Panel uses 2012 renewal date as basis for transferring domain name.
A National Arbitration Forum panel has ordered the domain name Big5.com be transferred 15 years after it was registered, basing UDRP principles on the last date the domain name was renewed.
The respondent in this case, Roy Fang, registered the domain name shortly after the complainant, Big 5 Corp., registered its inferior big5sportinggoods.com domain name.
Fang actually got trademark rights to Big5.com with the Taiwan Intellectual Property Office. He said he registered the domain based on Big5 character encoding system.
Many years later, Fang started using the domain name to sell sporting goods through an Amazon affiliate store. The majority of the panel also interpreted his response to suggest he abandoned the trademark.
It’s a case where the original registration may have been in good faith, and the respondent certainly had bona fide rights to the term, but then later used the domain in bad faith.
The majority of the panel – Fernando Triana, Esq and David H. Bernstein – ruled that the appropriate date to determine if the respondent had rights in the name and registered it in good faith was the date of the last renewal instead of the 1998 registration date:
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.
Since the majority also viewed that the trademark rights were abandoned, it ordered the domain transferred.
Panelist Houston Putnam Lowry dissented. In his dissent, he said the other two panelists infer from Fang’s response that he abandoned his Taiwanese trademark, but he doesn’t believe this to be the case:
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 suspect many other panels would find laches in this case.