Javier Zetter Casillas of Guadalajara, Mexico, represented by AN-KI, Mexico, has been found guilty of Reverse Domain Name Hijacking (RNDH) on the domain name BigBang.com, which is owned by Vertical Axis Inc. which was represented as usual by ESQwire.com PC.
Mr Casillas brought his case based on trademarks in the United States , Canada and Mexico based on registered trademarks for the term “Big Bang Identidad Enmpresarial” the earliest of which was filed in Mexico on June 9, 2006 and the most recent filed with the European CTM in 2011.
The Complaint had two trademarks for the term “Big Bang” in Canadian and Mexico but not until 2010.
The domain was was registered by the Vertical Axis on March 3, 2006
The three UDRP panelist Johan Sjöbeck, Pablo A. Palazzi and The Hon Neil Brown Q.C. found that the Complainant engaged in RDNH:
“”In the view of the Panel this is a Complaint which never should have been launched. The Complainant knew that the disputed domain name 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 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.”
“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”.
“The submitted evidence in the case before the Panel indicates that the Respondent acquired the disputed domain name 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.
“Considering the above, the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”