Billabong International Limited, GSM (Operations) Pty Ltd, GSM (Trademarks) Pty Ltd v. kael
Claim Number: FA1206001448317
Complainant is Billabong International Limited, GSM (Operations) Pty Ltd, GSM (Trademarks) Pty Ltd (“Complainant”), represented by Paul D. McGrady of Winston & Strawn LLP, Illinois, USA. Respondent is kael (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <billabongaustralia.org>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (R27-LROR).
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically June 11, 2012; the National Arbitration Forum received payment June 14, 2012.
On June 14, 2012, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (R27-LROR) confirmed by e-mail to the National Arbitration Forum that the <billabongaustralia.org> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (R27-LROR) and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (R27-LROR) verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (R27-LROR) registration agreement and 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 14, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 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.org. Also on June 14, 2012, 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, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 11, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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, 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 makes the following allegations in this proceeding:
Complainants contend that (Complainant, GSM (Trademarks) Pty Ltd, and Complainant, GSM (Operations) Pty Ltd, are subsidiaries of Complainant, Billabong International Limited.
Complainants own rights in its BILLABONG mark.
Complainants use the mark in providing apparel and sportswear under the BILLABONG mark.
Complainants own trademark registrations for the BILLABONG mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,277,128 registered May 8, 1984) and IP Australia (“IPA”) (Reg. No. 1,040,107 registered February 3, 2005).
Respondent registered the <billabongaustralia.org> domain name April 6, 2012.
The <billabongaustralia.org> domain name is confusingly similar to Complainants’ BILLABONG mark.
The disputed domain name combines Complainants’ BILLABONG mark with the geographic term “australia” and the generic top-level domain (“gTLD”) “.org.”
Respondent is not commonly known by the <billabongaustralia.org> domain name.
Respondent never used any trademark or service mark similar to the <billabongaustralia.org> domain name.
Respondent is not licensed, permitted, or authorized to use Complainants’ BILLABONG mark.
Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <billabongaustralia.org> domain name.
Respondent uses the <billabongaustralia.org> domain name to resolve to a website that sells Complainants’ apparel and sportswear.
Most likely the products on the resolving website are counterfeit versions of Complainants’ products.
Respondent is a serial cybersquatter, which is evidence of a pattern of Respondent’s bad faith registration and use.
Respondent owns multiple domain names that contain the marks of third parties.
Respondent registered and uses the <billabongaustralia.org> domain name in bad faith under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv).
Respondent uses the disputed domain name to sell Complainants’ products or counterfeit versions of Complainants’ products.
Respondent also sells the products of Complainants’ competitors.
The resolving website uses Complainants’ images, which creates the impression that Complainant is associated with the disputed domain name.
Respondent had actual and constructive knowledge of Complainants’ rights in the BILLABONG mark because of Complainants’ trademark registrations.
Respondent failed to submit a Response.
B. Respondent failed to submit a Response in this proceeding.
Complainant established that it has rights in the mark contained within the disputed domain name.
Respondent has no rights to or legitimate interests in the disputed domain name.
Complainant established that the disputed domain name is confusingly similar to Complainant’s protected mark.
Complainant established that Respondent registered and used the disputed domain name 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 Complainant to 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.
Given 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(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel 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 the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the 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.”).
Preliminary Issue: Multiple Complainants
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) provides: “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) permits: “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Three possible Complainants in this matter include: GSM (Trademarks) Pty Ltd, GSM (Operations) Pty Ltd, and Billabong International Limited. Complainants allege that Complainant, GSM (Trademarks) Pty Ltd, and Complainant, GSM (Operations) Pty Ltd, are subsidiaries of Complainant, Billabong International Limited.
The Forum’s Supplemental Rule 1(e) allows multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Organizing Committee for the 2010 Olympic and Paralymic Games and International Olympic Committee v. Hardeep Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Investments, Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in American Family Health Services Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The Panel finds here that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and the Panel elects to treat the three as a single entity in this proceeding. Throughout the below memo, the Complainants will be collectively referred to as “Complainant.”
According to Complainant, Complainant owns rights in its BILLABONG mark. Complainant asserts that it provides apparel and sportswear under the BILLABONG mark. Complainant argues that it owns trademark registrations for its BILLABONG mark with the USPTO (e.g., Reg. No. 1,277,128 registered May 8, 1984) and IPA (Reg. No. 1,040,107 registered February 3, 2005). See Complainant’s Exhibit C. Based on this evidence, the Panel finds that Complainant owns rights in its BILLABONG mark under Policy ¶ 4(a)(i). See Retail Royalty Co. v. DUANZUOCHUN, FA 1428749 (Nat. Arb. Forum Mar. 26, 2012) (holding that the complainant’s trademark registrations with both the USPTO and IPA established the complainant’s rights in the mark under Policy ¶ 4(a)(i)).
Complainant contends that the <billabongaustralia.org> domain name is confusingly similar to Complainant’s BILLABONG mark. Complainant alleges that the disputed domain name combines Complainant’s BILLABONG mark with the geographic term “australia” and the gTLD “.org.” The Panel finds that the additions of a geographic term and a gTLD fail to sufficiently distinguish the disputed domain name from Complainant’s mark. See Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel finds that Respondent’s <billabongaustralia.org> domain name is confusingly similar to Complainant’s BILLABONG mark for the purpose of Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent 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 alleges that Respondent is not commonly known by the <billabongaustralia.org> domain name. Complainant argues that Respondent never used any trademark or service mark similar to the <billabongaustralia.org> domain name. Complainant claims that Respondent is not licensed, permitted, or authorized to use Complainant’s BILLABONG mark. Complainant provides the WHOIS information for the <billabongaustralia.org> domain name, which lists “kael” as the registrant of the domain name. Given this evidence in the record, the Panel finds that Respondent is not commonly known by the <billabongaustralia.org> domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. 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 disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant claims that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <billabongaustralia.org> domain name. Complainant asserts that Respondent uses the <billabongaustralia.org> domain name to resolve to a website that sells Complainant’s apparel and sportswear. Complainant contends that the products are most likely counterfeit versions of Complainant’s products. See Complainant’s Exhibit D. The Panel finds that Respondent’s offering of Complainant’s products or counterfeit products is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <billabongaustralia.org> domain name. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use); see also Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007) (finding no rights and legitimate interests when the respondent sold counterfeit versions of the complainant’s products in competition with the complainant’s business).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant alleges that Respondent registered and used the disputed domain name in bad faith. Complainant alleges that Respondent is a serial cybersquatter, which Complainant claims is evidence of a pattern of Respondent’s bad faith registration and use. Complainant contends that Respondent owns multiple domain names that contain the marks of third parties. See Complainant’s Exhibit E. Complainant argues that these third-party domain names support findings that Respondent registered and uses the <billabongaustralia.org> domain name in bad faith under Policy ¶ 4(b)(ii). The Panel notes that some of these third-party domain names may not have not been evaluated under the UDRP, and the Panel declines to find that they established evidence of Respondent’s bad faith registration and use of the <billabongaustralia.org> domain name under Policy ¶ 4(b)(ii).
However, Complainant contends that Respondent’s registration and use of the <billabongaustralia.org> domain name disrupts Complainant’s business. As noted, Complainant argues that Respondent uses the disputed domain name to sell Complainant’s products, or counterfeit versions of Complainant’s products, and the products of Complainant’s competitors. Based on this evidence, the Panel finds that Respondent disrupts Complainant’s business, which the Panel finds is evidence that Respondent registered and uses the <billabongaustralia.org> domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008) (concluding that the complainant’s business is disrupted by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products).
Complainant further alleges that Respondent registered and uses the <billabongaustralia.org> domain name in bad faith under Policy ¶ 4(b)(iv). Complainant contends that Respondent commercially benefits from the sale of products found on the resolving website. Complainant also claims that the resolving website uses Complainant’s images, which Complainant asserts creates the impression that Complainant is associated with the disputed domain name. The Panel makes an inference that by such use Respondent is attempting to commercially gain from Internet user confusion as to Complainant’s affiliation with the disputed domain name, and the Panel finds that Respondent registered and uses the <billabongaustralia.org> domain name in bad faith under Policy ¶ 4(b)(iv). See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products); see also H-D Mich., LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion).
Finally, Complainant asserts that Respondent had actual and constructive knowledge of Complainant’s rights in the BILLABONG mark because of Complainant’s trademark registrations. The Panel notes that the sale of Complainant’s products, or counterfeit products, indicates that Respondent had knowledge of Complainant’s rights in the BILLABONG mark. The Panel disregards Complainant's arguments concerning constructive knowledge as panels have held that constructive knowledge is not evidence to support findings of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). The Panel agrees with Complainant regarding Respondent's actual knowledge, however, and concludes that Respondent registered the <billabongaustralia.org> domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <billabongaustralia.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: July 24, 2012.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page