DECISION

 

Boardriders IP Holdings LLC v. Anarna Cyd / Cyd Anarna / Trotter Don / Don Trotter / Warfield Barry / Barry Warfield / Rup Kaur / Kaur Rup / Kanishtha Vallicha / Vallicha Kanishtha

Claim Number: FA2407002105721

 

PARTIES

Complainant is Boardriders IP Holdings LLC ("Complainant"), represented by Bridgette Fitzpatrick of Authentic Brands Group LLC, USA. Respondents are Anarna Cyd / Cyd Anarna / Trotter Don / Don Trotter / Warfield Barry / Barry Warfield / Rup Kaur / Kaur Rup / Kanishtha Vallicha / Vallicha Kanishtha ("Respondents"), USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <roxy--ireland.com>, <roxy-espana.com>, <roxy-indonesia.com>, <roxy-uk.com>, <roxyclothingbrand.com>, <roxynetherlands.com>, <roxyperutienda.com> and <roxypolska.com> (the "disputed domain names"), registered with CNOBIN Information Technology Limited (the "Registrar").

 

PANEL

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

 

Lynda M. Braun as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on July 10, 2024; Forum received payment on July 10, 2024.

 

On July 10, 2024, the Registrar confirmed by e-mail to Forum that the <roxy--ireland.com>, <roxy-espana.com>, <roxy-indonesia.com>, <roxy-uk.com>, <roxyclothingbrand.com>, <roxynetherlands.com>, <roxyperutienda.com> and <roxypolska.com> disputed domain names are registered with CNOBIN Information Technology Limited and that Respondents are the current registrants of the respective names. The Registrar has verified that Respondents are bound by the CNOBIN Information Technology Limited registration agreement and have thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On July 11, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 31, 2024 by which Respondents could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondents' registration as technical, administrative, and billing contacts, and to postmaster@roxy--ireland.com, postmaster@roxy-espana.com, postmaster@roxy-indonesia.com, postmaster@roxy-uk.com, postmaster@roxyclothingbrand.com, postmaster@roxynetherlands.com, postmaster@roxyperutienda.com and postmaster@roxypolska.com. Also on July 11, 2024, the Written Notice of the Complaint, notifying Respondents of the e-mail addresses served and the deadline for a Response, was transmitted to Respondents via post and fax, to all entities and persons listed on Respondents' registration as technical, administrative and billing contacts.

 

Having received no formal response from Respondents, Forum transmitted to the parties a Notification of Respondent Default.  One Respondent sent several emails to Forum, stating that it never registered a domain name and did not understand why it was contacted for this dispute.

 

On August 1, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Lynda M. Braun as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the disputed domain names be transferred from Respondents to Complainant.

 

PRELIMINARY ISSUE: CONSOLIDATION OF MULTIPLE RESPONDENTS

Paragraph 3(c) of the Rules provides that a "complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder."  In addition, Paragraph 4(f) of the Policy provides that "[i]n the event of multiple disputes between you and a complainant, either you or the complainant may petition to consolidate the disputes before a single Administrative Panel."  This is allowed where it "promotes the shared interests of the parties in avoiding unnecessary duplication of time, effort and expense, reduces the potential for conflicting or inconsistent results arising from multiple proceedings, and generally furthers the fundamental objectives of the Policy."  UDRP Panels have reviewed a variety of factors in determining whether multiple domains are, in fact, of common ownership.  Such factors as similar naming conventions and similar website content may be considered to determine if the disputed domain names are owned by a single entity. See WIPO Case No. D2014-0474, Delta Dental Plans Association v. ICS INC., et al. (consolidation of 31 domains allowed where "[t]he Panel notes that each of the disputed domain names follows an identical naming convention").

 

In the present case there are a variety of commonalities and interrelations among the disputed domain names as described below. The disputed domain names use two of the same naming conventions: first, the use of the ROXY trademark joined by a hyphen to a geographical term (uk, ireland, espana, indonesia), followed by the generic Top-Level Domain ("gTLD") ".com"; and second, the use of the ROXY trademark immediately followed by a geographical term (netherlands, roxypolska), and in one case, immediately followed by a geographical term plus a descriptive term (perutienda, translated into English as peru store), and then followed by the ".com" gTLD. There is one additional domain name that uses the ROXY trademark followed by the terms "clothing brand" and then followed by the ".com" gTLD.  Moreover, the disputed domain names were registered within a short time of one another, on June 20, 2024, June 21, 2024, and June 28, 2024.

 

Further, the disputed domain names resolve to websites that are identical, except for the two in a different language. The resolving websites have identical layouts with identical clothing for sale, all using Complainant's heart design trademark, all registered with the same Registrar,  and all using privacy protect services to hide their identities.

 

Based on the foregoing, the Panel concludes that that Respondents are effectively controlled by the same person and/or entity or are alter-egos of the same person or entity, and therefore, are appropriate Respondents in this proceeding.  As a result, the Panel concludes that based on the circumstances iterated here, it would be equitable and procedurally efficient to permit consolidation of Respondents in this case.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is a world-renowned action sports and lifestyle company that designs, produces, and distributes apparel, footwear, and accessories with a focus on beach, street/skate and mountain inspired apparel under various brands. The Roxy brand is a global board riding brand that was founded in 1990 and for many years has been recognized as one of the world's leading manufacturers of products in this space. Since its founding, Complainant and its predecessors-in-interest have advertised, marketed, promoted, distributed, and sold products under the well-known and famous ROXY trademark. Complainant  owns more than 1100 trademarks covering a wide variety of goods and services and spends millions of dollars marketing its goods and services globally.

 

Complainant owns trademark registrations in the United States, through the United States Patent and Trademark Office ("USPTO") (e.g., ROXY, United States Trademark Registration No. 2,427,898, registered on February 13, 2001, in international class 25; and Heart (device), United States Trademark Registration No. 2,081,099, registered on July 22, 1997, in international class 25).  Complainant also owns registrations for ROXY trademarks in many other jurisdictions worldwide. The foregoing trademarks will hereinafter collectively be referred to as the "ROXY Mark".

 

Complainant owns the domain name <roxy.com>, which resolves to Complainant's official website at "www.roxy.com", that provides information about its services and products.

 

Complainant contends that the disputed domain names are confusingly similar to the ROXY Mark because they incorporate the ROXY Mark in its entirety, adding geographic terms, descriptive or generic terms, and then adding the ".com" gTLD.  Complainant also claims that Respondents have no legitimate interests in the disputed domain names since the disputed domain names are used to pass off as Complainant and create websites that feature counterfeit goods.  Finally, Complainant contends that Respondents registered and are using the disputed domain names in bad faith.

 

The disputed domain names were registered on June 20, 2024, June 21, 2024, and June 28, 2024 and resolve to websites with identical layouts and counterfeit goods.¹

 

B. Respondents

Respondents failed to submit a formal Response in this proceeding.  One Respondent, however, sent several emails to Forum, stating that he never had registered a domain name and had no knowledge of this dispute.

 

FINDINGS

The Panel finds that Complainant has registered trademark rights in the ROXY Mark as described above. The Panel also finds that the disputed domain names are confusingly similar to Complainant's ROXY Mark, that Respondents have no rights or legitimate interests in respect of the disputed domain names, and that the disputed domain names were registered and are being used in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 disputed 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 disputed domain name;  and

(3)       the disputed 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 representations pursuant to paragraphs 5(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint").

 

Identical and/or Confusingly Similar

The Panel finds that the disputed domain names are confusingly similar to the ROXY Mark as set forth below.

 

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant's trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, ("WIPO Overview 3.0"), section 1.7.

 

The Panel finds that Complainant has rights in the ROXY Mark per Policy paragraph 4(a)(i) through its registration of the trademark with the USPTO (e.g., ROXY, United States Trademark Registration No. 2,427,898, registered on February 13, 2001, in international class 25; and Heart (device), United States Trademark Registration No. 2,081,099, registered on July 22, 1997, in international class 25), as well as with other trademark offices worldwide.  Registration of a mark with multiple trademark agencies is sufficient to establish rights in a mark pursuant to Policy paragraph 4(a)(i). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) ("Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.").

 

The Panel further finds that Respondents' disputed domain names are confusingly similar to Complainant's ROXY Mark as they incorporate the ROXY Mark in its entirety, some are joined by hyphens to a geographic term, others are merely followed by geographic, descriptive and/or generic terms, and all are followed by the gTLD ".com.

 

Registration of a domain name that adds a term or terms to the entirety of a trademark, with or without a hyphen, does not distinguish the domain name from the mark per Policy paragraph 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where a disputed domain name contains a complainant's entire mark and differs only by the addition of a generic or descriptive term and generic Top-Level Domain).  Moreover, where the trademark is recognizable in the disputed domain names, the addition of a geographic and/or descriptive term does not prevent a finding of confusing similarity. WIPO Overview 3.0, section 1.8 ("where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element"). Moreover, it is well established that a disputed domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a hyphen. The presence or absence of punctuation marks such as hyphens cannot on their own avoid a finding of confusing similarity. See Six Continents Hotels, Inc. v. Helen Siew, WIPO Case No. D2004-0656.

 

The Panel therefore finds that the disputed domain names are confusingly similar to the ROXY Mark under Policy paragraph 4(a)(i) since the disputed domain names incorporate the ROXY Mark in its entirety followed by geographic and descriptive terms, and then followed by the gTLD "com".

 

Finally, gTLDs are irrelevant for purposes of a Policy paragraph 4(a)(i) analysis. Thus, the gTLDs in the disputed domain names are also insufficient to demonstrate confusing similarity of the disputed domain names. See Trip Network Inc. v. Alviera, FA 914943 (Forum March 27, 2007) (concluding that the addition of a gTLD to a domain name is irrelevant to a Policy paragraph 4(a)(i) analysis).  Thus, the Panel concludes that the disputed domain names are confusingly similar to Complainant's ROXY Mark under Policy paragraph 4(a)(i).

 

Accordingly, the Panel finds that Policy paragraph 4(a)(i) has been established by Complainant.

 

Rights or Legitimate Interests

The Panel finds that Respondents have no rights or legitimate interests in the disputed domain names. Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving that a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of "proving a negative", requiring information that is often primarily within the knowledge or control of the respondent.

 

Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum April 12, 2014) ("Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests"). In this case, Respondent did not carry its burden to come forward with evidence of its rights or legitimate interests in the disputed domain names as they did not submit a formal response to the Complaint, but given the facts of this case, the Panel finds that Respondents would have been hard-pressed to furnish availing arguments had they chosen to respond.

 

The Panel also finds that Respondents have no rights or legitimate interests in the disputed domain names as Respondents have not provided evidence nor proven that they are commonly known by the disputed domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondents to use the ROXY Mark. Moreover, Respondents have no relationship, affiliation, connection, endorsement or association with Complainant.

 

Moreover, Respondent failed to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Complainant provides evidence that demonstrates that the disputed domain names resolve to websites that impersonate Complainant and attempt to disrupt Complainant's business for commercial gain. Respondents have not been permitted by Complainant in any way to use the Roxy Mark or to apply for any domain names incorporating the ROXY Mark, nor has Complainant acquiesced in any way to such use or application of the ROXY Mark by Respondents. Additionally, there is no evidence of Respondents' fair use. Furthermore, there is no evidence that the Respondent is using or has demonstrable plans to use the ROXY Mark or the domain names incorporating the ROXY Mark in connection with a bona fide offering of goods.

 

On the contrary, Respondents were using the disputed domain names to pass off as or impersonate Complainant and commercially profit from the substantial value and goodwill that Complainant has built in the ROXY Mark.  Specifically, Respondents use Complainant's heart logo on its resolving websites, plus Respondents created identical websites featuring counterfeit goods on each of the resolving disputed domain names as shown in the screenshots that Respondents submit as an Annex to the Complaint.  Such unauthorized use of the ROXY Mark and logo is likely to mislead consumers into incorrectly believing that Complainant is somehow affiliated with Respondents or that Complainant endorses Respondents' commercial activities, while no such relationship exists.

 

Accordingly, the Panel finds that Policy paragraph 4(a)(ii) has been established by Complainant.

 

Registration and Use in Bad Faith

The Panel finds that, based on the record, the Complainant has demonstrated the existence of Respondent's bad faith registration and use pursuant to paragraph 4(b) of the Policy.

 

First, the use of a disputed domain name to intentionally attempt to attract Internet users to a respondent's website or online location by creating a likelihood of confusion or a false association with a complainant's mark as to the source, sponsorship, affiliation or endorsement of the registrant's website or online location demonstrates registration and use in bad faith.  See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006).

 

Second, the Panel finds that the registration of the disputed domain names that are confusingly similar to Complainant's ROXY Mark was done primarily to disrupt Complainant's business.  Such use constitutes bad faith registration and use under UDRP Policy paragraph 4(b)(iii).  See EthnicGrocer.com v. Latin Grocer.com, FA000300009438410 (Forum July 7, 2000) (registration of slight variation of Complainant's mark suggests that Respondent registered domain names primarily for the purpose of disrupting Complainant's business).

 

Third, Respondents are purporting to sell Complainant's products through their websites without authorization.  The use of a complainant's mark to sell counterfeit or otherwise unauthorized products is evidence of bad faith under Policy paragraph 4(b)(iii).  See CWC Direct LLC v. Ju Yu, FA1501001599464 (Forum Feb. 16, 2015) ("As Respondent is using the disputed domain name to sell counterfeit or unauthorized goods bearing the COLDWATERCREEK mark, the Panel finds evidence of Respondent's bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iii).").  Here, Complainant provides screenshot evidence of images and printouts of webpages from the resolving disputed domain names to support this assertion.  Respondents' purpose in operating the disputed domain names' resolving websites is to mislead consumers and create the false impression that the websites are part of Complainant's business.

 

Finally, the Panel finds that Respondents registered and used the disputed domain names in bad faith because Respondents registered the disputed domain names with actual knowledge of Complainant's rights in the ROXY Mark. In this case, it strains credulity to think that Respondents did not have actual knowledge of Complainant's ROXY Mark as the disputed domain names chosen by Respondents all incorporate the ROXY Mark and resolve to websites that impersonate Complainant. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (finding actual knowledge due to the domain name chosen and the use made of it); Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware" of the complainant's mark at the time of registration). The fame of Complainant's ROXY Mark combined with Respondents' addition of the geographic and descriptive terms, as well as the content of their resolving websites, demonstrates that Respondents intentionally registered and used the disputed domain names with full knowledge of the ROXY Mark and in bad faith.

 

Accordingly, the Panel finds that Policy paragraph 4(a)(iii) has been established by Complainant.

 

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 <roxy--ireland.com>, <roxy-espana.com>, <roxy-indonesia.com>, <roxy-uk.com>, <roxyclothingbrand.com>, <roxynetherlands.com>, <roxyperutienda.com> and <roxypolska.com> disputed domain names be TRANSFERRED from Respondents to Complainant.

 

 

 

 

Lynda M. Braun, Panelist

Dated: August 14, 2024