The Freename Forum

A sportswear manufacturer and retailer took legal action against three infringing brand domains, but failed with one domain because it could not prove that it had the same owner as the other two.

Boardriders IP Holdings LLC, a sports fashion company, is the owner of the trademarks “BILLABONG” and “QUICKSILVER”. It believes that its trademark rights have been infringed by the domains billabong-clothes.com, no-billabong.com and quiksilver-hu.com, which is why it initiated UDRP proceedings before The Forum. Among other things, she argued that all three domains belonged to the opponent Zhenhe Qiu and made several points:
(a) the domains were all registered with the registrar Cosmotown Inc;
(b) they had been registered in consecutive months;
(c) based on the WHOIS information, the contact was located in the state of California (“ca”) and in the country “USA”;
(d) the IP addresses of the domains each started with the sequence “104.21.”;
(e) the hosting provider is Cloudflare;
(f) at least the Billabong domains would have the same website layouts and content.
The complainant further stated that it had not consented to the use of the trademarks by the opponent and had not granted it a license. He is not known under the trademarks and sells counterfeit products on the websites under the trademarks. The opponent Zhenhe Qiu did not enter an appearance. Richard Hill, a lawyer based in Switzerland, was appointed as the decision-maker.

Hill largely upheld the complaint and decided to transfer the domains billabong-clothes.com and no-billabong.com (Forum Claim Number: FA2412002128151). Before Hill went into medias res, he excluded the domain quiksilver-hu.com in a preliminary examination because it was not proven that it was registered by the same domain owner; UDRP proceedings may usually only be conducted against one opponent. The indicated references (a) to (e) would not necessarily prove that all three domains belong to the opponent. Hill did not agree with evidence (f) at all, as the evidence submitted by the complainant showed that the website under quiksilver-hu.com had different content from that of the other two domains, in particular in a different language. Thus, the complainant had not provided sufficient evidence to show that all three domains were registered by the same person or entity. With reference to the supplementary condition 4 (c) of the rules of The Forum, the deciding panel must determine the one opponent against whom the proceedings are being conducted, as a UDRP decision can only be issued against one opponent. The panel must therefore dismiss the complaint with regard to the domain that is not owned by the selected opponent. Based on this, Hill stated that he would only decide on the domains billabong-clothes.com and no-billabong.com; he dismissed the decision on the domain quiksilver-hu.com without prejudice.

This cleared the first hurdle, to the partial detriment of the complainant. For the rest, Hill was able to confirm the complainant's submission: The domains billabong-clothes.com and no-billabong.com were confusingly similar to the complainant's trademark, the opponent had no right or legitimate interest in the domains and, finally, he had registered them in bad faith and was using them in bad faith, which was evident from the content. As soon as they were registered, the opponent used the domains to offer counterfeit articles under the complainant's trademark, which on the one hand reflected the bad faith use and on the other hand showed that he had registered the domains with knowledge of the trademark and with the very intention of misusing the domains. It confirmed that all requirements had been met and decided to transfer the domains billabong-clothes.com and no-billabong.com to the complainant. With regard to the domain quiksilver-hu.com, it rejected the complaint.

One disadvantage of the General Data Protection Regulation and its effects is the often lamented, significantly slimmed-down WHOIS, from which it is generally no longer possible to tell who the owner of a domain is. This is basically a good thing for domain owners. But as soon as a domain name infringes name or trademark rights or contains content that infringes rights, it becomes somewhat more difficult for the rights holder to identify the opponent than it was before the data protection reform. However, these disadvantages are not too great. ICANN has also introduced the “Registration Data Request Service” (RDRS), which enables WHOIS requests for complete data, even if it is by no means as fast and does not work for all registrars.

The UDRP decision on the domain billabong-clothes.com can be found at:
https://www.adrforum.com/DomainDecisions/2128151.htm