Brooks Sports, Inc. v. Nadina Griesbeck / Gerhard Traut
Claim Number: FA2101001927737
Complainant is Brooks Sports, Inc. (“Complainant”), represented by Mayura I. Noordyke of Cozen O’Connor, Minnesota, USA. Respondent is Nadina Griesbeck / Gerhard Traut (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <brooksnederland.com> and <brookssingapores.com>, registered with 1API GmbH.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 8, 2021; the Forum received payment on January 8, 2021.
On January 11, 2021, 1API GmbH confirmed by e-mail to the Forum that the <brooksnederland.com> and <brookssingapores.com> domain names are registered with 1API GmbH and that Respondent is the current registrant of the names. 1API GmbH has verified that Respondent is bound by the 1API GmbH 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 January 12, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 1, 2021 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@brooksnederland.com, postmaster@brookssingapores.com. Also on January 12, 2021, 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 February 5, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant is a world-leader in athletic clothing and footwear, including high-performance running shoes.
Complainant has rights in the BROOKS mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <brookssingapores.com> and <brooksnederland.com> domain names are identical or confusingly similar to Complainant’s BROOKS mark as they merely add the geographic terms “NEDERLAND” and “SINGAPORES” (spelled incorrectly) and the generic top-level domain “.com” to Complainant’s mark.
Respondent lacks rights or legitimate interests in the <brookssingapores.com> and <brooksnederland.com> domain names. Respondent is not commonly known by the at-issue domain name nor has Respondent been authorized by Complainant to use the BROOKS mark. Respondent has not used the at-issue domain names in connection with a bona fide offering of goods or services as Respondent uses the domain names to pass itself off as Complainant and offers to sell Complainant’s products on an unauthorized basis.
Respondent registered and uses the <brookssingapores.com> and <brooksnederland.com> domain name in bad faith. Respondent uses the domain name to pass itself off as Complainant and offers to sell Complainant’s products on an unauthorized basis. Additionally, Respondent had actual knowledge of Complainant’s rights to the BROOKS mark prior to registering the disputed domain names based on Respondent’s use of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Here, Complainiant alleges that the two at-issue domain names are controlled by the same person or entity and offers evidence supporting its contention. Complainant’s unopposed contention and evidence tends to show that the nominal registrants of the at-issue domain names are actually the same person or entity. Therefore, the Panel will treat the domain names’ registrants as a single entity for the purposes of this proceeding.
Complainant has rights in the BROOKS mark through its registration of such mark with the USPTO and otherwise.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in its BROOKS trademark.
Respondent registered and uses the at-issue domain names to offer pass itself off as Complainant and offer unauthorized products for sale.
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”).
The at-issue domain is confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has a USPTO registration for its BROOKS trademark. Such registration is sufficient to demonstrate Complainant’s rights in the BROOKS mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s at-issue <brooksnederland.com> and <brookssingapores.com> domain names consists of Complainant’s entire BROOKS trademark followed by a generic geographic term, either “nederland” or “singapores” (incorrectly spelled), and the top-level domain name “.com.” The differences between the at-issue domain names and Complainant’s registered BROOKS trademark are insufficient to distinguish either domain name from Complainant’s BROOKS mark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel finds that the at-issue domain names are each confusingly similar to Complainant’s BROOKS mark. 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).).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Absent contrary evidence of Policy ¶ 4(c) circumstances or other evidence supporting a finding of Respondent’s having rights or legitimate interests in the domain name(s), Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain names. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of either at-issue 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 at-issue domain names identifies the domain names’ registrants as “Nadina Griesbeck / Gerard Traut” and there is no evidence in the record which suggest that either nominal respondent is known by either at-issue domain name. Therefore, the Panel concludes that under Policy ¶ 4(c)(ii) Respondent is not commonly known by either at-issue domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).
Furthermore, Respondent uses the <brooksnederland.com> and <brookssingapores.com> domain to pass itself off as Complainant and to offer to sell Complainant’s products on an unauthorized basis via the domain names’ associated website(s). Respondent’s use of the domain names to offer unauthorized products for-sale in this manner is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶4(c)(i) and (iii).”); see also Caterpillar Inc. v. Huth, FA 169056 (Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of legitimate interests in respect of either at-issue domain name.
Respondent’s <brooksnederland.com> and <brookssingapores.com> domain names were each registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First as mentioned above regarding rights and legitimate interests, Respondent attempts to pass itself off as Complainant. The websites addressed by the at-issue domain names display Complainant’s BROOKS mark as well as images of Complainant’s products in an attempt mimic what might be mistaken for Complainant’s genuine website. Respondents’ website(s) offer Complainant’s products for sale to website visitors without any authorization to do so. Passing off as a complainant while offering to sell the complainant’s products on an unauthorized basis indicates Respondent’s bad faith registration and use of the at-issue domain names per Policy ¶¶ 4(b)(iii) and (b)(iv). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”).
Moreover, Respondent had actual knowledge of Complainant’s rights in the BROOKS mark when it registered <brooksnederland.com> and <brookssingapores.com> as a domain names. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademark as well as Respondent’s offering of Complainant’s products for sale at the <brooksnederland.com> and <brookssingapores.com> websites as discussed above. Respondent’s registration and use of confusingly similar domain names with prior knowledge of Complainant’s rights in such domain names further shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brooksnederland.com> and <brookssingapores.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: February 8, 2021
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