Guadalajara, Mexico, represented by AN-KI, Mexico.

The Respondent is Domain Hostmaster of Fortitude Valley, Australia / Vertical Axis Inc. of Christ Church, Barbados, represented by ESQwire.com PC, United States of America.

2. The Domain Name and Registrar

The disputed domain name <bigbang.com> is registered with Fabulous.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2014. On March 14, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 17, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 17, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 20, 2014.

The Center verified that the Complaint together with the amended 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 March 24, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 13, 2014. Due to exceptional circumstances, the Respondent was given an extension until April 20, 2014 to file a Response. The Response was filed with the Center April 20, 2014.

The Center appointed Johan Sjöbeck, Pablo A. Palazzi and The Hon Neil Brown Q.C. as panelists in this matter on May 23, 2014. 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.

The Complainant submitted a Supplemental Filing to the Center on June 6, 2014. Because this filing was made very late in the proceeding, the Panel, in its discretion, has elected not to consider it.

4. Factual Background

The Complainant has submitted evidence that it is the owner of the following trademark registrations:

BIG BANG IDENTIDAD EMPRESARIAL with Mexican trademark registration No. 1049351 and filing date June 9, 2006.

BIG BANG IDENTIDAD EMPRESARIAL with US trademark registration No. 3.658.634 and filing date May 8, 2007.

BIG BANG IDENTIDAD EMPRESARIAL with Mexican trademark registration No. 1068669 and filing date September 22, 2008.

BIG BANG IDENTIDAD EMPRESARIAL with US trademark registration No. 4.049.648 and filing date February 24, 2009.

BIG BANG with Canadian trademark registration No. 848.967 and filing date June 21, 2010.

BIG BANG with Mexican trademark registration No. 1190397 and filing date August 16, 2010.

BIG BANG EXECUTIVE with Mexican trademark registration No. 1240667 and filing date April 15, 2011.

BIG BANG IDENTIDAD EMPRESARIAL with European CTM trademark registration No. 10351369 and filing date October 19, 2011.

The disputed domain name <bigbang.com> was registered by the Respondent on March 3, 2006.

5. Parties’ Contentions

A. Complainant

The Complainant manufactures and distributes uniforms in Mexico, the United States, Canada and the European Community. The Complainant uses the trademarks BIG BANG and/or BIG BANG EXECUTIVE and/or BIG BANG IDENTIDAD EMPRESARIAL to distinguish its goods and services. The principal element of the Complainant’s trademarks is BIG BANG. The disputed domain name <bigbang.com> reproduces the trademark BIG BANG. The disputed domain name is confusingly similar to the trademarks BIG BANG EXECUTIVE and BIG BANG IDENTIDAD EMPRESARIAL owned by the Complainant.

The Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name. The Respondent is not known as “Big Bang” and the Respondent has no trademark or service mark registrations for the term “Big Bang”. Since the content of the website to which the disputed domain name resolves merely displays a template, there are no demonstrable preparations to use the disputed domain name.

The Respondent is hijacking the disputed domain name in order to sell it to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name. This behavior is evidenced by the content of the Respondent’s website which merely is a façade. The true intention of the Respondent is to hold the disputed domain name until it is able to sell it. The Respondent’s scheme is to occupy the disputed domain name in order to prevent the Complainant from reflecting its trademark in a corresponding domain name.

The disputed domain name should be considered as used in bad faith since the Respondent is using the disputed domain name to attract Internet users searching for the Complainant’s trademark. When searching for “bigbang.com” on Google, the Complainant’s domain name <bigbang.com.mx> is the very first search result, immediately followed by the disputed domain name.

B. Respondent

The Respondent argues that this is a matter of Reverse Domain Name Hijacking since the Complainant’s trademark counsel knew or should have known that the Complainant is abusing the Policy.

The Respondent has a legitimate interest in the disputed domain name because it solely incorporates the internationally common term “big bang” that is also comprised solely of two English dictionary words. “Big bang” is most commonly known as the shortened form of “The Big Bang Theory” which is the prevailing scientific model and explanation for the early development of the universe. Consistent with this common usage, “big bang” is also a simple descriptive statement for a loud sound or massive explosion. Additionally, because it is an attractive and common combination of two generic English words, there is tremendous third party use of the words worldwide. A Google search result for “big bang” reveals 385,000,000 results, with at least the first three pages of results yielding no reference to the Complainant.

The Complainant’s earliest application for a trademark is June 9, 2006, which is three months after the Respondent purchased the disputed domain name on March 4, 2006. The Respondent acquired the disputed domain name from its prior owner, who registered it on February 21, 1995. Under the facts, the Complainant must have known that the disputed domain name is the rightful property of the Respondent and that the Respondent never targeted the Complainant in any manner. The Respondent purchased the disputed domain name because of its attraction as a popular common term, wholly unrelated to the Complainant. The Respondent did not register the disputed domain with the Complainant’s trademark in mind and had no knowledge of the Complainant when registering the domain name.

The Respondent invests in common word domains because it believes that they are inherently valuable due to the fact that they are short and memorable, have diverse commercial uses and do not belong exclusively to one company. The Respondent’s business strategy of investing in common dictionary word dot-com domains involves no bad faith behavior. The Respondent hosts underdeveloped domain names with domain name parking services that pay a share of the advertising revenue they generate, which is an industry-wide accepted practice.

The Complainant’s rights are for design marks, in a stylized form, and the Complainant does not have exclusive rights to the words “big bang.” The Complainant’s design marks only grant rights to the use of the words as a part of the particular applied for design or logo. This fact coupled with the extensive third-party use of the terms weighs heavily against finding confusing similarity with the disputed domain name.

Registering domain names that contain common words are permissible on a first come, first served basis, and such registration establishes the Respondent’s legitimate interest, provided the domain was not registered with a trademark in mind. There is no evidence indicating that the disputed domain name was registered with the Complainant’s trademark in mind. Evidence that supports that the Respondent registered the disputed domain name based on its common meaning and not because of the Complainant’s trademark is the fact that Respondent has registered numerous other similar common word domain names related to space or the “big bang theory” such as <earthcreation.com>, <cosmicevolution.com>, <creationfacts.com>, <theoryofevolution.com>, etc. This pattern supports the Respondent’s legitimate use of the disputed domain name.

The disputed domain name is a common term domain name that belongs to no one party. Although the Complainant purports to have trademark rights, it holds no word marks and only sought to register its design mark for the words “big bang” (alone without other words in the design) in 2010, four years after the Respondent purchased the disputed domain name. There is simply no evidence that the Complainant is well known or that the public associates “big bang” exclusively with the Complainant. Thus, there is no evidence that the Respondent or the prior holder of the disputed domain name knew of or targeted the Complaint in any manner.

The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) at paragraph 2.2., states “[i]f a respondent is using a generic word to describe his product/business or to profit from the generic value of the word without intending to take advantage of complainant’s rights in that word, then it has a legitimate interest.”

Because of the substantial third-party use of this common term, the Complainant must produce specific evidence of bad faith registration because there is no proof that the Complainant’s mark was the reason the Respondent registered the disputed domain name. The Complainant has failed to provide such evidence because none exists. There is no logic to the allegation that the Respondent targeted the Complainant when it purchased the disputed domain name from its prior holder considering that the Complainant did not even apply for its first design mark until June, 2006, which is three months after the Respondent purchased the disputed domain name. The Complainant has failed to demonstrate that the disputed domain name was registered and used in bad faith.

There is absolutely no basis for the Complainant’s claims. The Complainant knew when it filed the Complaint that it could not prove essential elements of the Policy, such as bad faith registration, or that the Respondent does not have rights or a legitimate interest in the disputed domain name. It appears that the Complaint was filed by the same trademark counsel that prepared the trademark filings for the Complainant. The counsel certainly had an obligation to understand the rules and present a valid claim. Accordingly, the trademark counsel knew or should been aware of the rules of the UDRP. The Complainant undoubtedly filed the UDRP Complaint to hijack the disputed domain name from its rightful owner and gain exclusive use of an inherently valuable common term and combination of two English words used by millions of people worldwide. This claim is not only an abuse of the Policy, but it also represents an abuse of the trademark system.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:

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

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

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

A. Identical or Confusingly Similar

According to the submitted evidence, the Complainant has registered rights in a logo comprising the words BIG BANG IDENTIDAD EMPRESARIAL in red or white colors and a line design underneath the word “big”. Furthermore, the Complainant is the owner of the registered trademark BIG BANG EXECUTIVE. In addition to the above, the Complainant has registered rights in a logo comprising the words BIG BANG in red color with a red line. The disputed domain name <bigbang.com> incorporates the words “big bang” in its entirety.

Having the above in mind, the Panel concludes that the disputed domain name <bigbang.com> is confusingly similar to the Complainant’s device mark BIG BANG and that the Complainant has proved the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(i) that it has made preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute; or

(ii) that it is commonly known by the disputed domain name, even if it has not acquired any trademark rights; or

(iii) that it intends to make a legitimate, noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

The Panel agrees with the Respondent’s claim that the term “big bang” is comprised of two common generic and descriptive English dictionary words most commonly known as the shortened form of “The Big Bang Theory”. The Panel also agrees with the Respondent’s claim that the term “big bang” is a descriptive statement for a loud sound or massive explosion.

The Complainant has stated that the Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name but has not submitted any evidence or arguments to support its statement.

The Respondent uses the disputed domain name within the generic or descriptive meaning of the words “big bang”. The website to which the disputed domain name resolves contains sponsored links, none of which are associated with the Complainant. The WIPO Overview 2.0, at paragraph 2.2., states “[i]f a respondent is using a generic word to describe his product/business or to profit from the generic value of the word without intending to take advantage of complainant’s rights in that word, then it has a legitimate interest.”

On the basis of the evidence submitted by the parties, the Panel finds that the Complainant has failed to prove that the Respondent has no rights or legitimate interest in respect of the disputed domain name. Accordingly, the second requirement of the Policy is not established.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include:

(i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct; or

(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.

The WIPO Overview 2.0, at paragraph 3.1 reads as follows:

“Can bad faith be found if the disputed domain name was registered before the trademark was registered or before unregistered trademark rights were acquired? Consensus view: Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date, when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right.”

The submitted evidence in the case before the Panel indicates that the Respondent acquired the disputed domain name <bigbang.com> three months before the Complainant filed its application for the trademark BIG BANG IDENTIDAD EMPRESARIAL and more than four years before the Complainant filed its application for the trademark BIG BANG. Considering that the disputed domain name was registered before the Complainant even applied for the rights upon which the Complaint is based and since there is nothing before the Panel indicating that the Respondent should have been aware of the Complainant’s plans to apply for the trademark BIG BANG IDENTIDAD EMPRESARIAL, the Panel finds that the Complainant has failed to prove that the domain name registration was made by the Respondent in bad faith.

It has been argued by the Complainant that the Respondent hijacked the disputed domain name in order to sell it to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name. However, the Complainant has not submitted any evidence to support a finding that the Respondent is attempting to trade on the Complainant’s trademark.

The Complainant waited over eight years from the date the Respondent purchased the disputed domain name to file a Complaint. The Panel finds the long delay unexplained and detrimental since it makes it harder to ascertain the motives of the parties so long ago.

Considering all the above, there is nothing in the case before the Panel to support the Complainant’s claim that the disputed domain name was registered and is being used in bad faith.

D. Reverse Domain Name Hijacking

The WIPO Overview 2.0, at paragraph 4.17 reads as follows: “In what circumstances should a finding of Reverse Domain Name Hijacking or abuse of process be made? Paragraph 15(e) of the UDRP Rules provides that, if ‘after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding’. Reverse Domain Name Hijacking is defined under the UDRP Rules as ‘using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name’… WIPO panels have found Reverse Domain Name Hijacking in circumstances including where: the complainant in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP.”

In the view of the Panel this is a Complaint which never should have been launched. The Complainant knew that the disputed domain name <bigbang.com> was registered at least three months before the Complainant applied for the trademark BIG BANG IDENTIDAD EMPRESARIAL and more than four years before the Complainant applied for the trademark BIG BANG. The Complainant claimed that the Respondent registered the disputed domain name in bad faith but did not submit any evidence to support its claim. Thus, the Complainant knew or should have known at the time the complaint was filed that it could not prove one of the essential elements required by the UDRP.

Considering the above, the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

7. Decision

For the foregoing reasons, the Complaint is denied.

Johan C. Sjöbeck
Presiding Panelist

Pablo A. Palazzi
Panelist

The Hon Neil Brown Q.C.
Panelist
Date: June 6, 2014