DECISION

 

Boardriders IP Holdings LLC v. Zhenhe Qiu

Claim Number: FA2412002128149

PARTIES

Complainant is Boardriders IP Holdings LLC ("Complainant"), represented by Bridgette Fitzpatrick of Authentic Brands Group LLC, New York, USA. Respondent is Zhenhe Qiu ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <roxy-france.com>, registered with Cosmotown, Inc.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on December 5, 2024; Forum received payment on December 5, 2024.

 

On December 7, 2024, Cosmotown, Inc. confirmed by e-mail to Forum that the <roxy-france.com> domain name is registered with Cosmotown, Inc. and that Respondent is the current registrant of the name. Cosmotown, Inc. has verified that Respondent is bound by the Cosmotown, 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 December 10, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 30, 2024 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@roxy-france.com. Also on December 10, 2024, 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.

 

Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On December 31, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco 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 domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends in part as follows:

 

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 the Quiksilver, Roxy, RVCA, Element and Billabong brands, among others. The ROXY brand is supported by a vast portfolio of intellectual property rights, including a global portfolio of more than 1,100 trademarks covering a wide variety of goods and services and a large portfolio of copyrights for images used in association with the advertising, marketing, and sale of Roxy-branded products globally.

 

Respondent's at-issue domain name is confusingly similar to a trademark in which Complainant has rights as Complainant has registered trademarks for ROXY with multiple trademark authorities worldwide including France and the at-issue domain name is recognizable within Respondent's domain name only adding the geographic term "france" and the ".com" top-level.

 

Respondent lacks rights and legitimate interests in respect of the at-issue domain name. Respondent has not been licensed, contracted, or otherwise permitted by Complainant in any way to use the ROXY trademark or to apply for any domain names incorporating the ROXY trademark; nor has Complainant acquiesced in any way to such use or application of the ROXY trademark by Respondent. Additionally, there is no evidence of fair use and there is no evidence that Respondent is using or plans to use the ROXY trademark or the domain names incorporating the ROXY trademark for a bona fide offering of goods or services that doesn't infringe Complainant's intellectual property rights. Instead, Respondent has been actively using the ROXY trademark in the at-issue domain name to promote its website for illegitimate commercial gains by operating a counterfeit website.

 

Respondent registered and used the at-issue domain name in bad faith. Respondent was aware of Complainant's trademark at the time it registered <roxy-france.com> and several years separate Complainant's registration of ROXY and Respondent's registration of the at-issue domain name. Respondent is trying to pass off the domain name and its <roxy-france.com> website as being sponsored by, affiliated with, or endorsed by Complainant to sell competing and unauthorized goods. The <roxy-france.com> website features the ROXY trademark as well as images of products bearing the ROXY trademark without any authorization to do so. Respondent has no reason to use the ROXY trademark in the at-issue domain name or on its associated website other than to attract internet users to Respondent's website for commercial gain, especially since Complainant's official website is <roxy.com>. Thus, Respondent is intentionally trying to create a likelihood of confusion between Complainant's trademark and Respondent's at-issue domain name. Finally, Respondent used a privacy shield to mask its identity, which makes which is a further indication of bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has rights in the ROXY trademark.

 

Respondent is not affiliated with Complainant and had not been authorized to use Complainant's trademark in any capacity.

 

Respondent registered the at‑issue domain names after Complainant acquired rights in ROXY.

 

Respondent uses the at-issue domain name to pass off as Complainant or an authorized retailer thereof and addresses a website that advertises and offers ROXY branded and related products for sale without Complainant's authorization.

 

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 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.

 

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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.

 

Complainant shows that it has multiple trademark registrations worldwide for its ROXY trademark. Any of such registrations is sufficient to demonstrate Complainant's rights in in a mark under Policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant's registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)).

 

Respondent's <roxy-france.com> domain name contains Complainant's ROXY trademark, followed by an irrelevant hyphen and the geographical term "france," with all followed by the ".com" top-level domain name. The differences between Complainant's trademark and Respondent's domain name are insufficient to distinguish one from the other for the purposes of the Policy. Therefore, the Panel finds that Respondent's <roxy-france.com> domain name is confusingly similar to Complainant's ROXY trademark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)).

 

Rights or Legitimate Interests

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. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant's prima facie showing acts conclusively.

 

Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant's trademark in any capacity and as discussed below there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name. See Charter Communications Holding Company, LLC v. Taha Shaikh / Tskdesigners, FA 1814475 (Forum Nov. 25, 2018) (finding no rights or legitimate interests in <spectrumfeature.com> because complainant never gave respondent permission to use the mark in any manner and "Panels may use these assertions as evidence that no rights or legitimate interests exist in a disputed domain name.").

 

The WHOIS information for <roxy-france.com> indicates that "Zhenhe Qiu" is the domain name's registrant and there is nothing in the record that tends to prove that Respondent is otherwise known by the <roxy-france.com> domain name. As such, the Panel finds that Respondent is not commonly known by the at-issue domain name under Policy ¶ 4(c)(iii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).

 

Respondent uses the confusingly similar <roxy-france.com> domain name to pass itself off as being affiliated with Complainant and to direct internet users to a website that advertises and offers products for sale that are protected by Complainant's ROXY trademark. Respondent deceives internet users into believing that such products are authentic and authorized by Complainant by creating the impression that Respondent's <roxy-france.com> website is affiliated with Complainant when there is no such affiliation. Respondent's use of the at-issue domain name in this manner is neither indicative of a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor of a non-commercial or fair use under Policy ¶ 4(c)(iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant's mark and various photographs related to the complainant's business);see also, Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting internet users searching for the complainant to its own website and likely profiting).

 

Given the forgoing, Respondent lacks rights and lacks legitimate interests in <roxy-france.com>.

 

Registration and Use in Bad Faith

As discussed below without being exhaustive, bad faith circumstances are present which lead the Panel to conclude that Respondent acted in bad faith pursuant to the Policy.

 

Respondent's <roxy-france.com> domain name addresses Respondent's <roxy-france.com> website. Respondent's website appears as if it may be an authorized seller of Complainant's merchandize when such is not the case. Respondent's use of <roxy-france.com> is disruptive to Complainant's business and allows Respondent to capitalize on the confusion it created between its <roxy-france.com> domain name and Complainant's ROXY trademark. Respondent's use of the <roxy-france.com> domain name and its associated website thus demonstrates Respondent's bad faith registration and use of <roxy-france.com> under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where "Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing internet users to a website that mimics Complainant's own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant."); see also Russell & Bromley Limited v. Li Wei Wei, FA 1752021 (Forum Nov. 17, 2017) (finding the respondent registered and used the at-issue domain name in bad faith because it used the name to pass off as the complainant and offer for sale competitive, counterfeit goods).

 

Moreover, Respondent had actual knowledge of Complainant's rights in the ROXY mark when Respondent registered <roxy-france.com> as a domain name. Respondent's prior knowledge is evident given the ROXY mark's notoriety and given Respondent's use of the <roxy-france.com> domain name to pass itself off as being affiliated with Complainant and a website offering ROXY branded merchandise. See Lemon Inc. v. Sumer Singh, FA 2110519 (Forum September 5, 2024 ("registration of a disputed domain name with actual knowledge of another's trademark rights is sufficient to establish bad faith, and can be shown by the notoriety of the mark and the use the Respondent makes of the disputed domain name"); see also, Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering 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 <roxy-france.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Paul M. DeCicco, Panelist

Dated: January 2, 2025