Brooks Sports, Inc. v. Domain Admin / Whoisprotection.cc
Claim Number: FA2102001932380
Complainant is Brooks Sports, Inc. (“Complainant”), represented by Mayura I. Noordyke of Cozen O’Connor, Minnesota, USA. Respondent is Domain Admin / Whoisprotection.cc (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <brooksrunningoutlet.com> and <brookssaleuk.com>, registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED.
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 February 17, 2021; the Forum received payment on February 17, 2021.
On February 18, 2021, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to the Forum that the <brooksrunningoutlet.com> and <brookssaleuk.com> domain names are registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and that Respondent is the current registrant of the names. 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 18, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 10, 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@brooksrunningoutlet.com, postmaster@brookssaleuk.com. Also on February 18, 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 12, 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.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the at-issue domain names are effectively controlled by the same person and/or entity. 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.” The WHOIS information for the at-issue domain names indicates similar registrant information for the nominal registrants. The at-issue domain names were each registered using the registrar ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED, were registered on the same day, and use the same privacy service. Each domain name starts with Complainant’s BROOKS trademark. Each of the at-issue domain names directs internet users to websites containing identical language on certain pages and similar grammatical/typographical errors. Each displays Complainant’s trademark thereon and offers Complainant’s products for sale. Indeed, while it is possible that the underlying registrants may or may not differ nominally, they clearly appear to be related to or controlled by the same person, persons, or entity. Moreover, Complainant’s contentions regarding the common control of the at-issue domain names and its request that their registrants be treated as a single entity in the instant proceeding are unopposed. Therefore, the Panel will treat the domain names’ registrants as a single entity for the purposes of this proceeding.
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 its registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <brooksrunningoutlet.com> and <brookssaleuk.com> domain names are confusingly similar to Complainant’s BROOKS mark. Respondent incorporates the BROOKS mark in its entirety and adds generic terms “running,” “outlet,” and/or “sale,” and the geographic term “UK” along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <brooksrunningoutlet.com> and <brookssaleuk.com> domain names as Respondent is not commonly known by the at-issue domain names nor did Complainant authorize Respondent to use the BROOKS mark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent attempts to offer Complainant’ goods for sale without authorization to do so and at a discounted rate. Respondent also attempts to gather personal information from internet users.
Respondent registered and used the <brooksrunningoutlet.com> and <brookssaleuk.com> domain names in bad faith as Respondent attempts to offer Complainant’s goods for sale without Complainant’s authorization. Respondent had actual knowledge in Complainant’s rights in the BROOKS mark prior to registration of the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the BROOKS mark through its registration of such mark with the USPTO.
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 the BROOKS trademark.
Respondent uses the at-issue domain names to poses as Complainant and offer Complainant’s products at a discount without authorization to do so.
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 names are each confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the BROOKS mark with the USPTO demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Additionally, Respondent’s <brooksrunningoutlet.com> and <brookssaleuk.com> domain names each incorporate Complainant’s BROOKS mark followed by generic terms ‑either “running outlet” or “sale uk”‑ with the generic top-level domain “.com” appended thereto. Under the Policy the differences between each of the domain names and Complainant’s trademark do nothing to distinguish either domain name from Complainant’s trademark. Therefore, the Panel concludes that Respondent’s <brooksrunningoutlet.com> and <brookssaleuk.com> domain names are each confusingly similar to Complainant’s BROOKS trademark. See Starbucks Corporation d/b/a Starbucks Coffee Company v. Waseem A Ali / Micron Web Services, FA 1785616 (Forum June 8, 2018) (finding the <starbucksreal.com> domain name to be confusingly similar to the STARBUCKS mark, as “the addition of the generic term ‘real’ to Complainant's mark does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy.”), see also Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sept. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy ¶4(a)(i) analysis.”), see also MTD Products Inc v. Mike Kernea / Skyline, FA 1775278 (Forum Apr. 19, 2018) (“The mere addition of a gTLD is inconsequential and does not avoid a finding of identity.”).
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). Since Respondent failed to respond, 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)”).
Moreover, the WHOIS information for the at-issue domain names identifies the domain names’ registrant as “Doman Admin / Whoisprotection.cc” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by either at-issue domain name. The Panel therefore concludes that Respondent is not commonly known by either of the at-issue domain names for the purposes of Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”); see also Tenza Trading Ltd. v. WhoisProtectService.net / PROTECTSERVICE, LTD., FA1506001624077 (Forum July 31, 2015) (“The WHOIS information lists ‘WhoisProtectService.net’ as the registrant of record for the disputed domain names. Accordingly, in the absence of a Response, there is no evidence to indicate that Respondent might be known by any of the domain names.”).
Additionally, Respondent uses its <brooksrunningoutlet.com> and <brookssaleuk.com> domain names to pass itself off as Complainant. The domain names’ websites offer unauthorized products for sale at discounted prices while displaying Complainant’s trademark and pretending to be sponsored by Complainant. Respondent is thus resolved to trick internet users into believing there is an affiliation between Complainant and the subject websites when there is no affiliation. Respondent’s use of the at-issue domain names in this manner indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Fadal Engineering, LLC v. DANIEL STRIZICH,INDEPENDENT TECHNOLOGY SERVICE INC, FA 1581942 (Forum Nov. 13, 2014) (finding that Respondent’s use of the at-issue domain to sell products related to Complainant without authorization “does not amount to a bona fide offering of goods or services under policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also, Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). Furthermore, the domain names and their relevant websites may be used for collecting personal information via a website embedded form. Respondent’s use of the at-issue domain names to perpetrate fraud and phish for private information indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). 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).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below without limitation, there is sufficient evidence from which the Panel may conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
As mentioned above regarding rights and interests, Respondent uses the at-issue confusingly similar domain names to address websites displaying Complainant’s trademark and other references to Complainant while offering Complainant’s products for sale without Complainant’s authorization to do so. Respondent’s use of its confusingly similar <brooksrunningoutlet.com> and <brookssaleuk.com> domain names in this manner is disruptive to Complainant’s business and demonstrates bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv). See 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), see also BBY Solutions, Inc. v. Grant Ritzwoller, FA 1703389 (Forum Dec. 21, 2016) (finding bad faith because the <bestbuyus.com> domain name was obviously connected with the complainant’s well-known BEST BUY mark, thus creating a likelihood of confusion strictly for commercial gain).
Finally, Respondent had actual knowledge of Complainant’s rights in the BROOKS mark when it registered <brooksrunningoutlet.com> and <brookssaleuk.com> as domain names. Respondent’s actual knowledge is evident from Respondent’s incorporation of Complainant’s well-known trademark into each domain name, from Respondent’s unauthorized offering of Complainant’s products on websites addressed by such domain names, and from Respondent’s display of Complainant’s trademark and other references to Complainant on such websites. Respondent’s registration and use of the confusingly similar domain names with knowledge of Complainant’s rights in each such domain name 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 <brooksrunningoutlet.com> and <brookssaleuk.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 15, 2021
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