Billabong International Limited, GSM (Operations) Pty Ltd, GSM (Trademarks) Pty Ltd, GSM (Europe) Pty Ltd, GSM (NZ Operations) Ltd v. Mookie Lei
Case No. D2008-0101
1. The Parties
The Complainants are Billabong International Limited, GSM (Operations) Pty Ltd, GSM (Trademarks) Pty Ltd, GSM (Europe) Pty Ltd and GSM (NZ Operations) Ltd of Queensland, Australia, represented by Cullen & Co. of Queensland, Australia.
The Respondent is Mookie Lei of Seoul Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <billabongirls.com> is registered with eNom Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2008. On January 24, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On January 25, 2008, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed an amendment to the Complaint on February 1, 2008. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 4, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 24, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 25, 2008.
The Center appointed Hariram Jayaram as the sole panelist in this matter on March 6, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainants belong to a group of companies consisting of a publicly listed company and four subsidiaries. BILLABONG is their trade mark which is used in connection with products in the youth market, the apparel market and the active sports market. The Complainants have also registered domain names incorporating the word ‘billabong’ e.g. <billabong.com>, <billabong.com.au>, <billabonggirls.com.au>.
The Respondent is the registrant of the disputed domain name <billabongirls.com>.
The registration of the disputed domain name <billabongirls.com> was set to expire on February 16, 2008. Under the ICANN Expired Domain Deletion Policy, paragraph 3.7.5.7.:
“[i]n the event that a domain which is the subject of a UDRP dispute is deleted or expires during the course of the dispute, the Complainant in the UDRP dispute will have the option to renew or restore the name under the same commercial terms as the registrant.”
The Complainants through their representative sought renewal of the registration of the disputed domain name <billabongirls.com> to enable the UDRP proceedings to continue. Renewal was effected by the Registrar on March 3, 2008.
5. Parties’ Contentions
A. Complainant
This Complaint is based on the following grounds:
The Billabong group of companies (comprising the publicly listed company Billabong International Limited and its subsidiary companies including GSM (Trademarks) Pty Ltd, GSM (Operations) Pty Ltd, GSM (Europe) Pty Ltd and GSM(NZ Operations) Ltd), owns the trade marks, and copyright in the artistic work of trade marks, of the internationally famous BILLABONG brand, including the trade mark BILLABONG, BILLABONG (stylised) and the various BILLABONG & Wave Device trade marks (the “BILLABONG brand trade marks”). The BILLABONG brand is widely recognised as being one of the world’s leading brands in the youth market, the apparel market and the active sports market. The BILLABONG brand is also one of Australia’s most famous brands internationally and is regarded as an Australian icon. The trade mark BILLABONG has been used by the Billabong Group, and its predecessors including Gordon and Rena Merchant Pty Ltd, since the early 1970’s. The Billabong Group manufactures and markets BILLABONG brand goods under the BILLABONG brand trade marks, including the trade mark BILLABONG, for sale in more than 100 countries, through more than 8000 retail stores. In addition, BILLABONG brand goods are also advertised for sale and sold online through online stores. The BILLABONG brand product range currently comprises over 4,600 product lines sold under and by reference to the trade mark BILLABONG. The goods in the BILLABONG brand product range include, but are by no means limited to, a wide range of products in the international classes 6, 9, 14, 16, 18, 20, 24, 25 and 28, including clothing, footwear, headgear, swimwear, fashion accessories, towels, sporting goods, watches, pre-recorded videos, jewellery, bags, purses, wallets, pencil cases, folders, stickers, sunglasses, key chains, cards, drink bottles and thermo mugs. The Billabong Group has more than one hundred and fifty company owned and branded retail stores, plus more than forty licensed branded stores, in key markets throughout the world. The Billabong Group’s annual global revenue in the last two financial years exceeded AUD$1billion, (and was made public in the Billabong Group’s annual financial reports accessible at “www.billabongbiz.com”), and a significant proportion of that revenue may be attributed to the sale of BILLABONG brand goods. The Billabong Group spends a certain percentage of its annual revenue, equating to many millions of dollars, on annual advertising of the trade marks of the BILLABONG brand. The Billabong Group advertises the BILLABONG brand trade marks, and BILLABONG brand goods and services, across a broad range of forums, including on websites maintained by the Billabong group, electronic marketing and on third party sites. The BILLABONG brand has a high and strong reputation by virtue of a combination of the high advertising expenditure for the BILLABONG brand; the high number and value of sales of BILLABONG brand goods; the quality of BILLABONG brand products and services; the high credit and esteem in which the BILLABONG brand is held internationally; and the popular images and values projected by the trade mark and brand, including through its sponsorship of world famous athletes including world champion surfers, skateboarders and snowboarders. Those factors contribute to the substantial goodwill of the BILLABONG brand. The Billabong group has an international portfolio of trade mark applications and registrations for trade marks including or comprising the word “billabong”, in a broad range of classes, and has extensive common law rights in its BILLABONG brand trade marks in relation to a broad range of goods and services, including clothing, footwear, headwear and retailing services. In the country of residence of the Respondent, namely in the Republic of Korea, the Billabong group owns the following trade mark registrations, which are held in the name of Billabong Group company GSM (Operations) Pty Ltd:
- Korean trade mark registration no. 217654 for the mark BILLABONG & WAVE Device for the goods in Korean Class 45, namely “Under shirts, pants, chemises, men’s suits, evening dresses, trousers, shorts, tops, T-shirts, sweaters, suits, dresses, skirts, board shorts, tights, swimming suits, jackets, blouses, socks, hosiery, tracksuits, sweat shirts, beach wears”;
- Korean trade mark registration no. 386808 for the mark BILLABONG & WAVE Device for the goods in Korean class 27, namely “Leather shoes, vinyl shoes, boots, basketball shoes, field and track shoes, hockey shoes, golf shoes, sandals, umbrellas and walking sticks, wetsuit boots and thongs”;
- Korean trade mark registration no. 388801 for the mark BILLABONG & WAVE Device for the goods in Korean class 30, namely “Keys, key rings, key holders and metal chains”;
- Korean trade mark registration no. 388802 for the mark BILLABONG & WAVE Device for the goods in Korean class 35, namely “Clocks, wrist watches, pocket watches, electronic timepieces, time clocks, measuring watches, watch glasses, watch bands, watch chains or straps and watch cases”;
- Korean trade mark registration no. 391383 for the mark BILLABONG & WAVE Device for the goods in Korean class 25, namely “Trunks, hand bags, travelling bags, knapsacks, backpacks, wallets, brief cases, suitcases, key cases and cases”;
- Korean trade mark registration no. 391384 for the mark BILLABONG & WAVE Device for the goods in Korean class 52, namely “Books, magazines, brochures, posters, transfers, decals, recorded and/or telerecorded tapes (excluding for music), recorded and/or telerecorded cassettes (excluding for music), video film and picture postcards”;
- Korean trade mark registration no. 410448 for the mark BILLABONG & WAVE Device for the goods in Korean class 43, namely “Surfboards, body boards, wave skis, surf skis, skateboards, covers for surfboards and body boards and wave ski cases”;
- Korean trade mark registration no. 418144 for the mark BILLABONG & WAVE Device for the goods in Korean class 45, namely “Men’s suits, children’s clothing, swimwear, headgear, wetsuits, wetsuit vests, wetsuit boots, wetsuit gloves, hoods, wetsuit shorts, wet suit tops, towels, belts, badges, buckles and charms”.
The Billabong Group owns registrations for a number of domain names incorporating the word Billabong, including <billabong.com>, <billabong.com.au>, <billabonggirls.com.au>, <billabongpro.com> and <billabongpro.com.au>, and many others registered prior to the disputed domain name (collectively, the “Billabong Group domain names”). The Billabong Group actively promotes its goods, including clothing, footwear and headwear, and services, through websites, including websites linked to the aforementioned domain names.
The Complainants submit that the disputed domain name <billabongirls.com> is at least confusingly similar to the Complainants’ BILLABONG trade mark, because it consists of the running together and slight misspelling (by deletion of a single letter “g”) of the Complainants’ trade mark “billabong” and the descriptive word “girls”. Such a misspelling can be a common typographical error and/or is easily overlooked and amounts to the common bad faith practice of “typosquatting”. The essential identifying characteristic of the disputed domain name is the word “billabong”, as it conveys the dominant impression. It is that name which is the principal memory trigger, and it is that name which is likely to lead persons seeing the domain name to think of a connection with the Complainants’ trade marks. The mere addition of a generic word, such as “girls”, is not sufficient to distinguish the disputed domain name from the Complainants’ renowned BILLABONG brand trade marks. Moreover, the word “girls” is also so closely associated with the Billabong Group’s business since girls are one of the group’s target markets and the group specifically operates a website(s) accessible via the domain name <billabonggirls.com>/<billabonggirls.com.au>, that the combination with “Billabong” cannot be but confusing. Internet users are likely to be misled or confused as to the Complainants’ relationship to, affiliation with, or endorsement of, the website which can be located through the disputed domain names. An additional factor increasing the likelihood of confusion is the registration and use by the Billabong Group of a series of domain names including the word, Billabong.
The Complainants submit that the Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name because the Respondent registered the disputed domain name on 16 February 2007, long after the Complainants had registered and acquired a substantial reputation in the BILLABONG brand trade marks internationally. The Complainants’ statutory and common law rights in the BILLABONG brand trade marks encompass the same goods as are advertised on the website linked to the disputed domain name (including clothing, bags, etc.). The Complainants have not licensed or other otherwise permitted the Respondent to use any BILLABONG brand trade marks or to apply for or to use any domain name incorporating any BILLABONG brand trade marks. The Respondent is not an authorised dealer of the Complainants’ BILLABONG brand goods. The Respondent is not commonly known by the domain name BILLABONGGIRLS, BILLABONG or anything similar thereto. The Respondent could not lawfully trade under the name “billabong” or “billabong girls” in any jurisdiction in which the Billabong Group operates having regard to the BILLABONG brand trade marks of the Complainants and the fact that those trade marks are internationally well known. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. It is implausible that the Respondent independently determined to register and use the disputed domain name without knowledge of the Complainants’ widely known and registered BILLABONG brand trade marks. Because the Respondent must have been aware of the Complainants’ mark when it registered the disputed domain name, it cannot be said to have made a bona fide offering of services prior to notice of a dispute. The Respondent is not making a legitimate non-commercial or fair use of the disputed domain name. The website to which the disputed domain name resolves displays sponsored links to third party’s websites, including websites on which competitor’s brands are advertised, for which the Respondent is getting financial compensation. The Respondent is thus using the disputed domain name to divert consumers for commercial gain.
The Complainants contend that the disputed domain name was registered and is being used in bad faith because the Respondent links the disputed domain name to a website. The goods listed on the website, including Billabong clothing, womens clothing, shoes, swimsuits, t-shirts, girls clothing/clothes, are goods which the Billabong Group manufactures, markets and sells in more than one hundred countries worldwide. The webpage accessible via the link “Billabong clothing”, on the homepage of the offending website, includes sponsored links. Significantly, there are sponsored links to other websites advertising goods, including websites advertising competitor’s goods under the brands QUIKSILVER and RIP CURL. Similarly, the webpage accessible via the link “Billabong”, on the homepage of the offending website, includes a sponsored link to a website advertising another competitor’s VOLCOM brand goods. On November 30, 2007, the Complainants’ IP Manager sent a “cease and desist” letter to the Respondent.The Respondent did not reply. Nor did the Respondent remove its offending website. The Complainants are well and widely known by reference to the name and trade mark BILLABONG, which is a famous trade mark, and have extensive statutory and common law rights in the BILLABONG brand trade marks internationally. The Respondent’s use of the disputed domain name in connection with a website advertising links to sites offering competitor brand goods for sale and using the trade mark BILLABONG, is misleading and deceptive, infringes the Complainants’ rights in the trade mark BILLABONG and/or tarnishes and dilutes the Complainants’ well known trade mark BILLABONG by suggesting to users that the Complainants endorsed, sponsored, or was otherwise affiliated with the disputed Domain Name and the offending website. The Complainants submit that in using the domain name, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on the Respondent’s web site or location. The Respondent intentionally used a minor spelling variation of “billabong girls”, to take advantage of Internet users mistyping the words, when trying to access the Complainants’ official websites, in order to attract them to its own website(s) or the websites of third parties which bring the Respondent advertising revenue.
B. Respondent
The Respondent did not reply to the Complainants’ contentions. However, by an email dated March 11, 2008, addressed to the Complainants’ representative and copied to the Center the Respondent said:
“Kind of ironic isn’t it. the name expired cos I don’t want it yet you feel the need to have it renewed so you can take it from me. I don’t even know what it infringes upon, ambulance chasing?.”
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainants to prove each of the following three elements to obtain an order for the domain name to be cancelled or transferred to it:
(i) the domain name registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The Respondent has not filed a response. The Panel has to rely on the Complainants’ statements and documents to come to a decision.
A. Identical or Confusingly Similar
The disputed domain name is only different from the Complainants’ trade mark BILLABONG in one respect: the letter “g” is deleted from the word “billabong” and replaced by the word “girls”. The word “girls” is a descriptive word. Such an addition will not avoid confusing similarity of the disputed domain name to the trade mark. This is confirmed in the following decisions:
- Nokia Corporation v. Nokia-girls.com,
WIPO Case No. D2000-0912 (<nokia-girls.com> was found to be confusingly similar to the NOKIA trade mark);
- Viacom International Inc. v. Erwin Tan,
WIPO Case No. D2001-1440 (<mtv-girl.com>, <mtv-girl.net> and <mtv-girl.org> was found to be confusingly similar to the MTV trade mark); and
- Revlon Consumer Products Corporation v. Laurent D. Morel,
WIPO Case No. D2002-0215 (<revlongirls.com> was found to be confusingly similar to the REVLON trade mark).
The Panel finds that the Complainants have satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainants have made several allegations against the Respondent and they remain unchallenged: the Complainants have not licensed or permitted the Respondent to use BILLABONG brand trade marks as part of the Respondent’s domain name. The Respondent is not an authorised dealer of the Complainants’ BILLABONG brand goods and is not commonly known by the words BILLABONG GIRLS or BILLABONG. The Respondent cannot here lawfully trade under BILLABONG or BILLABONG GIRLS and cannot be deemed to have registered the disputed domain name without knowledge of the Complainants’ rights since BILLABONG is an internationally known trade mark of the Complainants. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The Respondent is not making a legitimate non-commercial or fair use of the disputed domain name because the website with the disputed domain name displays sponsored links to third party websites including those of Complainants’ competitors. The Respondent appears to receive financial compensation for maintaining the website with the disputed domain name.
The Panel finds that the Complainants have satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The conduct of the Respondent amounts to “typo-squatting”. The Respondent has secured registration of the disputed domain name <billabongirls.com> by coining a word with the letter “g” deleted from the domain name <billabonggirls.com> registered earlier by the Complainants. The Respondent has taken unfair advantage by adopting the disputed domain name <billabongirls.com> which is a misspelling of the earlier registered domain name. Internet users are capable of making typographical errors when keying in to browse a website and they will be easily led to a competitor’s website. There is bad faith on the part of the Respondent because the website with the disputed domain name links to competitors’ websites. The Complainants have registrations of their trade marks incorporating the word “billabong” in many countries and including the Republic of Korea where the Respondent is located. The Respondent most likely knew of the earlier trade mark registrations and use in the Republic of Korea before the registration of the disputed domain name on the account of the well known character of the trade marks. The registration and use of the disputed domain name has therefore been in bad faith.
The Panel finds that the Complainants have satisfied the requirements of paragraph 4(a)(iii) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <billabongirls.com> be transferred to the Complainants.
Hariram Jayaram Sole Panelist
Dated: March 20, 2008
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