Billabong International Limited, GSM (Operations) Pty Ltd, GSM (Trademarks) Pty Ltd v. jiang xue
Claim Number: FA1206001448029
Complainant is Billabong International Limited, GSM (Operations) Pty Ltd, GSM (Trademarks) Pty Ltd (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is jiang xue (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <billabongaustralia.com>, registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on June 8, 2012; the National Arbitration Forum received payment on June 11, 2012.
On Jun 13, 2012, DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLIC-DOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <billabongaustralia.com> domain name is registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name. DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM 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 June 13, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 3, 2012 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@billabongaustralia.com. Also on June 13, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respond-ent via post and fax, to all entities and persons listed on Respondent’s registra-tion as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 10, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant sells active sports-related apparel and sportswear under the BILLABONG trademark.
Complainant owns a registration for the BILLABONG trademark, on file with China’s State Administration for Industry and Commerce (“SAIC”) (Reg. No. 558,411, registered July 10, 1991).
Respondent registered the disputed <billabongaustralia.com> domain name on March 12, 2012.
The disputed domain name is confusingly similar to Complainant’s BILLABONG trademark.
Respondent has not been commonly known by the disputed domain name.
Complainant has not granted to Respondent any license, permission or authoriz-ation by which it could own or use any domain name which is confusingly similar to the BILLABONG mark.
Respondent has neither any rights to nor any legitimate interests in the contested domain name.
The <billabongaustralia.com> domain name resolves to a website that sells what purport to be Nike-brand products, but which are likely counterfeit knockoffs.
The products sold at Respondent’s website compete with those Complainant sells under its BILLABONG mark.
Respondent knew of Complainant’s rights in the BILLABONG mark at the time it registered the disputed domain name.
Respondent both registered and uses the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed represent-ations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in the BILLABONG trademark under Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the SAIC. See, for example, Norgren, Inc. v. sh ying zhe, FA 1318448 (Nat. Arb. Forum June 2, 2010) (holding that a complainant’s trademark registration with China’s State Intellectual Property Office was sufficient to establish rights in the mark under Policy ¶ 4(a)(i)).
Turning then to the central question under Policy ¶ 4(a)(i), Respondent’s con-tested <billabongaustralia.com> domain name is confusingly similar to Complain-ant’s long-standing BILLABONG trademark within the meaning of the Policy. The disputed domain name includes Complainant’s entire BILLABONG mark, adding only the geographic term “australia” and the generic top-level domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, are inadequate to distinguish the domain from the mark under Policy ¶ 4(a)(i). See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004):
[I]t is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.
See also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny,
that Respondent has not been commonly known by the <billabongaustralia.com> domain name, and that Complainant has not granted to Respondent any license, permission or authorization by which it could own or use a domain name which is confusingly similar to the BILLABONG mark. Moreover, the pertinent WHOIS information identifies the contested domain name registrant only as “jiang xue,” which does not resemble the domain name. On this record, we conclude that Respondent is not commonly known by the disputed domain name for under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed do-main names where the relevant WHOIS information and other evidence in the record gave no indication that that respondent was commonly known by the domain names, and where a complainant had not authorized that respondent to register a domain name containing its mark).
We next observe that Complainant asserts, without objection from Respondent, that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii), in that the disputed domain name resolves to a website that sells what purport to be Nike-brand products, but which are likely counterfeit knockoffs, and that the products sold at Respondent’s web-site compete with those Complainant sells under its BILLABONG mark. It is evident from the record that Respondent attempts to profit from this use of the contested domain name.
We therefore concur in Complainant’s contention that Respondent’s use of the disputed domain name does not constitute either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003):
Respondent’s appropriation of [Complainant’s] … mark to market products that compete with Complainant’s goods does not con-stitute a bona fide offering of goods and services.”).
See also eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that a respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name); finally see Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007):
Because respondent in this case is also attempting to pass itself off as complainant, presumably for financial gain, the Panel finds the respondent is not using the … domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s use of the <billabongaustralia.com> domain name to operate a website that sells products in competition with Complainant’s business, as al-leged in the Complaint, disrupts Complainant’s business. This is evidence that Respondent’s registration and use of the domain name is in bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005):
Respondent is appropriating Complainant’s mark to divert Com-plainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
Respondent’s registration and use of the <billabongaustralia.com> domain name also exhibits bad faith attraction of Internet users for Respondent’s commercial gain under Policy ¶ 4(b)(iv) by creating confusion among users as to the possi-bility of Complainant’s affiliation with the domain name and its resolving website. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that a respondent’s use of the <saflock.com> domain name to offer goods competing with a complainant’s business illustrates bad faith regis-tration and use of the domain name under Policy ¶ 4(b)(iv)).
We are also persuaded from the record that Respondent knew of Complainant's rights in the BILLABONG trademark when it registered the disputed domain name. This is evidence of bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Am-sterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (hold-ing that a respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii), concluding that that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel therefore finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <billabongaustralia.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 23, 2012
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