Brooks Sports, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA1908001858768
Complainant is Brooks Sports, Inc. (“Complainant”), represented by Mayura I. Noordyke of Cozen O’Connor, Minnesota, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brookseunning.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 22, 2019; the Forum received payment on August 22, 2019.
On August 23, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <brookseunning.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 August 26, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 16, 2019 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@brookseunning.com. Also on August 26, 2019, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On September 18, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a world-leader in athletic clothing and footwear. Complainant has rights in the BROOKS trademark through its registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,161,034, registered July 14, 1981). Respondent’s <brookseunning.com> domain name is identical or confusingly similar to Complainant’s trademark as it incorporates the trademark in its entirety, with the addition of the generic term “running,” mistyped with the replacement of the letter “r” with the letter “e,” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <brookseunning.com> domain name. Respondent is not known by the disputed domain name nor is Respondent authorized, permitted, or licensed to use Complainant’s trademark. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the <brookseunning.com> domain name to display sponsored links to divert Internet users to other commercial websites, some of which compete with Complainant. Additionally, Respondent engages in typosquatting by registering a disputed domain name differing by only a single letter from Complainant’s own domain name.
Respondent registered and uses the <brookseunning.com> domain name in bad faith. Respondent disrupts Complainant’s business by using the disputed domain name to attract Internet users to a website with displaying that direct visitors to third-party websites related to or competitive with Complainant. Respondent engages in typosquatting by registering a disputed domain name differing by only a single letter from Complainant’s own domain name. Respondent had actual and constructive knowledge of Complainant’s trademark rights prior to registering the disputed domain name based off Respondent’s use of the disputed domain name to host related links.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 1,161,034 BROOKS (word), registered July 14, 1981 for goods in class 25;
No. 5,596,496 BROOKS (fig), registered October 30, 2018 for goods in class 25;
No. 4,631,302 BROOKS (fig), registered November 4, 2014 for goods in class 25;
No. 4,728,097 BROOKS TRANSCEND (word), registered April 28, 2015 for goods in class 25;
No. 2,521,124 BROOKS (fig), registered December 18, 2001 for goods in class 25; and
No. 1,683,840 BROOKS (fig), registered April 21, 1992 for goods in class 25.
Respondent registered the disputed domain name <brookseunning.com> domain name on July 29, 2019.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted 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”).
Complainant claims to have rights in the BROOKS trademark through its registrations with the USPTO. Registration of a trademark with the USPTO is sufficient to demonstrate rights in a trademark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”) Complainant has provided the Panel with copies of the USPTO registrations for the BROOKS trademark (e.g. Reg. No. 1,161,034, registered July 14, 1981). Therefore, the Panel finds that Complainant has rights in the BROOKS trademark per Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <brookseunning.com> domain name is identical or confusingly similar to Complainant’s BROOKS trademark as it incorporates the trademark in its entirety, with the addition of the generic term “running,” mistyped with the replacement of the letter “r” with the letter “e,” and the “.com” gTLD. The addition of a generic term, letters, or a gTLD fails to sufficiently distinguish a domain name from a mark for the purposes of Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)); see also Twitch Interactive, Inc. v. Antonio Teggi, FA 1626528 (Forum Aug. 3, 2015) (finding the <twitcch.tv> domain name confusingly similar to the TWITCH TV trademark because the domain name consisted of a common misspelling of the mark by merely adding the letter “c”). The Panel therefore finds that the <brookseunning.com> domain name is confusingly similar to the BROOKS trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent lacks rights or legitimate interests in the <brookseunning.com> domain name as Respondent is not known by the disputed domain name nor is Respondent authorized, permitted, or licensed to use Complainant’s trademark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s trademark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Carolina Rodrigues/Fundacion Comercio Electronico,” and there is no other evidence to suggest that Respondent was authorized to use the BROOKS trademark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Complainant contends that Respondent uses the <brookseunning.com> domain name to divert Internet users to Respondent’s website which displays sponsored links to other commercial websites, some of which compete with Complainant. Using a disputed domain name to display hyperlinks competing with and unrelated to a complainant may not be a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use per Policy ¶ 4(c)(iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). The Panel notes that Complainant provides a screenshot of the resolving webpage of the disputed domain name which displays hyperlinks, some obviously competing with Complainant. The Panel therefore finds that Respondent does not make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Complainant contends that Respondent lacks rights or legitimate interests in the <brookseunning.com> domain name as Respondent engages in typosquatting by registering a disputed domain name differing by only a single letter from Complainant’s own domain name. Typosquatting can provide additional evidence that a Respondent lacks rights or legitimate interest in a disputed domain name per Policy ¶ 4(a)(ii). See Webster Financial Corporation and Webster Bank, National Assocation v. Pham Dinh Nhut, FA1502001605819 (Forum Apr. 17, 2015) (“Respondent’s acts of typosquatting provide additional evidence that respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).”). Complainant argues that Respondent’s <brookseunning.com> domain name is typosquatting on Complainant’s own domain name as it differs only with a single letter. The Panel agrees, and finds that Respondent lacks rights or legitimate interest under Policy ¶ 4(a)(ii).
Complainant asserts that Respondent registered and uses the <brookseunning.com> domain name in bad faith as Respondent disrupts Complainant’s business by using the disputed domain name to attract Internet users to a website displaying links that direct visitors to third-party websites related to or competitive with Complainant. Using a disputed domain name to display links to a complainant’s competitors, presumably for commercial gain, can evince bad faith registration and use per Policy ¶ 4(b)(iii) and/or (iv). See Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”). As noted above, Complainant has provided a screenshot of the resolving webpage of <brookseunning.com> which displays hyperlinks, some competing with the Complainant. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iii) and (iv).
Complainant also argues Respondent registered and uses the <brookseunning.com> domain name in bad faith as Respondent engages in typosquatting. Typosquatting can demonstrate bad faith registration and use per Policy ¶ 4(a)(iii). See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sep. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”); see also Under Armour, Inc. v. JEFF RANDALL, FA1410001585022 (Forum Nov. 18, 2014) (finding that the respondent’s <unerarmour.com> domain name constitutes typosquatting of the complainant’s UNDER ARMOUR mark, which is evidence of bad faith pursuant to Policy ¶ 4(a)(iii)). The Panel notes that Respondent’s <brookseunning.com> domain name is indeed close to identical with Complainant’s own domain name as it differs only with a single letter, that is in the mid of the disputed domain name, using obviously the fact that the letters “r” and “e” are right next to each other on a traditional computer keyboard. The Panel clearly finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Finally, Complainant contends that Respondent registered the <brookseunning.com> domain name in bad faith as Respondent had actual and constructive knowledge of Complainant’s trademark rights prior to registering the <brookseunning.com> domain name. Although panels have generally not regarded constructive notice as sufficient for a finding of bad faith, actual knowledge of Complainant’s trademark prior to registering is adequate to find bad faith under Policy ¶ 4(a)(iii). See 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.”); iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant asserts that Respondent’s use of the disputed domain name to host links to Complainant’s competitors is evidence that Respondent had actual knowledge of Complainant’s rights in the BROOKS trademark prior to registration. The Panel agrees, also again taking into consideration the fact that the disputed domain name is a clear and willful misspelling of Complainant’s own domain name, and finds that Respondent had actual knowledge of Complainant’s rights in the BROOKS trademark prior to registering the disputed domain name, thus constituting bad faith registration per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brookseunning.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: September 29, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page