Billabong International Ltd v. Domain Broker
Claim Number: FA1406001563039
Complainant: Billabong International Ltd of Burleigh Heads, QLD, Australia.
Complainant Representative: CSC Digital Brand Services of Wilmington, Delaware, United States of America.
Respondent: Domain Broker of New York, New York, US.
Respondent Representative:
REGISTRIES and REGISTRARS
Registries: CLOTHING Registry
Registrars: PDR 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 known conflict in serving as Examiner in this proceeding.
Petter Rindforth, as Examiner.
Complainant submitted: June 5, 2014
Commencement: June 5, 2014
Default Date: June 20, 2014
Having reviewed the communications records, the Examiner finds that the National Arbitration Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Findings of Fact:
The Complainant is the owner of the trademarks BILLABONG and RVCA, directly as well as through its fully owned subsidiary companies, and registered in a number of countries/regions, such as:
U.S. Trademark registration No. 1277128 BILLABONG (word), registered on May 8, 1984, duly renewed and in force, covering goods in Intl Class 25.
U.S. Trademark registration No. 3020861 RVCA (word), registered on November 29, 2005, covering goods in Intl Class 25.
The Complainant’s evidence of use includes the websites www.billabong.com and www.rvca.com.
The Complainant contends that the Respondent’s domain names <billabong.clothing> and <rvca.clothing> are identical or confusingly similar to the BILLABONG and RVCA trademarks, were registered and are being used in bad faith by the Respondent who has no rights or legitimate interests in the domain names.
The Respondent has not filed a Response.
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
Legal Findings and Conclusion:
IDENTICAL OR CONFUSINGLY SIMILAR
The Complainant met the standard sets out in 1.2.6.1. of the URS Procedure since the Complainant has proved its right to the valid trademark registrations BILLABONG and RVCA . Further, the Complainant has proved that both trademarks are in current use.
The relevant part of the disputed domain names are <billabong> and <rvca>, as the added top-level domain – being a required element of every domain name – is generally irrelevant when assessing whether or not a mark is identical or confusingly similar and in this case does nothing to distinguish the disputed domain name from the Complainant’s trademark. The meaning of the connected top level domain will however be further discussed below in relation to 1.2.6.3 of the UDR.
The Examiner concludes that the disputed domain name <billabong.clothing> is identical to the Complainant's trademark BILLABONG.
The Examiner further concludes that the disputed domain name <rvca.clothing> is identical to the Complainant's trademark RVCA.
NO RIGHTS OR LEGITIMATE INTERESTS
The Respondent does not have any rights in <billabong.clothing> or <rvca.clothing>, as the Complainant has not authorized the Respondent to register any domain names containing Complainants registered and used trademarks BILLABONG and/or RVCA.
Both disputed domain names are used on websites with the text “Interested in this domain?”, thereby indicating that the disputed domain names are primarily registered and used for the purpose of making money to sell them back to the trademark owner / Complainant.
To register another’s well-known trademarks as domain names, with the only purpose to earn money from selling them back to the trademark owner, cannot be considered as legitimate interest.
Accordingly, the Examiner finds that the Complainant has established that the Respondent has no rights or legitimate interests in <billabong.clothing> or <rvca.clothing>.
BAD FAITH REGISTRATION AND USE
The Respondent registered the disputed domain names despite receiving notification that both domain names match trademarks in the Trademark Clearinghouse.
The Respondent registered both disputed domain names using a top level domain that clearly relates to the specific goods that Complainant’s trademarks are registered and used for, namely “clothing”, thereby further and clear indicating that the Respondent had full knowledge of the Complainant’s prior rights.
Both disputed domain names were pointed to a web site with the message: "Interested in this domain? Contact us”. Upon receipt of a cease and desist letter from the Complainant, the Respondent demanded 3,500 USD to transfer them to the Complainant, adding that there were other possible buyers and the Complainant had to act quickly in order to make a deal.
As the Respondent has registered the disputed domain names with clear knowledge of the Complainant’s prior trademark rights, with the specific goal to sell them back to the Complainant, this is clearly both bad faith registration and use.
After reviewing the Complainant’s submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration.
<billabong.clothing>
<rvca.clothing>
Petter Rindforth, Examiner
Dated: June 25, 2014
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