Brooks Sports, Inc. v. Marie Wirtz / Eric Eisenberg / Ines Bar
Claim Number: FA2101001930415
Complainant is Brooks Sports, Inc. (“Complainant”), represented by Mayura I. Noordyke of Cozen O’Connor, Minnesota, USA. Respondent is Marie Wirtz / Eric Eisenberg / Ines Bar (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <brooksaustraliasale.com>, <brookscasale.com>, and <brooksnorge.com>, registered with MAT BAO CORPORATION.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 29, 2021; the Forum received payment on January 29, 2021.
On February 2, 2021, MAT BAO CORPORATION confirmed by e-mail to the Forum that the <brooksaustraliasale.com>, <brookscasale.com>, and <brooksnorge.com> domain names are registered with MAT BAO CORPORATION and that Respondent is the current registrant of the names. MAT BAO CORPORATION has verified that Respondent is bound by the MAT BAO CORPORATION 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 February 4, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 24, 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@brooksaustraliasale.com, postmaster@brookscasale.com, postmaster@brooksnorge.com. Also on February 4, 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 1, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDINGS
The Panel notes that the Registration Agreement is written in Vietnamese, thereby making the language of the proceedings in Vietnamese. Complainant requests that the proceeding should be conducted in English. The Panel has the discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. See Section 4.5, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition; see also L'Oréal v. Whois Privacy Prot. Serv. by onamae.com / Motoko Fujii, Case No. D2016-0593 (WIPO May 27, 2016) (finding that although the Registration Agreement was in Japanese, English should be used as the language of the proceeding based on evidence that the use of English would not be a “denial of justice to the Respondent, and the use of Japanese would produce undue burden on the Complainant,” considering evidence including the fact that the disputed domain name contained English words).
Complainant contends that i) the disputed domain names all contain the English name “BROOKS” and two of the disputed domain names also contain the English word “sale”; ii) the disputed domain names are also targeted at Complainant, which is a company headquartered in the United States; iii) the websites appearing at the disputed domain names all display at least some content that is in English, suggesting that Respondent is able to converse in English; iv) the disputed domain names contain the .COM gTLD, which is the largest top-level domain and is often used by international entities for international websites; and v) since this dispute involves international parties, English should be used as the language of the proceedings.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant in the English language. After considering the circumstance of the present case, and in the absence of Response and no objection to the Complainant's request for the language of proceeding, the Panel decides that the proceeding should be in English.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
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 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.” Complainant contends that all three of the <brooksaustraliasale.com>, <brookscasale.com>, and <brooksnorge.com> domain names were registered with MAT BAO CORPORATION using the exact same privacy protection and all registered between November 25 and December 12, 2020.
The Panel finds that all three of the disputed domain names are commonly owned/controlled by a single Respondent who is using multiple aliases.
A. Complainant
i) 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”) (e.g. Reg. No. 1,161,034, registered July 14, 1981). The disputed domain names are identical or confusingly similar to Complainant’s BROOKS mark as they merely add the generic term “sale,” various geographic terms “Australia,” “CA”, which is the country code for Canada, and “NORGE”, which translates directly to Norway, and the generic top-level domain “.com” to Complainant’s mark.
ii) Respondent lacks rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names nor has Respondent been authorized by Complainant to use the BROOKS mark. Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services as Respondent uses them to pass off as Complainant and offer to sell Complainant’s products on an unauthorized basis.
iii) Respondent registered and uses the disputed domain names in bad faith. Respondent uses the disputed domain names to pass off as Complainant and offer 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 did not submit a response in this proceeding.
1. The disputed domain names were registered on November 25, 2020 and December 12, 2020.
2. Complainant has established rights in the BROOKS mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,161,034, registered July 14, 1981).
3. The websites associated with the disputed domain names display Complainant’s BROOKS mark in the banner and display images of Complainant’s products offered for sale, using Complainant’s trademark, product names, and product images in the listings.
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 asserts rights in the BROOKS mark through its registration of the mark with the USPTO (e.g. Reg. No. 1,161,034, registered July 14, 1981). Registration of a mark 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 Complainant has demonstrated rights in the BROOKS mark per Policy ¶ 4(a)(i).
Complainant argues Respondent’s <brooksaustraliasale.com>, <brookscasale.com>, and <brooksnorge.com> domain names are identical or confusingly similar to Complainant’s BROOKS mark as they merely add the generic term “sale,” various geographic terms “Australia,” “CA”, which is the country code for Canada, and “NORGE”, which translates directly to Norway, and the generic top-level domain “.com” to Complainant’s mark. Adding a generic term, a geographic term, and a gTLD to a mark fails to sufficiently distinguish disputed domain names from a mark per Policy ¶ 4(a)(i). See Dell Inc. v. SNAB Corporation, FA 1785051 (Forum May 30, 2018) (finding the inclusion of a geographic term did not distinguish the domain name and increased possible confusion, as “[t]he geographic term “hyderabad” is also suggestive of Complainant as Complainant has corporate offices in Hyderabad, India.”); see also MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). Therefore, the Panel finds the disputed domain names are confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. 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 Respondent lacks rights or legitimate interests in the disputed domain names as Respondent is not commonly known by the disputed domain names nor has Complainant authorized or licensed to Respondent any rights in the BROOKS mark. When a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain names under Policy ¶ 4(c)(ii). 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). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain names. 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 names lists the registrants as “Marie Wirtz / Eric Eisenberg / Ines Bar” and Complainant argues there is no other evidence to suggest that Respondent was authorized to use the BROOKS mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the disputed domain names 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 may not be a bona fide offering of goods or services or 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 name because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”). Complainant contends that Respondent operates websites at the disputed domain names that repeatedly display Complainant’s BROOKS mark and offer for sale goods that appear to be unauthorized goods of Complainant. Specifically, the websites associated with the disputed domain names display the BROOKS mark in the banner and display images of Complainant’s products offered for sale, using Complainant’s trademarks, product names, and product images in the listings. Therefore, the Panel finds 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).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant contends Respondent registered and uses the disputed domain names in bad faith because Respondent uses the disputed domain names 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.”). The Panel recalls Complainant provides screenshots of Respondent’s resolving webpages, in which Respondent displays images of Complainant’s products offered for sale, using Complainant’s trademarks, product name, and product images in the listings. Therefore, the Panel finds Respondent registered and uses the disputed domain names in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Complainant also contends Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the BROOKS mark based on Respondent’s use of the BROOKS mark. Use of a mark to divert Internet traffic to disputed domain names can demonstrate actual knowledge of a complainant’s rights in a mark 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”). Complainant argues that Respondent’s conduct shows that Respondent actually knew about Complainant and Complainant’s BROOKS mark as Respondent used Complainant’s BROOKS mark in the disputed domain names to divert visitors to Respondent’s own website for commercial gain and Respondent has registered and is using domain names that incorporate a well-known trademark. The Panel infers, due to the manner of use of the disputed domain names and the notoriety of Complainant’s mark that Respondent registered the disputed domain names 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 <brooksaustraliasale.com>, <brookscasale.com>, and <brooksnorge.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: March 5, 2021
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