Brooks Sports, Inc. v. Whoisprotection.cc / Domain Admin
Claim Number: FA2102001930896
Complainant is Brooks Sports, Inc. (“Complainant”), represented by Mayura I. Noordyke of Cozen O’Connor, Minnesota, USA. Respondent is Whoisprotection.cc / Domain Admin (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brooksrebajas.com> (the “disputed domain name”), registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 4, 2021; the Forum received payment on February 4, 2021.
On February 5, 2021, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to the Forum that the <brooksrebajas.com> domain name is registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and that Respondent is the current registrant of the name. ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED has verified that Respondent is bound by the ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED 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 8, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 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@brooksrebajas.com. Also on February 8, 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 3, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a world-leader in athletic clothing and footwear, including high-performance running shoes. Complainant owns the registered the trademark BROOKS with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,161,031, registered July 14, 1981) (hereinafter the “BROOKS Mark”).
Complainant contends that Respondent’s use of the disputed domain name is confusingly similar to the BROOKS Mark because the disputed domain name incorporates the BROOKS Mark in its entirety, adding the dictionary term “rebajas”, which is Spanish for “discounts”, followed by the “.com” generic top-level domain (“gTLD”).
Complainant further contends that Respondent has no rights or legitimate interests in the <brooksrebajas.com> disputed domain name because Respondent has never been commonly known by the disputed domain name or Complainant’s BROOKS Mark, Respondent is not using the disputed domain name for a legitimate noncommercial or fair use, nor is it using it for a bona fide offering of goods or services through its efforts to divert customers away from Complainant’s official website. Finally, the Complainant claims that Respondent registered and is using the disputed domain name in bad faith because Respondent attempted to attract Internet users to its website for commercial gain by offering competing products under Complainant’s BROOKS Mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant holds trademark rights in the BROOKS Mark, that the Disputed Domain Name is confusingly similar to Complainant’s BROOKS Mark, that Respondent lack rights or legitimate interests in the Disputed Domain Name, and that Respondent registered and is using the Disputed Domain Name in bad faith.
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 disputed domain name should be cancelled or transferred:
(1) the disputed 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 disputed domain name; and
(3) the disputed 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 concludes that Complainant has rights in the BROOKS Mark based on the registration of the trademark with the USPTO (e.g., Reg. No. 1,161,034, registered July 14, 1981). Registration of a mark with the USPTO confers upon a complainant trademark rights for purposes of the Policy ¶4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”)
The Panel also finds that Respondent’s Disputed Domain Name is confusingly similar to the BROOKS Mark under Policy ¶ 4(a)(i), as the disputed domain name incorporates the trademark in its entirety, is followed by the dictionary term “rebajas”, and then followed by a gTLD. The addition of a dictionary or descriptive term and a gTLD does not negate confusing similarity between a disputed domain name and a trademark under Policy ¶ 4(a)(i). See 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.”); see also Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.”). Complainant notes that the Disputed Domain Name adds the dictionary term “rebajas”, Spanish for “discount” and uses the gTLD “.com”. Thus, the Panel finds that the Disputed Domain Name is identical and/or confusingly similar to the BROOKS Mark under Policy¶ 4(a)(i).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See 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”).
In this case, Respondent did not carry its burden to come forward with evidence of its rights or legitimate interests in the disputed domain name as it did not respond to the Complaint, but given the facts of this case, the Panel finds that Respondent would have been hard-pressed to furnish availing arguments had it chosen to respond:
Specifically, Respondent is not commonly known by the disputed domain name, Complainant has not authorized, licensed, or otherwise permitted Respondent to use the BROOKS Mark, and Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
Furthermore, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services, or in connection with a legitimate noncommercial or fair use because the disputed domain name resolves to a website that improperly offers Complainant’s products bearing the BROOKS Mark.
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
This Panel finds that, based on the record, the Complainant has demonstrated the existence of Respondent’s bad faith registration and use pursuant to paragraph 4(b) of the Policy.
The Panel finds that Respondent uses the disputed domain name to resolve to a website that competes with Complainant. Using a confusingly similar domain name to divert Internet users to a respondent’s competing website demonstrates bad faith per Policy ¶¶ 4(b)(iii) and (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)). Here, Respondent offers discounted sportwear items on its website while displaying the BROOKS Mark along with those competing goods. The Panel finds that the goods are not authentic, although by using the disputed domain name, Respondent attempts to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant and that the goods are in fact genuine. Such conduct is emblematic of bad faith.
The Panel further concludes that Respondent used the <brooksrebajas.com> disputed domain name in bad faith because it diverted consumers onto Respondent’s website that sold Complainant’s products for its own commercial gain causing disruption of Complainant’s business. Disruption under Policy ¶ 4(b)(iii) exists if the respondent’s uses complainant’s mark in the disputed domain name in an attempt to sell the complainant’s products. Kipling Apparel Corp. v. Yan Feng Geng, FA 1703296 (Forum Dec. 20, 2016) (finding the respondent registered and used the <kiplingstores.com> domain name in bad faith per Policy ¶ 4(b)(iii) because the respondent used the domain name to sell the complainant’s products that were either counterfeit or genuine products resold without authorization).
Finally, the Panel finds that Respondent had actual knowledge of the BROOKS Mark because it repeatedly uses the BROOKS Mark on its website and in doing so, displays goods that are intended to have users believe that they belong to Complainant and are authentic, although they are not. A respondent has actual knowledge of a complainant’s trademark where that respondent has used complainant’s well-known trademark in a way that directs consumers away from complainant’s offerings. 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”).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brooksrebajas.com> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: March 16, 2021
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