WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Quiksilver Inc., Biarritz Holdings v. Martin Kejval
Case No. D2011-1708
1. The Parties
The Complainants are Quiksilver Inc. of Huntington Beach, California, United States of America and Biarritz Holdings of Saint-Jean-de-Luz, Luxembourg, represented by Selarl Marchais De Candé, France.
The Respondent is Martin Kejval of Hove, United Kingdom of Great Britain and Northern Ireland, represented by KSD STOVICEK Law Office Ltd., Czech Republic.
2. The Domain Name and Registrar
The disputed domain name <boardriders.com> is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2011. On October 7, 2011, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On October 7, 2011, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 October 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response November 2, 2011. The Response was filed with the Center November 1, 2011.
The Center appointed Warwick A. Rothnie, Isabelle Leroux and Alistair Payne as panelists in this matter on November 24, 2011. The Panel finds that it was properly constituted. Each member of 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
As nothing turns on the identity of the particular Complainants, the Panel will refer generally to the Complainants for ease of reference.
The Complainants are manufacturers of a wide range of leisure and sportswear clothing and accessories.
The Complainants have a number of registered trademarks, including:
- BOARDRIDERS CLUB for goods in class 25 (French TM No. 95557659 of February 10, 1995, Australian TM No. 655536 filed on March 10, 1995, United States TM No. 75019380 filed on November 14, 1995, claiming first use in commerce in October 1992) and for goods in class 25 and services in class 35 (International TM No. 808519A filed on July 28, 2003 and Community TM No. 003066552 filed on February 25, 2003);
- THE WORLD OF BOARDRIDERS for goods and services in classes 25 and 41, Community TM No. 2290222 filed on June 28, 2001;
- BOARDRIDERS TV for a range of goods and services in classes 25, 38 and 41, Community TM No. 005431820 filed in November 2005;
- BOARDRIDERS for services in class 35, Community TM No. 010001626 and United States TM No. 85289584 filed in May and April 2011, respectively.
The Community trademark for BOARDRIDERS has been published. The corresponding United States trademark appears to be a pending application.
The Respondent acquired the disputed domain name from its previous owners in about February 2010 on payment of USD 3,000.
The disputed domain name resolves to a website headed “Czech Board Riders Team” with photographs linking to pages about the surfing, snowboarding and long boarding activities of various individuals said to comprise that team. Substantially, the photographs record at least some of the activities of the Respondent and at least one of his friends in the sports mentioned.
At the time the Complaint was filed, the home page of the website included links to websites of Ripcurl, one of the Complainants’ main competitors, and other brands of apparel makers related to these sporting activities.
5. Discussion and Findings
Under paragraph 4 of the Policy, the Complainants must prove each of the following three elements:
(i) the disputed domain name is identical or confusingly similar to a trademark to which it has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
A. Identical or Confusingly Similar
There are two parts to this inquiry: the Complainants must demonstrate that they have rights in a trademark, and, if so, the disputed domain name must be shown to be identical or confusingly similar to the proven trademark.
The Community trademark and the United States trademark for BOARDRIDERS referred to in section 4 above appear to be pending applications. The preponderance of opinion under the Policy is that pending applications do not qualify as rights in a trademark for the purposes of this requirement. See, e.g., Mk-Net-Work v. IVE Technologies, WIPO Case No. D2004-0302. Indeed, as foreshadowed in that case, the Respondent in the present case contends that the United States trademark application has received an objection against registration on the grounds of descriptiveness.
The Complainants also invoke rights at common law in BOARDRIDERS based on usage for at least the past 20 years. A claim that an otherwise descriptive term has acquired secondary meaning would require careful scrutiny as indicated in the summary and cases referred to in paragraph 1.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
As the Respondent contends, however, most if not all of the examples of usage in evidence show the Complainants have used the term “Boardriders” in close proximity to their distinctive trademark QUIKSILVER. It is true that in much of the signage the term “Quiksilver” is presented against a differently coloured background than “Boardriders”. In such cases, however, the term “Boardriders” is also presented with another expression such as “Club”. Viewing the evidence as a whole, therefore, the Panel considers that the Complainants have not discharged their onus to establish that BOARDRIDERS has acquired the necessary secondary meaning.
The Complainants have established, however, ownership of the registered trademarks for BOARDRIDERS CLUB, BOARDRIDERS TV and WORLD OF BOARDRIDERS referred to in section 4 above.
The Complainants contend that, just as the addition of a descriptive term to a trademark does not preclude a finding of confusing similarity, neither should the omission of a descriptive term. Against this, there is considerable force in the Respondent’s objection that a person who chooses a descriptive term as (or as part of) its trademark must live with the consequences and so a very close degree of correspondence will be required before there can be a finding of confusing similarity. The Respondent cited Jake’s Fireworks Inc. v. Whois Privacy Services Pty Ltd / Vertical Axis Inc., Domain Administrator Customer ID: 47520518994762, WIPO Case No. D2011-0779, in support of this proposition.
The Complainants also invoke the content of the Respondent’s website to assist in a conclusion of confusing similarity. As the inquiry at this stage involves a comparison of the disputed domain name to the proven trademark rights, reliance on the content of a website is not typically regarded as permissible: WIPO Overview 2.0, paragraph 1.2.
As paragraph 1.2 of the WIPO Overview 2.0 indicates, this requirement under the Policy is essentially a standing requirement. It is not necessarily directed only to issues of confusion about trade source. Rather, the objective is to prevent extortionate or opportunistic practices which harm the trademark owner or take advantage of the trademark owner’s rights.1 In that context, the Panel considers that the term “Boardriders” in the disputed domain name could readily be understood by notional Internet users as a name which could be used by the Complainants. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainants’ proven trademarks.
B. Rights or Legitimate Interests
The second requirement that the Complainants must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
A respondent may have rights or legitimate interests under the Policy in the circumstances set out in paragraph 4(c) of the Policy. The circumstances set out in paragraph 4(c) of the Policy are examples only, however, and are not an exhaustive enumeration of the ways in which rights or legitimate interests can be shown.
While paragraph 4(c) of the Policy states that these are circumstances where a respondent may show rights or legitimate interests, the overall burden of establishing this requirement falls on the complainant. Nonetheless, in view of the difficulty inherent in proving a negative and because the relevant information is often in the possession of the Respondent only, it will be sufficient for the Complainant to establish a prima facie case which, if not rebutted, will lead to this ground being established: see WIPO Overview 2.0, paragraph 2.1.
In the present case, the Complainants point out that they have not granted the Respondent any licence or other authorization to use their trade marks nor is he in any way associated with their business. These factors alone can often be sufficient to raise a prima facie case against a respondent.
The Complainants also contend that the title of the Respondent’s website, “Czech Board Riders Team”, while potentially conferring rights on that expression shows that the Respondent does not have rights in the term “Boardriders” alone. Next, the Complainants seek to exclude the operation of the well-known principles in Oki Data Americas Inc. v. ASD, Inc., WIPO Case No. D2001-0903, because the Respondent had, at the time of filing the Complaint, links on his website, amongst others, to both the Complainants’ Quiksilver website and the website of Ripcurl, one of the Complainants’ main competitors.
Finally, the Complainants point out that the Respondent holds other domain names. From this, the Complainants contend that it does not matter to the Respondent what domain name he has and, apparently, the Complainants contend that he therefore can have no rights in the disputed domain name.
As the Respondent points out, however, the Complainants contentions based on the title of the website and ownership of other domain names is equally applicable to the Complainants own position. The Panel considers that it is quite misplaced to argue that a person has no rights or legitimate interests in a particular domain name because the person could easily use some other, different domain name, especially where the domain name in question is one having the aptly descriptive character of the disputed domain name.
The Complainants’ contentions overlook both the descriptive nature of the term “Boardriders” and the essential character of the Respondent’s website. It is not a commercial website of the kind at issue in cases like Oki Data, supra. It is very much more in the nature of a personal website or possibly a “fan” website. The Respondent denies that he received any kind of payment such as often arises in affiliate programs for the links on his website. The denial is not inherently incredible. Nor is there any evidence before the Panel to controvert it.
As the Respondent points out, his website does not offer for sale goods or services either of the Complainants or their competitors. Rather, the links in question were of a kind which could naturally be expected to be of interest to those interested in the sports featured on the website.
Given the nature and content of the Respondent’s website and its natural association with the descriptive term “Boardriders”, the Panel finds that the Respondent does have rights or legitimate interests in the disputed domain name and the Complainants have failed to make out this requirement under the Policy.
C. Registered and Used in Bad Faith
It is not strictly necessary for the Panel to deal with this requirement having regard to its conclusions under the second limb above. Accordingly, the Panel will be brief.
The Complainants’ first contention is that the Respondent must have known of their trademark when he registered the disputed domain name. There is no doubt that the Respondent was aware of the Complainants’ business, especially, its Quiksilver brand. However, that awareness does not, contrary to the Complainants’ contentions, necessarily mean that the Respondent was also aware of the Complainants’ BOARDRIDERS “trademark”. As discussed above, the evidence in this record does not support such an all encompassing claim. First, the term “Boardriders” is inherently descriptive of the activities the Respondent engages in. Secondly, as the Respondent has pointed out, the trademarks actually used by the Complainants (at least until they filed the trademark applications for BOARDRIDERS alone in 2011) were composite expressions and, in many cases, also involved figurative elements. The Complainants’ BOARDRIDERS trademark applications, filed in 2011, were filed after the Respondent had acquired the disputed domain name. Accordingly, the Panel does not find the Respondent’s denial of bad faith registration inherently incredible on this record.
The Complainants point to the presence of QUIKSILVER trademarks on the Respondent’s website and a statement thanking his sponsors, friends and family for their support as showing that the Respondent has intentionally set out to create confusion as to the source or affiliation of the Respondent’s website. For the reasons set out in section B above, however, the Panel does not accept those allegations in the context of this case.
Next the Complainants point to a statement on a website, “www.aboutus.com”, which states that the disputed domain name is for sale which included:
“The owners of the domain name boardriders.com are accepting offers from all interested parties willing to obtain ownership rights over the domain name. You may learn more about how to place your offer by clicking HERE.”
Finally, the Complainants point to the registration by the Respondent in August 2011 of domain names including <boardriding.com>, <boardriding.net> and <boardriding.eu>. The Complainants contend that these registrations with the other factors referred to show that the Respondent’s strategy is to resell the disputed domain name at a profit.
The Respondent denies that the advertisement on “www.aboutus.com” was placed by him. He draws attention to the details of the webpage in question which appear to show the address details of the previous holders of the disputed domain name. The Panel notes that each of the domain names registered in August 2011 is also quite descriptive in nature. There is no rule under the Policy that limits a person to registering only one domain name. Rather, what the Policy proscribes is registering and using, without the trademark owner’s permission and in bad faith, one or more domain names because of its or their trademark significance.
In these circumstances outlined above, the Panel is not willing to find that the Respondent has either registered or used the disputed domain name in bad faith.
For all the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Dated: December 5, 2011
1 See David Lindsay, International Domain Name Law: ICANN and the UDRP (Hart Publishing, Oxford, 2007), 274 – 275.