Brooks Sports, Inc. v. Kennedy Mcgee / Thorsten Schmidt / Laura Schroeder
Claim Number: FA2102001932478
Complainant is Brooks Sports, Inc. (“Complainant”), represented by Mayura I. Noordyke of Cozen O’Connor, Minnesota, USA. Respondent is Kennedy Mcgee / Thorsten Schmidt / Laura Schroeder (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <brooksrunningjapan.com>, <brooksschoenennl.com> and <brookssouthafrica.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.
Charles A. Kuechenmeister, Panelist.
Complainant submitted a Complaint to the Forum electronically on February 17, 2021; the Forum received payment on February 17, 2021.
On February 26, 2021, MAT BAO CORPORATION confirmed by e-mail to the Forum that the <brooksrunningjapan.com>, <brooksschoenennl.com>, and <brookssouthafrica.com> domain names (the 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 March 2, 2021, the Forum served the Complaint and all Annexes, including a Vietnamese Written Notice of the Complaint, setting a deadline of March 22, 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@brooksrunningjapan.com, postmaster@brooksschoenennl.com, postmaster@brookssouthafrica.com. Also on March 2, 2021, the Vietnamese 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 Charles A. Kuechenmeister 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.
PRELIMINARY ISSUE: MULTIPLE DOMAIN NAMES AND RESPONDENTS
Complainant alleges that all of the Domain Names are effectively controlled by the same person or entity, which operates under the three aliases listed as Respondents. 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.” The Domain Names resolve to web pages which are for all intents and purposes identical to each other (Complaint Exhibit C). The addresses of the registrants of all three Domain Names as shown in the WHOIS report in Complaint Exhibit C are the same, all of the Domain Names are registered with the same registrar and use the same privacy service, and all of the Domain Names were registered within three days of each other in January 2021. Under these circumstances it is utterly inconceivable that the Domain Names are not owned or controlled by the same person or entity and that the named Respondents are not, or are not in fact controlled by, a single entity. The Panel finds that all three Domain Names are registered to the same person or entity and will proceed as to all of them. Except where the context requires otherwise, references to “Respondent” in this Decision, even though in the singular, refer to all three named Respondents.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDINGS
The registration agreements for the Domain Names are written in Vietnamese. Rule 11(a) provides that the language of the proceedings is the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the case. Complainant filed its Complaint in English and requests that this proceeding be conducted in English. Factors which previous panels have seen as important include evidence showing that the respondent can understand the language of the complaint, the language of the domain name, the content on any web pages resolving from the domain name, prior correspondence between the parties, and potential unfairness or unwarranted delay in ordering the translation of the pleadings and the Decision. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), at ¶ 4.5.1, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language), Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
As stated above, Complainant filed its Complaint in English, but the Written Notice of the Complaint, written in both Vietnamese and English, was served upon Respondent in accordance with Rules 1 and 2. Much of the text on the web pages to which the Domain Names resolve is in English (Complaint Exhibit C), and the Domain Names are composed of the name of the U.S.-based Complainant and the English words or abbreviations for the countries Japan, South Africa and the Netherlands. It thus appears that Respondent is conversant and proficient in the English language. Inasmuch as neither Complainant nor the Panel is proficient in Vietnamese, proceeding in that language would involve substantial additional expense and time for translation. Respondent has not submitted a Response or any indication that it desires to participate in this proceeding, in the Vietnamese language or otherwise. Under these circumstances the Panel finds that the additional time and expense of proceeding in Vietnamese would be unwarranted inasmuch as the only party who might benefit from that has declined to participate. This proceeding will be conducted in English.
Complainant requests that the Domain Names be transferred from Respondent to Complainant.
A. Complainant
Complainant manufactures and sells running shoes and athletic apparel. It has rights in the BROOKS mark through its registrations of that mark with the United States Patent and Trademark Office (“USPTO”). Respondent’s <brooksrunningjapan.com>, <brooksschoenennl.com>, and <brookssouthafrica.com> Domain Names are confusingly similar to Complainant’s BROOKS mark as they incorporate the mark in its entirety, merely adding generic and geographical terms, along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the Domain Names. It has no connection or affiliation with Complainant and Complainant has not authorized or licensed Respondent to use its BROOKS mark. Respondent is not commonly known by the Domain Names. Respondent is not using the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use, but instead passes off as Complainant and purports to offer Complainant’s products or counterfeits for sale.
Respondent registered and uses the Domain Names in bad faith. It registered the Domain Names with actual knowledge of Complainant’s rights in the BROOKS mark. It intentionally attempts for commercial gain to attract Internet users to its web sites by causing confusion as to the source, sponsorship, endorsement or affiliation of those sites with Complainant, and passes off as Complainant, purporting to offer Complainant’s goods (or counterfeits) for sale. Respondent may also phish for user information.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the 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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. 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”), WIPO Overview 3.0, at ¶ 4.3 (“In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent’s default—a complainant has failed to prove its case.”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
The BROOKS mark was registered to Complainant with the USPTO (Reg. No. 4,631,302) on November 11, 2014 (Complaint Exhibit A). Complainant’s registration of its mark with the USPTO establishes its rights in that mark for the purposes of Policy ¶ 4(a)(i). 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).”).
Respondent’s <brooksrunningjapan.com>, <brooksschoenennl.com>, and <brookssouthafrica.com> Domain Names are confusingly similar to Complainant’s BROOKS mark. They incorporate the mark in its entirety, merely adding generic[i] or geographic terms and the “.com” gTLD. These changes do not distinguish the Domain Names from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Cargill, Incorporated v. Sales Office / Cargill Brasil, FA 1737212 (Forum July 21, 2017) (finding the addition of the geographic term “Brasil” does not avoid confusing similarity pursuant to Policy ¶ 4(a)(i).), Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”). The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within the Domain Names.
For the reasons set forth above, the Panel finds that the Domain Names are identical or confusingly similar to the BROOKS mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) Before any notice to the respondent of the dispute, the respondent’s 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) The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial 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 asserts that Respondent has no rights or legitimate interests in the Domain Names because (i) Respondent has no affiliation or connection with Complainant and Complainant has not licensed or authorized it to use its mark, (ii) Respondent is not commonly known by the Domain Names, and (iii) Respondent is not using the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use because the Domain Names resolves to web sites purporting to sell Complainant’s products but which may in fact be defrauding visitors to the site. These allegations are addressed as follows:
Complainant states that Respondent is not affiliated or connected with Complainant and that it has never authorized or permitted Respondent to use its mark. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. 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 the at-issue domain name.”).
The information furnished to the Forum by the registrar lists “Kennedy Mcgee” as the registrant of the Domain Name <brooksrunningjapan.com>, “Thorsten Schmidt” as the registrant of the Domain Name <brooksschoenennl.com>, and “Laura Schroeder” as the registrant of the Domain Name <brookssouthafrica.com>. None of these names bears any resemblance to any of the Domain Names. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, and in cases where no response has been filed, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same), Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel is satisfied that Respondent has not been commonly known by the Domain Names for the purposes of Policy ¶ 4(c)(ii).
Complaint Exhibit C contains screenshots of pages on the web sites resolving from the Domain Names. The web sites are virtually identical to each other and are somewhat similar in appearance to Complainant’s web site at <brooksrunning.com> (Complaint Exhibit B). They prominently feature the name BROOKS with its registered stylized chevron logo and purport to offer Brooks running shoes for sale. The footers at the end of each web site contain a false copyright notation suggesting affiliation of the site with the Complainant, e.g., “Copyright © 2021 brooksrunningjapan Powered by brooksrunnuingjapan.com.” All three web sites clearly convey the impression that they are either sponsored by Complainant or represent an authorized dealer of Complainant’s products. Passing off as and purporting to sell a complainant’s goods is neither a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use as contemplated by Policy ¶ 4(c)(iii). 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), 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)).
The evidence furnished by Complainant establishes the required prima facie case. On that evidence, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Names.
Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(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 the 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, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site 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 web site or location or of a product of service on the respondent‘s web site or location.
The evidence of Respondent’s conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use, based upon one or more of the foregoing grounds articulated in the Policy and upon additional grounds adopted by administrative panels over the years. First, Respondent is using the Domain Names to attract, for commercial gain, Internet users to its web sites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web sites. The evidence does not establish whether Respondent is actually selling Complainant’s products (or a counterfeit) or fraudulently representing that it does, collecting money from the customer and then not delivering the products. Under either scenario, however, Respondent’s conduct fits squarely within the circumstances described in Policy ¶ 4(b)(iv) and is manifest evidence of bad faith registration and use. AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)), Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
Second, Respondent registered and is using the Domain Names, which fully incorporate the well-known BROOKS mark. As discussed above, however, Respondent has no connection with that mark or its owner, the Complainant. This may not fit precisely within any of the circumstances set forth in Policy ¶ 4(b) but that paragraph recognizes that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). Given the nonexclusive nature of Policy ¶ 4(b), the use of a domain name that is confusingly similar to a trademark with which the respondent has no connection has frequently been held to be evidence of opportunistic bad faith. Kraft Foods (Norway) v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (“[T]he fact that Respondent chosen [sic] to register a well-known mark to which [it] has no connections or rights indicates that [it] was in bad faith when registering the domain name at issue.”), Google LLC v. Noboru Maruyama / Personal, FA 2001001879162 (Forum Mar. 3, 2020) (“the registration and use of domain name that is confusingly similar to a trademark with which the respondent has no connection has frequently been held to be evidence of bad faith.”).
Finally, it is evident that Respondent had actual knowledge of Complainant and its mark when it registered the Domain Names in January 2021 (Complaint Exhibit C shows creation dates). Complainant’s BROOKS mark was registered in 1981 and had been used in commerce at least as early as 1914 (Complaint Exhibit A).[ii] Respondent copied it verbatim into the Domain Names, passes off as Complainant and purports to offer Complainant’s goods using Complainant’s name and registered logo. Given the non-exclusive nature of Policy ¶ 4(b), registering a confusingly similar domain name with actual knowledge of a complainant’s rights in its mark is evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). 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).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Names in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brooksrunningjapan.com>, <brooksschoenennl.com> and <brookssouthafrica.com> Domain Names be TRANSFERRED from Respondent to Complainant
Charles A. Kuechenmeister, Panelist
April 2, 2021
[i] The term “Schoenen” in one of the Domain Names translates to “shoes” in English. NL is a universally recognized abbreviation for the Netherlands.
[ii] The 1981 USPTO registration (Reg. No. 1,161,034) was in the name of Brooks Shoe Manufacturing Company, Inc., which is assumed to be a predecessor in interest of Complainant or perhaps the same entity prior to a corporate name change. The registration certificate included in Complaint Exhibit A shows a first use in commerce date of 1914.
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