Billabong-clothes.com, No-billabong.com, Quiksilver-hu.com

The timeline behind billabong-clothes.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

How each disputed name was decided in this proceeding.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Boardriders IP Holdings LLC v. Zhenhe Qiu / zheng zhou Claim Number: FA2412002128151 PARTIES Complainant is Boardriders IP Holdings LLC ("Complainant"), represented by Bridgette Fitzpatrick of Authentic Brands Group LLC, New York, USA. Respondent is Zhenhe Qiu / zheng zhou ("Respondent"), China. REGISTRAR AND DISPUTED DOMAIN NAMES The domain names listed in the complaint are <billabong-clothes.com>, <no-billabong.com> and <quiksilver-hu.com>, registered with Cosmotown, Inc. For the reasons given below, the Panel finds that the only relevant domain names for this case are <billabong-clothes.com> and <no-billabong.com>. 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. Richard Hill 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 <billabong-clothes.com>, <no-billabong.com> and <quiksilver-hu.com> domain names are registered with Cosmotown, Inc. and that Respondent is the current registrant of the names. 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 16, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 6, 2025 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@billabong-clothes.com, postmaster@no-billabong.com and postmaster@quiksilver-hu.com. Also on December 16, 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 January 7, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill 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 names be transferred from Respondent to Complainant. PRELIMINARY ISSUE: MULTIPLE RESPONDENTS In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. In support of this allegation it states: a) The domain names are registered with Cosmotown, Inc.; b) The domain names were registered in consecutive months; c) According to WhoIs records, the registrant contact lists the state as "ca" and the country as "US"; d) According to WhoIs records the IP address for the domain names starts with "104.21."; e) According to whoishostingthis.com, the hosting provider for the domain names is Cloudflare; and f) Both domain names have similar website layouts and content. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (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." The Panel finds that allegations (a), (b), (d), and (e) above do not necessarily indicate that the domain names are under common control. Allegation (c) is not supported by the WHOIS information, according to which the addresses for the disputed domain names are in China. The Panel does not agree with allegation (f): the evidence presented by Complainant indicates that the resolving website for <quiksilver-hu.com> is rather different from the resolving websites for the other two domain names: in particular, the website for <quiksilver-hu.com> is in a different language than the websites for the other two domain names. Thus the Panel finds that Complainant has not presented sufficient evidence to find that all three disputed domain names were registered by the same person or entity. Under Forum's Supplemental Rule 4(c), the Panel must determine which domain names are commonly owned and elect which Respondent to proceed against, as a UDRP decision can proceed against only one Respondent. The Panel is then required to dismiss the Complaint in relation to the domain names not commonly owned by the chosen Respondent. Accordingly, the Panel will rule only on the <billabong-clothes.com> and <no-billabong.com> domain names, which are registered by the same registrant, and it will dismiss, without prejudice, the complaint regarding the <quiksilver-hu.com> domain name. See Brian Renner v. Contactprivacy.com, FA 1335211 (Forum Aug. 26, 2010); see also Amazon Technologies, Inc. v. M M / shanwang chen / feifei lin / HUA ZHANG / L H / Eddie Nash / Heather Brooker, FA 1973471 (Forum Dec. 17, 2021). PARTIES' CONTENTIONS A. Complainant Complainant states that it 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 BILLABONG brand is a global surf brand that was founded in 1973 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 BILLABONG trademark. The BILLABONG brand is supported by a vast portfolio of intellectual property rights, including a global portfolio of more than 700 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 BILLABONG-branded products globally. Complainant asserts rights in the BILLABONG mark through its registration in Australia in 1984. The mark is registered elsewhere around the world. Complainant alleges that the disputed domain names are confusingly similar to its BILLABONG mark, as they incorporates the mark in its entirety, merely adding a hyphen, the generic/descriptive term "clothes" or the geographic term "no" (which stands for "Norway"), and the ".com" generic top-level domain ("gTLD"). According to Complainant, Respondent has no rights or legitimate interests in the disputed domain names. Complainant has not authorized or licensed Respondent to use its mark, nor is Respondent commonly known by the disputed domain names. Further, Respondent is not using the disputed domain names in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use as the resolving websites offer for sale unauthorized or counterfeit versions of Complainant's goods. Further, says Complainant, Respondent registered and uses the disputed domain names in bad faith. Respondent attempts to attract users for commercial gain by selling unauthorized or counterfeit versions of Complainant's goods. Respondent had constructive and/or actual notice of Complainant's rights in the BILLABONG mark, evidenced by the fame and notoriety of the mark and its use on the resolving websites. Respondent used a privacy service. B. Respondent Respondent failed to submit a Response in this proceeding. FINDINGS Complainant has registered trademarks for the mark BILLABONG and uses it to design and market surf products. The mark was registered in 1984. Complainant has not licensed or otherwise authorized Respondent to use its mark. The disputed domain names were registered in 2024. The resolving websites offer for sale unauthorized or counterfeit versions of Complainant's products; they display images of Complainant's products. 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 disputed domain names incorporate Complainant's BILLABONG mark in its entirety, merely adding a hyphen, the generic/descriptive term "clothes" or the geographic term "no" (which stands for "Norway"), and the ".com" generic top-level domain ("gTLD"). Under Policy ¶ 4(a)(i), adding a gTLD and/or geographic terms and/or descriptive or generic terms, and hyphens is generally insufficient in differentiating a disputed domain name from the mark it incorporates. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element."); see also Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where "[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term 'outlet' to Complainant's registered SKECHERS mark, and appends the '.com' top-level domain."); see also Home Depot Product Authority, LLC v. Angelo Kioussis, 1784554 (Forum June 4, 2018) ("The domain name contains the mark in its entirety, with only the addition of the generic letters 'sb' and the digits '2018,' plus the generic Top Level Domain ("gTLD") '.com.' These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy."). Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant's mark under Policy ¶ 4(a)(i). Rights or Legitimate Interests Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent is not commonly known by the disputed domain names: the Panel may reference WHOIS information to determine whether a respondent is commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent's use of the same). Here, the WHOIS information shows that the registrant is known as "Zhenhe Qiu". Therefore the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). The resolving websites sell unauthorized or counterfeit versions of Complainant's goods. This is not a bona fide offering of goods and services or legitimate noncommercial or fair use under the Policy. See Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) ("Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant's WATTS brand and displays counterfeit versions of Complainant's products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name."); see also Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant's MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization). Thus the Panel finds that Respondent fails to use the disputed domain names to make a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names. Registration and Use in Bad Faith Respondent (who did not reply to Complainant's contentions) has not presented any plausible explanation for its use of Complainant's mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent's failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names. Indeed, as already noted, the resolving websites offers for sale unauthorized or counterfeit versions of Complainant's products. This is indicative of bad faith registration and use per Policy ¶ 4(b)(iv). See Crocs, Inc. v. jing dian, Case No. FA 1587214 (Forum Dec. 12, 2014) (finding bad faith where the respondent used the disputed domain name to display the complainant's marks to sell unauthorized goods); see also Swarovski Aktiengesellschaft v. ailong c ailong xiong, Case No. FA 1571172 (Forum Sept. 5, 2014) (finding bad faith where respondent used the disputed domain name in connection with a website purportedly offering unauthorized goods of Complainant and stating that the respondent's bad faith was "apparent in that [r]espondent is profiting from the likelihood Internet users will mistakenly believe the goods sold through the domain name's website are legitimate…"); see also Hunter Fan Co. v. MSS, FA 98067 (Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant's products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant); see also Hunter Fan Co. v. MSS, FA 98067 (Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant's products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant); see also H-D Michigan, LLC v. Ross, FA 1250712 (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 and thus demonstrates bad faith per Policy ¶ 4(b)(iv)); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain and thus demonstrating bad faith per Policy ¶ 4(b)(iv) by creating confusion as to the complainant's connection with the website by selling counterfeit products). The Panel therefore finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iv). Further, Respondent registered the disputed domain names with actual knowledge of Complainant's mark: the resolving websites display images of Complainant's products. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant's rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) ("The Panel notes that although the UDRP does not recognize 'constructive notice' as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it."); 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). The Panel finds that Respondent had actual knowledge of Complainant's rights in the mark prior to Respondent's registration of the disputed domain names and that this constitutes bad faith under Policy ¶ 4(a)(iii). DECISION The Panel dismisses, without prejudice, the Complaint against the <quiksilver-hu.com> domain name. Having established all three elements required under the ICANN Policy for the <billabong-clothes.com> and <no-billabong.com> domain names, the Panel concludes that relief shall be GRANTED for those domain names. Accordingly, it is Ordered that the <billabong-clothes.com> and <no-billabong.com> domain names be TRANSFERRED from Respondent to Complainant and that the <quiksilver-hu.com> domain name REMAIN WITH Respondent. Richard Hill, Panelist Dated: January 8, 2024 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.