Brooks Sports, Inc. v. chen jiajin
Claim Number: FA2101001930406
Complainant is Brooks Sports, Inc. (“Complainant”), represented by Mayura I. Noordyke of Cozen O’Connor, Minnesota, USA. Respondent is chen jiajin (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brooswfa.com>, registered with Bizcn.com, Inc..
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 January 29, 2021; the Forum received payment on January 29, 2021.
On February 28, 2021, Bizcn.com, Inc. confirmed by e-mail to the Forum that the <brooswfa.com> domain name is registered with Bizcn.com, Inc. and that Respondent is the current registrant of the name. Bizcn.com, Inc. has verified that Respondent is bound by the Bizcn.com, Inc. 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 March 5, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 25, 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@brooswfa.com. Also on March 5, 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 March 29, 2021, 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
The Complainant is a world-leader in athletic clothing and footwear, including high-performance running shoes. Complainant has rights in the BROOKS trademark through Complainant’s 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 <brooswfa.com> domain name is confusingly similar to Complainant’s BROOKS mark as it deletes the letter “k” from Complainant’s mark while adding the random letters “WFA” and the generic top-level domain (“gTLD”) “.com.”
Respondent lacks rights or legitimate interests in the <brooswfa.com> domain name. Respondent is not commonly known by the disputed domain name nor has Respondent been authorized by Complainant to use the BROOKS trademark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent uses it to pass off as Complainant and offers to sell Complainant’s products on an unauthorized basis. Respondent also attempts to gather personal information from internet users.
Respondent registered and uses the <brooswfa.com> domain name in bad faith. Respondent uses the disputed domain name to pass 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 trademark prior to registering the disputed domain name based on Respondent’s use of the trademark.
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. 1,683,840 BROOKS (fig), registered April 21, 1992 for goods in class 25; and
No. 4,728,097 BROOKS TRANSCEND (word), registered April 28, 2015 for goods in class 25.
The disputed domain name <brooswfa.com> was registered on November 13, 2020.
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 Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. However, in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the language of the complaint, even if it is different from the language of the registration agreement, can be accepted.
The Complainant asserts rights in the BROOKS trademark through its registration of the trademark with the USPTO (e.g. Reg. No. 1,161,034, registered July 14, 1981). Registration of a trademark with the USPTO is sufficient to demonstrate rights in the mark 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).”). Therefore, the Panel finds that Complainant has demonstrated rights in the BROOKS trademark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <brooswfa.com> domain name is confusingly similar to Complainant’s BROOKS trademark as it deletes the letter “k” from Complainant’s trademark while adding the - as described by the Complainant - random letters “WFA” and the generic top-level domain “.com.” Adding random letters and a gTLD to a misspelled trademark fails to sufficiently distinguish a disputed domain name from a trademark per Policy ¶ 4(a)(i). See Klein Tools, Inc. v chenxinqi, FA 1617328 (Forum July 6, 2018) (finding that the <klentools.com> domain name is confusingly similar to the KLEIN TOOLS mark as it contains the entire BANK OF AMERICA mark and merely omits the letter “l” and adds the “.com” generic top-level domain (“gTLD”)); see also Bittrex, Inc. v. Sergey Valerievich Kireev / Kireev, FA 1784651 (Forum June 5, 2018) (holding that the domain name consists of the BITTREX mark and adds “the letters ‘btc’ and the gTLD .com which do not distinguish the Domain Name from Complainant’s mark.”).
In the present case, the disputed domain name as such (without the added gTLD) is “brooswfa”, whereas the Complainant’s trademark is BROOKS. There is obviously no identity. The question remains if there exists a confusing similarity. Here, the Panel notes that the disputed domain name starts with “broos”, which seems to be a misspelled version of Complainant’s trademark BROOKS, just deleting the letter “K”. The final letter combination “wfa” stands out as an acronym, rather than a word or natural ending “broos”. The Panel further note that WFA is the well-known acronym for Women’s Football Alliance.
By adding that acronym to the word “broos”, the Respondent has indicated an activity connected to the Complainant’s goods and trademark BROOKS – with or without any misspelling – rather than creating an independent domain name. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark per 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 AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant contends Respondent lacks rights or legitimate interests in the <brooswfa.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the BROOKS trademark or register domain names using Complainant’s trademark. Where a response is lacking, 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 “chen jiajin” and Complainant argues there is no other evidence to suggest that Respondent was authorized to use the BROOKS trademark or was commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the <brooswfa.com> name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the disputed domain name to pass off as Complainant and offer to sell Complainant’s products on an unauthorized basis. Passing off as a complainant while offering to sell the complainant’s products on an unauthorized basis is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). In the present case, based on evidence provided by the Complainant, the Panel notes that Respondent is using of a domain name that is confusingly similar to Complainant’s BROOKS trademark in connection with a website that displays Complainant’s trademarks in connection with the offering of unauthorized goods, such activities demonstrating Respondent’s intention to confuse consumers and pass off its own goods as being related to, sponsored by, or otherwise affiliated with, Complainant’s legitimate goods.
Therefore, the Panel finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant also argues that Respondent fails to use the <brooswfa.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent attempts to gather personal information from internet users. Gathering personal information from internet users may indeed show that a respondent lacks legitimate rights or interests in a disputed domain name per Policy ¶ 4(a)(ii). See Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Forum Feb. 26, 2015) (“The Panel agrees that the respondent’s apparent phishing attempt provides further indication that the respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). Here, Complainant has provided screenshots of Respondent’s resolving website that show a prompt for internet users to input personal information. Therefore, the Panel finds that Respondent lacks rights or legitimate interests in the domain name per Policy ¶ 4(a)(ii).
The Complainant contends that Respondent registered and uses the <brooswfa.com> domain name in bad faith because Respondent uses the disputed domain name to pass off as Complainant and offer to sell Complainant’s products on unauthorized basis. Passing off as a complainant while offering to sell the complainant’s products on an unauthorized basis can evidence bad faith registration and use per Policy ¶¶ 4(b)(iii) and 4(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.”). As noted above, Complainant has provided screenshots of Respondent’s resolving webpage, in which Respondent displays the BROOKS trademark in the banner and displays images of Complainant’s products offered for sale, using Complainant’s trademarks, product name, and product images in the listings. Therefore, the Panel clearly finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Complainant also contends that Respondent registered the <brooswfa.com> domain name with actual knowledge of Complainant’s rights in the BROOKS trademark based on Respondent’s use of the BROOKS trademark. Use of a trademark to divert Internet traffic to a disputed domain name can demonstrate actual knowledge of a complainant’s rights in a trademark at registration and show bad faith per Policy ¶ 4(a)(iii). See 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”).
Here, specifically, Complainant argues that Respondent’s conduct shows that Respondent actually knew about Complainant and Complainant’s BROOKS trademark as Respondent used Complainant’s BROOKS trademark in the Disputed Domain Name to divert visitors to Respondent’s own web site for commercial gain and Respondent has registered and is using a domain name that incorporate a well-known trademark.
As noted above, the disputed domain name does not identically include the Complainant’s trademark, however the misspelled version of the said trademark BROOKS, and added letters/acronym, clearly shows that the Respondent registered the disputed domain name in bad faith 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 <brooswfa.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: March 30, 2021
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