Brooks Sports, Inc. v. bskwfny
Claim Number: FA2007001904142
Complainant is Brooks Sports, Inc. (“Complainant”), represented by Mayura I. Noordyke of Cozen O’Connor, Minnesota, USA. Respondent is bskwfny (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brooksrunning-shoes.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 14, 2020; the Forum received payment on July 14, 2020.
On July 15, 2020, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <brooksrunning-shoes.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 July 17, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 6, 2020 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@brooksrunning-shoes.com. Also on July 17, 2020, 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 August 10, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 claims rights in the BROOKS trademark acquired through its ownership of the portfolio of trademark registrations described below and the use of the mark by Complainant and its predecessors in title initially on footwear and subsequently also on athletic apparel and related goods since 1914.
Complainant claims that it has established a goodwill and reputation in the BROOKS mark through its long standing and continuous use for over a century including on its official website marketing its products at <www.brooksrunning.com> on which the mark is prominently displayed.
Complainant alleges that the disputed domain name <brooksrunning-shoes.com> is confusingly similar to its BROOKS mark arguing that the addition of the generic terms “running” and “shoes” does not negate the confusing similarity between the disputed domain name and the BROOKS mark under Policy ¶ 4(a)(i). Complainant submits that previous panels have found that adding a generic term or abbreviation or random letters fails to distinguish the resulting domain name from the incorporated trademark. See American Express Co. v. MustNeed.com, Case No. FA1302001485817 (Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to the complainant’s AMEX mark because the mere addition of a generic or descriptive word to a registered mark does not negate a finding of confusing similarity under the Policy).
Complainant adds that the generic top-level domain extension <.com> is irrelevant in determining similarity of the disputed domain name to Complainant’s mark. See, e.g., Delta Corporate Identity, Inc. & Delta Air Lines, Inc., citing Busy Body, Inc. v. Fitness Outlet Inc., Case No. D2000-0127 (WIPO Apr. 22, 2000) (“[t]he addition of the generic top- level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants”);
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that there is no evidence in the WHOIS information to suggest that Respondent is known by the disputed domain name.
Complainant’s’ submits that because of its long-time and extensive rights in the BROOKS mark through use in connection with athletic apparel, footwear and accessories and related goods, Respondent could not have rights in the BROOKS mark unless Complainant granted such rights to Respondent which has not occurred.
Complainant asserts that Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. Respondent has never requested or received any authorization, permission or license from Complainant to use the disputed domain name <brooksrunning-shoes.com> or the BROOKS mark in any way.
Referring to screenshots of the website to which the disputed domain name resolves which have been annexed to the Complaint, Complainant argues that Respondent is not making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers. The disputed domain name <brooksrunning-shoes.com> resolves to a website that displays Complainant’s BROOKS mark in the banner of the homepage, with images of Complainant’s products offered for sale at discounted rates, using Complainant’s trademarks, product names, and product images in the listings.
Complainant adds that there are indications that the website to which the disputed domain name resolves is being used for a fraudulent purpose. In this regard, Complainant refers to the language on Respondent’s website which has repeated unexplained references to another domain name <nikehk.net> indicating that the language was copied from the other website. The text on the “Discount Coupon” page on Respondent’s website has further numerous errors in the language used. Additionally, Complainant expresses concern that Respondent appears to be collecting personal information from unsuspecting purchasers through an embedded form that requests the users to submit their mailing addresses, phone numbers and dates of birth.
Complainant also complains that at the bottom of Respondent’s website there are links to various webpages that link on to other websites that offer competing goods. Finally, Complainant submits that the copyright legend on Respondent’s website is designed to create the illusion of a relationship with Complainant as it states “Copyright © 2020 brooksrunning-shoes.com Store. Powered by Brooks Running Inc brooks running shoes,brooks shoesbrooks running”
Complainant adds that such use of the disputed domain name cannot be characterized as fair use. Panels often use the standard set forth in the decision in Oki Data Americas, Inc. v. ASD, Inc., Case No. D2001-0903 (WIPO Nov. 6, 2001) to assess nominative fair use. Complainant submits that Respondent fails to meet the Oki Data test that (i) the respondent must actually be offering the goods or services at issue; (ii) the respondent must use the disputed domain name to sell only the trademarked goods (as opposed to using the domain name to bait Internet users and then switch them to other goods); (iii) the disputed domain name must accurately disclose the registrant’s relationship with the trademark owner; and (iv) the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
Complainant alleges that the record shows that Respondent registered and is using the disputed domain name in bad faith arguing that Respondent had knowledge of Complainant and Complainant’s trademark rights in its BROOKS mark, yet proceeded to register the disputed domain name in bad faith and is using the disputed domain name that incorporates the well-known BROOKS trademark in bad faith to confuse and divert visitors to Respondent’s own web site for commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant produces and sells athletic apparel, footwear and related goods, including high-performance running shoes on which it uses the BROOKS trademark and is the owner of the following United States trademark registrations:
· United States registered trademark BROOKS, registration number 1,161,034 registered on July 14, 1981 on the Principal Register for goods in international class 25;
· United States registered trademark BROOKS (Chevron Design), registration number 5,596,496, registered on October 20, 2018 on the Principal Register for goods in international class 25;
· United States registered trademark BROOKS (Chevron Design), registration number 4,631,302, registered on November 4, 2014 on the Principal Register for goods in international class 25;
· United States registered trademark BROOKS (Chevron Design), registration number 1,683,840, registered on April 21, 1992 on the Principal Register for goods in international class 25;
· United States registered trademark BROOKS TRANSCEND, registration number 4,728,097, registered on April 28, 2015 on the Principal Register for goods in international class 25.
Complainant has an established Internet presence and is the owner of the domain name <brooksrunning.com>, registered since November 25, 1999, which resolves to Complainant’s website on which it markets its athletic clothing and footwear products.
The disputed domain name was registered on May 15, 2020 and resolves to a website that purports to offer Complainant’s goods at highly discounted prices.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the Forum’s request for verification of the registration details for the disputed domain name in the course of this proceeding.
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 has adduced clear and convincing, uncontested evidence that it has rights in the BROOKS trademark acquired through its ownership of the portfolio of trademark registrations described above and the goodwill established in the mark by long standing and continuous use on athletic apparel and footwear by Complainant and its predecessors in title for over a century, including on its official website marketing its products at <www.brooksrunning.com> on which the mark is prominently displayed.
The disputed domain name <brooksrunning-shoes.com> consists of Complainant’s mark, the words “running” and “shoes”, a hyphen and the generic Top Level Domain (gTLD) <.com> extension.
Complainant’s BROOKS mark is the initial, dominant and only distinctive element in the disputed domain name. The words “running” and “shoes” are descriptive of Complainant’s merchandise and do not add any distinguishing characteristic to the disputed domain name.
Similarly, the hyphen adds no distinguishing feature and for the purposes of comparison the gTLD <.com> extension may be ignored because in the circumstances of this Complaint, the domain extension, is recognized as a technical necessity for a domain name and serves no other purpose or meaning in the context.
This Panel finds therefore that Complainant has succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name alleging
· that there is no evidence in the WHOIS information to suggest that Respondent is known by the disputed domain name;
· that given Complainant’s’ long-time and extensive rights in the BROOKS mark in connection with athletic apparel, footwear and accessories and related goods, Respondent could not have rights in the BROOKS mark unless Complainant granted such rights to Respondent, which has not occurred;
· that Respondent has no relationship, affiliation, connection or association with Complainant;
· that Respondent has never requested or received any authorization, permission, license from Complainant to use the disputed domain name or the BROOKS mark in any way;
· that the screenshots of the website to which the disputed domain name resolves which have been annexed to the Complaint, illustrate that Respondent is not making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers;
· that the disputed domain name is being used to offer for sale unauthorized goods of Complainant at discount rates, using Complainant’s BROOKS mark in the banner and displaying images of Complainant’s products offered for sale at discounted rates and using Complainant’s trademarks, product names, and product images in the listings; and
· that Respondent fails to meet the test set in Oki Data (supra) to assess nominative fair use which requires that Respondent must show (i) that it is actually offering the goods or services at issue; (ii) that the disputed domain name is being used to sell only the trademarked goods (as opposed to using the domain name to bait Internet users and then switch them to other goods); (iii) that the use of the disputed domain name must accurately disclose the registrant’s relationship with the trademark owner; and (iv) that Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name;
· that there are indications that the website to which the disputed domain name resolves is being used for fraudulent purposes.
It is well established that if Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove its rights or legitimate interests in the disputed domain name. Respondent has failed to file any Response to the Complaint or provide any defense to Complainant’s allegations and so has failed to discharge the burden.
In the circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
It is implausible that the disputed domain name was chosen and registered without knowledge of Complainant, its mark and domain name <www.brooksrunning.com>. Complainant has a long and extensive reputation using the BROOKS mark on running shoes, including on the Internet. It is beyond coincidence that the disputed domain name was chosen and registered without the registrant being aware of Complainant’s prior registration of the <brooksrunning.com> domain name and Complainant’s website to which it resolves.
The disputed domain name is being used to resolve to a website on which Respondent purports to offer Complainant’s goods at highly discounted prices, while giving the impression that it is owned or connected with Complainant.
The header on the home page of the website to which the disputed domain name resolves, prominently displays Complainant’s trademark with the chevron logo.
This Panel finds on the balance of probabilities that the disputed domain name was registered and is being used in bad faith in order to take predatory advantage of Complainant’s reputation and goodwill.
The evidence on record shows that Respondent is intentionally using the disputed domain name in bad faith in an attempt to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site.
Additionally, upon arrival on the website to which the disputed domain name resolves Internet users are presented with links that lead to third party websites offering goods which compete with Complainant.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to the reliefs sought in the Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brooksrunning-shoes.com> domain name be TRANSFERRED from Respondent to Complainant.
___________________________
James Bridgeman SC
Panelist
Dated: August 11, 2020
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