national arbitration forum

 

DECISION

 

Big 5 Corp. v. EyeAim.com / Roy Fang

Claim Number: FA1308001513704

 

PARTIES

Complainant is Big 5 Corp. (“Complainant”), represented by Susan L. Mizer of Tucker Ellis LLP, California, USA.  Respondent is EyeAim.com / Roy Fang (“Respondent”), represented by Kevin Keener of Keener, McPhail, Salles, LLC, Illinois, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <big5.com>, registered with eNom, Inc.

 

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

 

Fernando Triana, Esq. as Chair of the Panel

David H. Bernstein, Esq. as Co-Panelist

Houston Putnam Lowry, Chartered Arbitrator, as Co-Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 7, 2013; the National Arbitration Forum received payment on August 7, 2013.

 

On August 9, 2013, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the disputed domain name <big5.com> is registered with eNom, Inc. and that Respondent is the current registrant of the name.  eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On August 20, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 9, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@big5.com.  Also on August 20, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

A timely Response was received and determined to be complete on September 9, 2013.

 

A timely Additional Submission was received from Complainant and determined to be complete on September 16, 2013.

 

A timely Additional Submission was received from Respondent and determined to be complete on September 20, 2013.

 

On August 7, 2013, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Fernando Triana, Esq. as Chair of the Panel, and David Bernstein, Esq. and Houston Putnam Lowry, Chartered Arbitrator, as Co-Panelists.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

 

RELIEF SOUGHT

Complainant requests that the disputed domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A.   Complainant

a.    Complainant is a leading sporting goods retailer, providing a full-line product offering athletic shoes, apparel and accessories, as well as a broad selection of outdoor and athletic equipment for team sports, fitness, camping, hunting, fishing, tennis, golf, snowboarding and in-line skating.

b.    Complainant or its predecessors have sold sporting goods and apparel through Complainant’s network of retail stores throughout the western United States under the BIG 5 and BIG 5 SPORTING GOODS trademarks since at least as early as 1956.

c.    Complainant owns trademark registrations with the United States Patent and Trademark Organization (“USPTO”): BIG 5 (Reg. No. 1,929,798 registered on October 24, 1995, to identify: “retail sporting goods and wearing apparel stores”) and BIG 5 SPORTING GOODS (Reg. No. 2,749,742 registered on August 12, 2003 to identify “retail stores featuring sporting goods and wearing apparel”), as shown in Exhibit 2 to the Complaint.

d.    The disputed domain name was registered after Complainant’s trademark registrations and until recently it resolved to a pay-per-click website advertising and selling sporting goods and related accessories, as shown in Exhibit 3 to the Complaint.

e.    The disputed domain name <big5.com> entirely reproduces Complainant’s trademarks.

f.      Currently, the disputed domain name resolves to a website displaying links to the website of Paper.li, which collects news articles, social media posts, and the like (Exhibit 6 to the Complaint). Around the Paper.li content, Respondent displays advertisements for Big 5 Sporting Goods, as well as other information related to Complainant, such as job opportunities at Complainant’s business. Respondent’s website also features advertisements for sporting goods products distributed through other retailers, including Complainant’s competitors (Exhibit 6 to the Complaint).

g.    With the disputed domain name Respondent makes unauthorized use of Complainant’s trademarks, to distribute sporting goods.  

h.    Respondent is not related to Complainant or any of its affiliates and has not received any license, permission or consent to use or own Complainant’s trademark BIG 5.

i.      Respondent is not known as BIG 5, but rather as EyeAim.com.

j.      Respondent is attempting to misappropriate Internet traffic seeking Complainant’s site for Respondent’s own commercial gain through the incorporation of the trademark BIG 5 in the disputed domain name.

k.    Respondent’s use of the disputed domain name to offer sport-related goods or services trespasses Complainant’s trademark rights.

l.      Respondent is taking commercial advantage of the confusing similarity between Respondent’s domain name and Complainant’s trademark, enabling Respondent to bolster its image and profit from the goodwill associated with Complainant’s mark.

m.   Complainant sent two cease and desist letters to Respondent, but Respondent insisted on continuing to use the disputed domain name with pay-per-click advertisements including for products in competition with Complainant (Exhibits 10 and 11 to the Complaint).

 

B.   Respondent

a.    Respondent registered the disputed domain name <big5.com> on March 19, 1998, about eight months after Complainant registered the domain name <big5sportinggoods.com> on July 22, 1997 (Exhibits 1 and 2 to the Response).

b.    Respondent is a citizen and resident of Taiwan, who registered the trademark BIG5.COM before the Taiwan Intellectual Property Office with registration No. 156,358 filed on October 19, 2000; registered on January 1, 2002, in international class 42 to identify “Computer software design and Database processing. Computer aided social networking” (Exhibit 3 to the Response).

c.    The term “Big5” refers to the digitized coding system of traditional Chinese language character sets used by a large Chinese-speaking population (Exhibit 7 to the Response).

d.    The disputed domain name <big5.com> was first used as a method of redirecting Chinese-speaking populations to URLs containing ASCII characters by typing non-ASCII characters into a URL (Exhibits 5 to 12 to the Response).

e.    Around 2002, Respondent decided to abandon the redirect service and turn the website at the disputed domain name into an aggregated content site until a better business model utilizing newer technology could be developed. Respondent used the Google AdSense program and ads were selected and placed automatically on the disputed domain name by Google algorithms.

f.      In 2010, Respondent enrolled the disputed domain name in the Amazon Affiliate aStore program which displayed sporting goods among other products and allowed consumers to shop directly from Amazon without leaving the website to which the disputed domain name resolved (Exhibit 9 to the Response).

g.    Demonstrating good faith, Respondent removed the Amazon aStore from the disputed domain name.

h.    Respondent has legitimate interests in the disputed domain name <big5.com>, since Respondent was making a bona fide offering of goods or services.

i.      Respondent provided a redirection service intended for Chinese speakers, for which Respondent registered a trademark in Taiwan.

j.      Respondent has never attempted to attract users to the disputed domain name by creating a likelihood of confusion with Complainant. Any confusion which might have been created was created unintentionally through the utilization and combination of the Amazon Affiliate aStore program and Google AdSense, which are administered by third parties.

k.    Complainant has engaged in reverse domain name hijacking, as Complainant had no basis for filing this dispute and was well aware of Respondent’s legitimate rights in the disputed domain name prior to filing this dispute.

 

C.   Additional Submissions

a.    Complainant’s Additional Submission

                                                  i.    The disputed domain name <big5.com> makes unauthorized use of Complainant’s trademarks in its advertisement, which has been used for selling sporting goods and currently predominantly features advertisements for Complainant.

                                                 ii.    Big5 emerged from the collaboration of five of Taiwan’s largest IT firms: Acer, MiTAC, JiaJia, ZERO ONE Technology, and First International Computer. Respondent has not asserted that he was part of the collaborative development effort for the Big5 encoding system.

                                                iii.    Respondent registered the disputed domain name on March 19, 1998 and used the disputed domain name as a redirection service, primarily for URL shortening, or redirecting a user to a longer URL by using a shortened URL. It was not until January 2010, that Respondent started providing e-commerce services through his website and started offering multiple sporting goods and apparel products for sale as part of the Amazon aStore program.

                                               iv.    Complainant requested that Amazon immediately and permanently discontinue the relationship with <big5.com> as an Amazon Affiliate Seller (Exhibit 4 to the Complaint). Contrary to Respondent’s assertion in the Response, Amazon terminated Respondent’s aStore account following Complainant’s notification of Respondent’s infringement and not at Respondent’s request (Exhibit 5 to the Complaint).

                                                v.    Since 2010, Respondent used the disputed domain name <big5.com> to advertise and sell sporting goods and apparel products in the United States of America, identical to the goods sold by Complainant, through Amazon’s aStores program for Amazon affiliates.

                                               vi.    Respondent asserts that Complainant has placed advertising on its website through the Google AdSense program, and falsely claims that Complainant has control over the placement of such advertisements on the website. Contrary to Respondent’s assertions, Complainant never elected to advertise on the website, as the advertisements were placed on the disputed domain name <big5.com> by search engine optimization “SEO” services, such as Google AdSense, based on the content of the website.

 

b.     Respondent’s Additional Submission

                                                  i.    The ads for Complainant and Complainant’s competitors appear to users visiting the domain from within the United States of America. However, Respondent resides in Taiwan (Exhibit 1 to Respondent’s Additional Submission).

                                                 ii.    Respondent’s use of the disputed domain name does not and has not infringed Complainant’s rights.

 

FINDINGS

1.    Complainant has owned the trademarks BIG 5 and BIG 5 SPORTING GOODS in the United States of America since before the disputed domain name was registered by Respondent.

 

2.    When Respondent renewed the disputed domain name, he was aware of Complainant’s rights in the trademarks BIG 5 and BIG 5 SPORTING GOODS.

 

3.    Respondent has a trademark registration dating from 1998 in Taiwan, but Respondent has admitted in the Response that the underlying trademark rights were abandoned since 2002.

 

4.    After abandoning the use of his trademark and discontinuing the offering of the goods and services covered by his registration Respondent substantially changed the use of the disputed domain name, creating a likelihood of confusion aimed at diverting consumers to Respondent’s websites.

 

5.    Respondent is not commonly known by the disputed domain name or the trademarks BIG 5 and BIG 5 SPORTING GOODS.

 

6.    Respondent is not affiliated with Complainant in any way: Complainant has never authorized, contracted, licensed or otherwise permitted Respondent to use the trademarks BIG 5 and BIG 5 SPORTING GOODS, nor is Respondent an authorized vender, supplier or distributor of Complainant’s goods and services.

 

7.    After the most recent renewal of the disputed domain name of January 7, 2012, Respondent did not use the disputed domain name in connection with a bona fide offering of goods or services.

 

8.    Respondent used the disputed domain name to resolve to a website that displayed pay-per-click advertisement for, among others, Complainant’s goods and goods sold in competition with Complainant’s goods.

 

9.    Respondent had the intention to attract Internet users to his website by using a domain name consisting of Complainant’s trademark, which had the effect of disrupting Complainant’s business.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  Respondent has no rights or legitimate interests in respect of the domain name; and

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

 

This discussion, based on the evidentiary support submitted by the parties, will be developed as follows:

 

First of all, the Panel will determine the scope of Paragraph 2 of the Policy. Secondly, the Panel will consider whether the disputed domain name is identical or confusingly similar to any trademark in which Complainant has rights. Thirdly, the Panel will consider whether Respondent has rights or legitimate interests in respect of the disputed domain name. Finally, the Panel will establish whether or not the disputed domain name has been registered and used in bad faith by Respondent.

 

Paragraph 2 of the Policy

 

A threshold issue is identifying the relevant time period to consider in evaluating Respondent’s rights and legitimate interests, and whether his conduct constituted bad faith. Paragraph 2 of the Policy addresses this issue – it provides that by applying to register a domain name, or by asking to maintain or renew a domain name registration, a Registrant represents and warrants that (a) the statements Registrant made in the Registration Agreement are complete and accurate; (b) to Registrant’s knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) Registrant is not registering the domain name for an unlawful purpose; and (d) Registrant will not knowingly use the domain name in violation of any applicable laws or regulations. It is Registrant’s responsibility to determine whether the domain name registration infringes or violates someone else’s rights.

 

The obligations set forth in Paragraph 2 of the Policy apply when registering the domain name as well as when renewing it, since the Policy is meant to be fulfilled while the domain name remains registered.

 

The panel in Octogen Pharmacal Co., Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, explains Paragraph 2 of the Policy, as follows:

 

“As this Panel sees it, this provision not only imposes a duty on the part of the registrant to conduct an investigation at the time of registration, but also includes a representation and warranty by the registrant that it will not now or in the future use the domain name in violation of any laws or regulations. This effectively imposes on the registrant a continuing duty to ensure that the domain name is not used in violation of another’s rights and clearly covers intellectual property rights and the laws protecting them, including copyright and trademark. This representation and warranty is not limited to the moment at which the registrant registers the domain name; rather, it extends to any use of the domain name in the future. This obligation is an integral part of the Policy, and it cannot be ignored. A party can register or acquire a domain name in good faith, yet use the domain name in the future in such a way that the representations and warranties that the registrant made as of the time of registration are violated. If a party uses the domain name in the future so as to call into question the party’s compliance with the party’s representations and warranties, this may be deemed to be retroactive bad faith registration.”^[1]

 

Consequently, a domain name not only must be registered as per the requirements of Paragraph 2 of the Policy, but also its renewals must comply with the same standards. Thus, the requirements of the Policy can be studied not only regarding a domain name registration but also when it is renewed.

 

In fact, it is very important to stress that Paragraph 2 of the Policy states that Registrant represents and warrants, when applying to register a domain name, or when requesting to maintain or renew a domain name registration, that the domain name will not infringe upon or otherwise violate the rights of any third party.

 

The panel in Eastman Sporto Group LLC v. Jim and Kenny, sets the scope of Paragraph 2 of the Policy, as follows:

 

“Paragraph 2 does not distinguish among the initial date of registration and subsequent requests for renewal – the undertaking by its terms applies as of all such dates.” ^[2]

 

Furthermore, good faith registration does not mean good faith renewal as set forth by the panel in PAA Laboratories GmbH v. Printing Arts America:

 

“The abusive refreshing of the original registration is an act which this Panel considers should be an act of a kind encompassed by paragraph 4(a)(iii) of the Policy. The benefit of an original good faith registration should not be perpetual to the point where it can cloak successors in title and successors in “possession” long after the original registration would have expired.”^[3]

 

Therefore, the elements of the Policy can be studied at the time of the registration or at the time of the renewal according to the specific circumstances of the case.

 

Identical and/or Confusingly Similar

 

Complainant contends to be the owner of trademarks BIG 5 and BIG 5 SPORTING GOODS in the United States of America, registered on October 24, 1995 and used in commerce since 1956, to identify retail stores featuring sporting goods and wearing apparel.

 

a)    Existence of a Trademark or Service Mark in Which the Complainant has Rights

 

Firstly, it is important to point out that Paragraph 4(a) of the Policy requires the existence of a trademark or a service mark. Such trademark or service rights are usually acquired by registration before the competent office in many jurisdictions of the world, though in the United States and certain other countries, use in commerce also can give rise to common law trademark rights. However, when use has discontinued, the registration is subject to cancellation on the grounds of abandonment.  Furthermore, in many jurisdictions, non-use of a trademark for a period of time can give rise to a presumption of abandonment (such as in the United States, where the period of time is 3 years) or to legal abandonment requiring the cancellation of a registration (such as in Europe, where the period of time is 5 years or in Taiwan, where the period of time is 3 years).

 

The worldwide-accepted definition of a trademark, involves the concept of distinctive force as the most relevant element. Said force gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.

 

When a sign is registered as a trademark, it is surrounded by a presumption of sufficient distinctive force, and the owner is granted with an exclusive right over the mark in that area of commerce, which entitles him to prevent any third party from using the registered sign or any other sign confusingly similar to it.

 

However, the UDRP does not discriminate between registered and unregistered trademarks^[4] and thus, it is well established that a Complainant does not need to own a registered trademark to invoke the Policy. It is sufficient in certain common law jurisdictions, such as the United States of America, that Complainant has rights over an unregistered trademark as to deserve legal protection, based solely on its use in commerce.

 

In this case, Complainant proved its rights in the trademarks BIG 5 and BIG 5 SPORTING GOODS. Exhibit 2 to the Complaint, includes:

 

·        United States Trademark Registration No. 1,929,798 registered on October 24, 1995, for : “retail sporting goods and wearing apparel stores”; and

 

·        United States Trademark Registration No. 2,749,742 registered on August 12, 2003, for: “retail stores featuring sporting goods and wearing apparel.”

 

This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the cited trademarks and the exclusive right to use them in connection with the stated goods and services. The registration of a trademark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive^[5]. And, there is no allegation by the Respondent that Complainant has abandoned its trademark rights.

 

Thus, Complainant established its rights in the trademarks BIG 5 and BIG 5 SPORTING GOODS ^[6].

 

Therefore, the Panel concludes that Complainant has demonstrated rights in the trademarks BIG 5 and BIG 5 SPORTING GOODS for purposes of Paragraph ¶ 4(a)(i) of the Policy.

 

b)   Identity or Confusing Similarity Between the Disputed Domain Name and the Complainant’s Trademark

 

Complainant alleges that the disputed domain name is identical to the trademark BIG 5.

 

On the first place, before establishing whether or not the disputed domain name <big5.com> is confusingly similar to Complainant’s trademarks BIG 5 and BIG 5 SPORTING GOODS, the Panel wants to point out that the addition of a generic top-level domain (“gTLD”), i.e., “.com,” “.biz,” “.edu,” “.net,” “.info,” “.org,” generally is not considered when determining if the registered domain name is identical or confusingly similar to the registered trademark^[7]. Generally, neither the addition of country-code top-level domains (“ccTLD”), i.e., “.co,” “.de,” “.cr,” “.es,” nor the insertion of a gTLD, has a distinctive function^[8].

 

UDRP panels have unanimously accepted that the inclusion of a non-distinctive gTLD in a disputed domain name is not a factor that must be considered in analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights. In Wal-Mart Stores, Inc. v. Walsucks, the panel stated that:

 

“[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is without legal significance since use of a gTLD is required of domain name registrants, ‘.com’ is one of only several such gTLDs, and ‘.com’ does not serve to identify a specific enterprise as a source of goods or services.”^[9]

 

Furthermore, the Panel considers that the reproduction of the trademarks BIG 5 and BIG 5 SPORTING GOODS, by the disputed domain name <big5.com>, is sufficient ground to establish that the disputed domain name is confusingly similar to the trademark^[10], mainly since the disputed domain name reproduces entirely Complainant’s trademark without any other distinctive elements. The incorporation of a trademark in a domain name is itself sufficient to establish that the domain name is identical to the trademark for purposes of the first factor under the Policy.

 

In consequence, as per this reasoning, the Panel finds that, in the present case, the disputed domain name is confusingly similar to Complainant’s trademarks and thus, the requirement set forth in Paragraph ¶ 4(a)(i) of the Policy is duly complied with.

 

Rights or Legitimate Interests

 

Consistent with the discussion above concerning Paragraph 2 of the Policy, both the Rights or Legitimate Interests and the Registration and Use in Bad Faith factors have to be analyzed based not only at the time of the registration but also, and sometimes exclusively, at the time of the last renewal of the disputed domain name.

 

a)  Prima Facie Case.

 

Regarding this second element of Paragraph 4(a) of the Policy, UDRP panels have consistently recognized that requiring Complainant to prove the lack of rights or legitimate interests of Respondent in the disputed domain name is often an impossible task: it is not only a negative but also demands access to information that is mostly within the knowledge of Respondent^[11].

 

In Julian Barnes v. Old Barn Studios Ltd., D2001-0121 (WIPO Mar. 30, 2001), the panel stated that:

 

“Is the Respondent required to adduce any such evidence, if the onus is on the Complainant to prove the three elements of paragraph 4 of the Policy? While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panel’s view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4(c) of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head.”.

 

Therefore, a Complainant is required to make a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once this prima facie case is made, the burden of production shifts to Respondent, who must come forward with concrete evidence of its rights or legitimate interests^[12].  If Respondent fails to produce evidence that can establish rights or legitimate interests, then Complainant is deemed to have met the second element of Paragraph 4(a) of the Policy.

 

Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name <big5.com> because of the following: i) Respondent is not commonly known by the disputed domain name but rather as “EyeAim.com”; ii) Respondent was not part of the collaborative development effort for the Big5 encoding system to which Respondent alludes; iii) Respondent is not related to Complainant or any of its affiliates, and Respondent has not received any license, permission, or consent to use or own the trademarks BIG 5 and BIG 5 SPORTING GOODS to identify sporting goods; iv) since 2010, Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services, because the disputed domain names display sponsored links, of Complainant’s.

 

The Panel accepts these assertions as sufficient to make out a prima facie case that Respondent lacks rights or legitimate interest, thus shifting the burden of production to Respondent.

 

b)  Respondent’s Rights or Legitimate Interests in the Disputed Domain Name.

 

Paragraph 4(c) of the Policy includes a non-exhaustive listing of circumstances that prove Respondent’s rights or legitimate interests in a disputed domain name:

 

(i) before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

 

(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

 

(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

The disputed domain name was renewed on January 7, 2012. Although it was registered March 19, 1998, it is important to take into account the situation at the time of renewal, the current use of the disputed domain name and mainly, Respondent’s assertions regarding the change made since 2002.

 

When the disputed domain name was registered, it was used as a redirecting website for Chinese-speaking populations to URLs containing ASCII characters. However, as stated by Respondent in the Response, such use was abandoned in 2002.  

 

By 2010 when Complainant’s trademark had reached a certain degree of collective awareness, Respondent started using the disputed domain name as a parking page affiliated to Amazon aStore, which allowed consumers to shop from Amazon at the website to which the disputed domain name resolves.  By virtue of its use of the disputed domain name for this aStore, Respondent has shown that he was well aware of Complainant and its trademark rights by at least 2010.

 

On December 30, 2011, Complainant contacted Amazon and objected to the Respondent’s use of the disputed domain name.  Complainant informed Amazon that Respondent’s use of the disputed domain name was an unauthorized use of the BIG 5 trademark, which was Complainant’s trademark.  Complainant’s communication was provided to Respondent, which showed Respondent that Complainant expressly objected to his use of the disputed domain name.  Thus, Respondent was knowingly profiting from Complainant’s goodwill.

 

The communication was memorialized with an email on January 4, 2012.

 

Three days later, on January 7, 2012, having been on express notice of Complainant’s trademark rights and Complainant’s objections to Respondent’s use of its trademark in the disputed domain name, Respondent renewed the disputed domain name and continued to operate the aStore at which it sold Complainant’s goods without authorization.

 

On January 11, 2012, Amazon informed Complainant that all Amazon content from Amazon had been removed from the website to which the disputed domain name resolved. It thus appears that it was because of Complainant’s objections, and not Respondent’s voluntary actions, that Respondent’s aStore was disabled.

 

Following Amazon’s removal of commercial displays at the website to which the disputed domain name resolved, Respondent continued to display pay-per-click advertisement related to Complainant’s business and Complainant’s competitors’ businesses.

 

Respondent nevertheless claims that he has rights and legitimate interests in the disputed domain name based on his subsisting trademark registration in Taiwan.  It is true that Respondent still owns the trademark registration BIG5.COM in Taiwan to identify “computer software design and data processing. Computer aided social networking,” which were the services that Respondent’s business was devoted to and as well the services offered with the disputed domain name before 2002, as shown by Respondent in the Exhibit 5 to the Response.  

 

However, Respondent stated that such business was abandoned in 2002 and a new enterprise was commenced in 2010. An enterprise that took advantage of the trademark value of the disputed domain name because it included links to Complainant’s business and to businesses selling products in competition with Complainant.  

 

Since 2002 and specially at January 7, 2012, the disputed domain name had no relation whatsoever with the services disclosed in Respondent’s trademark registration for BIG5.COM. Consequently, regarding the current services provided by the disputed domain name (since 2010 up to date), Respondent does not have any rights in the disputed domain name, despite having a trademark registration in force in Taiwan.

 

In considering the evidence in this case, it is important to accurately define a trademark right. The trademark right is granted over an expression (word), graphic (device), the combination of both (word plus device) among many other perceptible manifestations of the trademarks, regarding a specific list of goods and/or services^[13].

 

Thus, the scope of a trademark right is said list of goods and/or services. In this case, said list had been long forgotten by Respondent as accepted in his Response.

 

Given Respondent’s express concession that he abandoned all use of the trademark for the goods and services covered by the registration, the Panel concludes that Respondent’s trademark registration does not establish rights or legitimate interests.  Since the disputed domain name was not being used in connection with the services covered by the trademark registration, the right conferred by the trademark registration cannot be taken into account as right or legitimate interest on the disputed domain name.

 

Rather, the disputed domain name was being used in completely different affairs from the services listed in trademark registration; consequently, Respondent’s trademark rights are not extendable to the current use of the disputed domain name.

 

On this regard, the panel in Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", held:

 

“it would be a mistake to conclude that mere registration of a trademark creates a legitimate interest under the Policy. If an American-based Respondent could establish "rights" vis a vis an American Complainant through the expedient of securing a trademark registration in Tunisia, then the ICANN procedure would be rendered virtually useless. To establish cognizable rights, the overall circumstances should demonstrate that the registration was obtained in good faith for the purpose of making bona fide use of the mark in the jurisdiction where the mark is registered.”^[14]

 

A mere trademark registration does not grant immediate rights or legitimate interest in a domain name. For a registration to grant rights or legitimate interest regarding a domain name it has to fulfill the following criteria:

 

i)              The trademark registration must refer to the goods or services currently offered by or provided with the disputed domain name;

 

ii)             The registration must be previous to any notice of the dispute^[15];

 

iii)            The overall circumstances should demonstrate that the registration was obtained in good faith for the purpose of making bona fide use of the trademark in the jurisdiction where the trademark is registered^[16].

 

In the present case, the first criteria is not met, since the trademark registration simply does not identify sporting goods, which are the goods Respondent has offered at the website to which the disputed domain name resolved. Hence, no right in the disputed domain name comes from Respondent’s trademark registration.  

 

Furthermore, Respondent, instead of demonstrating bona fide use of the trademark in the jurisdiction where the trademark was registered, showed that it abandoned such use in 2002.

 

As a result, from his trademark registration this Panel cannot conclude that Respondent has rights or legitimate interest on the disputed domain name.

 

Nor do the current services provided by Respondent at the website to which the disputed domain name resolves establish any rights. Since 2010, Respondent found a new business model based on Complainant’s goodwill, operating a website with pay-per-click advertisements that take advantage of the trademark value of Complainant’s trademark. Such business model is far from being a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain or use of the disputed domain name in connection with a bona fide offering of goods or services.

 

Before any notice of the dispute, Respondent was already using the disputed domain name to divert consumers from Complainant and based on Complainant’s goodwill to obtain a commercial profit through Amazon and pay-per-click advertisement.

 

Respondent’s use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s renewal of a domain name identical to a Complainant’s trademark, and his use of it to display pay-per-click advertisements, is designed to capitalize on the goodwill in Complainant’s trademark BIG 5 by attracting internet users to its website where Respondent sells products for its own profit^[17]. 

 

Thus, it becomes clear that Respondent’s intention when renewing the disputed domain name was to obtain commercial gain by misleadingly diverting consumers or to tarnish the trademark, which cannot be validated as a bona fide offering of goods or services.

 

Finally, despite Respondent’s trademark registration, Respondent was never commonly known by the disputed domain name as he was not part of the consortium of five companies in Taiwan which developed the BIG 5 Chinese character encoding method.

 

Accordingly, i) Respondent failed to prove that before receiving the written notice of the Complaint he was using the disputed domain name in connection with a bona fide offering of goods; ii) Respondent failed to prove that he was commonly known by the disputed domain name; iii) Respondent fails to prove that he is making a legitimate noncommercial or fair use of the domain name.

 

Therefore, the second requirement of paragraph 4(a) of the Policy is met.

 

Registration and Use in Bad Faith

 

According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

 

(1)   Circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or

 

(2)   Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

 

(3)   Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(4)   By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his/her website or location or of a product or service on his/her website or location.

 

At the time of its most recent renewal, January 7, 2012, Respondent’s use of the disputed domain name had already changed from “computer software design and data processing, computer aided social networking” to offering Complainant’s goods and competitive goods for commercial profit. Thus, the disputed domain name at the time of its last renewal was already a prototypical cyber squatting unrelated to any of Respondent’s original business.

 

The change came with Respondent’s intentions of obtaining a commercial gain from the disputed domain name, which were circumstances unrelated to Respondent’s prior good faith use.

 

Respondent’s Paragraph 2 of the Policy representation and warranty given in January 7, 2012 was knowingly false since: i) Respondent intentionally changed his use of the disputed domain name; ii) The new use is unrelated to Respondent’s earlier business and trademark registration; iii) The new use is the display of pay-per-click links which are basically there to profit from consumers confusion between the disputed domain name and Complainant’s trademarks; iv) The new use occurred prior to the renewal held to be a registration for purposes of paragraph 4(a)(iii) and; v) There has been no legitimate use since renewal.

 

Furthermore, Respondent received two Cease and Desist Letters from Complainant (Exhibit 11 to the Complaint) and simply kept defending himself by citing a trademark registration he was no longer using.

 

Based upon the record in this proceeding, the Panel deems Respondent’s 2012 renewal of the disputed domain name to be the date on which to measure whether the disputed domain name was registered and used in bad faith for purposes of paragraph 4(a)(iii), and finds that the Respondent registered and used the disputed domain name in bad faith.

 

Complainant mentions that Respondent’s website contains sponsored links being a pay-per-click site, and the Panel accepts the uncontested evidence submitted by Complainant that Respondent has used the disputed domain name to host a page consisting of pay-per-click links to commercial websites related to several businesses. As in Compagnie Générale des Etablissements Michelin v. Above.com Domain Privacy / Direct Navigation Data Inc., this Panel believes that “pay-per-click advertising can be a valid Internet advertising model when it does not entail use of a domain name in bad faith, such as by displaying ads related to the generic or merely descriptive meaning of the domain name.”[18]  However, as with Compagnie Générale, “this Panel also believes that registering a domain name which comprises someone else’s well-known mark so as to make profit from diverted Internet users in the form of pay-per-click fees, is use in bad faith as per Policy 4(b)(iv).”[18]

 

The Panel further finds that Respondent’s use of the disputed domain name to redirect Internet users to a website that includes hyperlinks to Complainant’s competitors is not legitimate under paragraph 4(a)(ii). Hence, the Panel concludes that such use of the disputed domain name by Respondent constitutes an attempt to use Complainant’s trademark to attract Internet users to its website for commercial gain, which constitutes bad faith usage under paragraph 4(b)(iii) and 4(b)(iv) of the Policy.

 

Therefore, the three elements of the Policy 4(a) are satisfied in the present case in respect to Respondent’s registration and use of the disputed domain name.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the disputed domain name <big5.com> be TRANSFERRED from Respondent to Complainant.

Fernando Triana, Esq.

Chair of the Panel

 

David H. Bernstein, Esq.

Co-Panelist

 

 

Dated:  October 11, 2013

 

 

 

Dissent by Houston Putnam Lowry, Chartered Arbitrator, Co-Panelist:

 

The Panel is divided on this issue and I respectfully dissent from the other members of the Panel.

 

Policy ¶ 4(c)(ii) provides: “(ii) [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if [Respondent] ha[s] acquired no trademark or service mark rights.”  The negative pregnant is Respondent has adequately proven its rights if it has a valid trademark registration (inter alia).

 

Respondent registered this mark in Taiwan (Reg. No. 156,358 filed October 19, 2000; registered January 1, 2002) in international class 42 for “Computer software design and Database processing.” The disputed domain name was originally used for this purpose for a couple of years.  The trademark registration continues in force.  While Respondent is no longer making use of the disputed domain name for this purpose, I am loathe to find Respondent has entirely lost its rights in the mark (and therefore the domain name which it has held since March 19, 1998). 

 

Generally speaking, all a party has to do is show it has obtained a bona fide registered trademark to show it has rights (for example, a complainant under Policy ¶4(a)(i)).  This Panel believes the standard should be the same in this respect under Policy ¶ 4(a)(i) and ¶ 4(a)(ii).  Neither party has suggested Respondent did anything improper in obtaining Respondent’s trademark registration.  Might Complainant be able to petition to cancel Respondent’s mark because it has been abandoned?  Possibly, but such matters are beyond the scope of the UDRP.  Both parties have rights in their respective marks.  I would find Respondent has adequately proved it has rights to the disputed domain name Policy ¶4(a)(ii).  To hold otherwise would merely encourage complainants to start UDRP proceedings in an attempt to reverse domain name hijack domain names backed by stale trademarks. A similar result occurred regarding an unregistered mark in AST Sportswear, Inc. v. Steven R. Hyken Case No. D2001-1324 (March 26, 2002).

 

Policy ¶ 4(c)(i) provides: (i) before any notice to [Respondent] of the dispute, [Respondent’s] use of … the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.  In this case, Respondent is selling a variety of goods as under the Amazon Affiliate aStore program.  The goods are real.  Money really changes hands.  Goods are shipped and are generally as described.  Presumably customers are happy.

 

Does Respondent actually sell (or at least advertise) goods manufactured by Complainant?  Yes (which requires the Panel to consider how this might be different from a dynamic parking page, which panels uniformly do not consider a bona fide use).  The web site clearly seems to indicate the disputed domain name has a relationship to Amazon (and has the Amazon logo in the lower left of the landing page).  Are the goods counterfeit?  No, which means they were manufactured by Complainant or under its authority.  Complainant gets some minor indirect benefit from Respondent selling Complainant’s goods.  Does Respondent infringe on Complainant’s mark?  Maybe, but that is beyond the scope of the UDRP.  How long has this been going on?  Respondent claims since the beginning of 2010 and Complainant has not disputed this.  Respondent has not made any claims to be Complainant (and nothing on the web site suggests Respondent is the Complainant).  There has been no showing of confusion. Respondent has denied obtaining any banner “click-through” revenue (despite an unsupported allegation by Complainant).

 

My fellow Panelists make arguments for the Complainant which are extrinsic to the UDRP (such as how long it takes for trademark rights to lapse in the United States and Europe….but not Taiwan, which is the relevant jurisdiction) and the Complainant didn’t make.  I would not interpret Respondent’s submissions as an abandonment of its Taiwan trademark rights, even though they are not being used.  However finely we slice the law (and we are all very good lawyers), it is Complainant’s burden to prove this point and I remain unconvinced.

 

I would find the disputed domain name is being used to make a bona fide offering of goods.

Houston Putnam Lowry, Chartered Arbitrator,

Co-Panelist