Brooks Sports, Inc. v. Dirk Nadel / Lukas Fink
Claim Number: FA2102001931287
Complainant is Brooks Sports, Inc. (“Complainant”), represented by Mayura I. Noordyke of Cozen O’Connor, Minnesota, USA. Respondents are Dirk Nadel and Lukas Fink, unrepresented, both of Germany.
REGISTRARS AND DISPUTED DOMAIN NAMES
The domain names at issue are <brooksschweiz.org> and <brooksnewzealand.com>, registered respectively with Web Commerce Communications Limited dba WebNic.cc and 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 8, 2021; the Forum received payment on February 8, 2021.
Web Commerce Communications Limited dba WebNic.cc and MAT BAO CORPORATION confirmed by e-mail to the Forum on February 9, 2021 and on February 18, 2021, respectively, that the <brooksschweiz.org> and <brooksnewzealand.com> domain names are registered with them and that the current registrants of the names were, respectively, Dirk Nadel and Lukas Fink.
The Registrars also verified that Dirk Nadel and Lukas Fink were bound by the Registrar’s respective registration agreements and had 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 22, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 15, 2021 by which Dirk Nadel and Lukas Fink could file a Response to the Complaint, via e-mail to all entities and persons listed on the respondents’ registrations as technical, administrative, and billing contacts, and to postmaster@brooksschweiz.org and to postmaster@brooksnewzealand.com.
On that same day, February 22, 2021, the Written Notice of the Complaint, notifying respondents of the e-mail addresses served and the deadline for a Response, was transmitted to respondents via post and fax, to all entities and persons listed on respondents’ registrations as technical, administrative and billing contacts.
Having received no response from respondents, the Forum transmitted to the parties a Notification of Respondent Default.
On March 19, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 respondents.
Complainant requests that the domain names be transferred from respondents to Complainant.
PRELIMINARY PROCEDURAL ISSUE: MULTIPLE RESPONDENTS
The disputed domain names are not owned by the one party. 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.” Nevertheless, Complainant has alleged that the domain names are effectively controlled by a single person and/or entity, operating under two aliases. The approach taken by the majority of panelists under the Policy is to allow a single administrative proceeding in respect names not commonly held in the one name if there is reasonable evidence of that claim. Here the evidence of common ownership is that the disputes domain names (i) were registered within a week of each other, (ii) are similarly composed of the trademark followed by a country name (iii) resolve to similar websites which, albeit in different languages, have almost identical homepages and products offerings, (iv) both respondents are in Germany, and (v) use the same email provider.
The Panel considers this to be ample evidence of Complainant’s assertion of a single controlling entity and so allows these proceedings to continue against both of the named respondents, hereinafter referring to them together as “Respondent”.
PRELIMINARY PROCEDURAL ISSUE: LANGUAGE OF THE PROCEEDINGS
The Panel notes the Registration Agreement for <brooksnewzealand.com> is in Vietnamese thereby making the language of the proceedings for that disputed domain name, Vietnamese, under Rule 11(a). Nevertheless, Complainant requests that the proceedings continue in the English language and under the Rules the Panel has discretion to allow that request.
In considering similar requests, UDRP panels have in the past taken account of factors which indicate a respondent’s proficiency with the English language[i]. Here, Complainant contends in support of its request that the domain name contains (i) the English name “BROOKS” and is targeted at Complainant, which is a company headquartered in the United States; (ii) the “.com” gTLD, which is the largest top-level domain and is often used by international entities for international websites; and (iii) English language text. The Panel finds that submissions (i) and (ii) provide no evidence of Respondent’s proficiency in English. However, the fact that the resolving website carries English language descriptions and other statements is sufficient evidence to warrant that the proceedings should be in English. Pursuant to Rule 11(a), the Panel determines that the remainder of the proceedings should be conducted in English[ii].
The factual findings pertinent to the decision in this case are that:
1. Complainant sells athletic footwear and clothing by reference to the trademark BROOKS;
2. Complainant owns, inter alia, United States Patent and Trademark Office (“USPTO”) Reg. No. 1,161,034, registered July 14, 1981 for BROOKS;
3. Respondent registered the disputed domain names in January, 2021;
4. there is no relationship between the parties and Complainant has not authorized Respondent to use its trademark or register any domain name incorporating that trademark; and
5. the disputed domain names resolve to essentially similar websites showing Complainant’s trademark and a logo version thereof, together with footwear for sale bearing the same, plus other indicia of a website maintained by Complainant.
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 based on 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory[iii].
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights[iv]. Complainant provides evidence of a national registration for the trademark BROOKS and so the Panel finds that Complainant has rights in that trademark.
The domain names takes the trademark to which they add either the country name “New Zealand” or “Schweiz” (Switzerland) and the “.com” or “.org” gTLD. None of the additions carry any distinctive value and the trademark remains the recognizable part of the disputed domain names. It follows that the Panel finds the disputed domain names to be confusingly similar to the trademark for the purposes of paragraph 4(a)(i) of the Policy[v].
Accordingly, Complainant has satisfied the first element of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved, based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests[vi].
The names of the underlying domain name holders do not provide any prima facie evidence that Respondent might be commonly known by the disputed domain names. Complainant provides screenshots of the resolving webpages which show for sale what Complainant describes as “competing unauthorized products”. Complainant stops short of labelling those goods as counterfeit and refers instead to the case of Oki Data Americas, Inc. v. ASD, Inc., Case No. D2001-0903 (WIPO Nov. 6, 2001) which decided that for a respondent to show a bona fide interest under the Policy it must meet certain criteria[vii] which are not met here. The Panel is in agreement. Furthermore, use of a disputed domain name to offer products that compete with a complainant’s business is not a bona fide offering of goods or services or legitimate noncommercial or fair use under the Policy[viii].
The Panel finds that Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names. The onus shifts to Respondent to establish a legitimate interest and, absent a Response, that prima facie case is not rebutted. The Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied this second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered and used in bad faith.
Guidance is found in paragraph 4(b) of the Policy which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
The Panel finds that paragraph 4(b)(iv) has direct application. The Panel has already found the disputed domain names to be confusingly similar to the trademark; their very nature falsely suggests that the websites belong to Complainant or are endorsed by Complainant. Absent a reasoned Response, the Panel has not been presented with any explanation for use of Complainant’s mark. The Panel finds that Respondent did not have a legitimate use in mind when registering the domain names and so finds registration in bad faith under the Policy. Further, in terms of the Policy the Panel finds that Respondent has intentionally used the domain names to attract, for commercial gain, Internet users to the resolving websites by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of those websites. The Panel finds registration and use in bad faith and so finds that Complainant has satisfied the third and final element of the Policy[ix].
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brooksschweiz.org> and <brooksnewzealand.com> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Date: March 22, 2021
[i] See, for example, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009); see also Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006).
[ii] See, for example, FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001) finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English; see also Coupang Corp. v. Hyung Jun Lim, Case No. FA1906001847602 (Forum July 20, 2019); CrossFit, Inc. v. Whois Agent, Domain Whois Privacy Prot. Serv. / James Chang, Case No. D2016-1893 (WIPO Nov. 9, 2016).
[iii] See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true; Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”)
[iv] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)
[v] See, for example, 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); see also General Motors LLC v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1656166 (Forum Feb. 12, 2016) finding <gm-uzbekistan.com> confusingly similar to complainant’s GM mark as the addition of the geographic term “uzbekistan” is inconsequential to a Policy ¶ 4(a)(i) analysis; AXA China Region Ltd. v. KANNET Ltd., Case No. D2000-1377 (WIPO Nov. 29, 2000) finding that common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights).
[vi] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[vii] According to that decision, a respondent must meet the following standards: (i) respondent must actually be offering the goods or services at issue; (ii) 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.
[viii] See, for example, Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
[ix] See, for example, Hewlett-Packard Co. v. Ali, FA 353151 (Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); Fanuc Ltd v. Mach. Control Servs., FA 93667 (Forum Mar. 13, 2000) finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products.
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