Brooks Sports, Inc. v. sophia fisher / Elena Wortmeier / Astrid Rompza / vedat kurt
Claim Number: FA2103001939507
Complainant is Brooks Sports, Inc. (“Complainant”), represented by Kevin M. Gibbs of Cozen O’Connor, Minnesota, USA. Respondent is sophia fisher / Elena Wortmeier / Astrid Rompza / vedat kurt (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <brooksaustria.com>, <brooksrunningschweiz.com>, <brookssaldiitalia.com>, and <brooks-turkiye.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 29, 2021; the Forum received payment on March 29, 2021.
On April 6, 2021, MAT BAO CORPORATION confirmed by e-mail to the Forum that the <brooksaustria.com>, <brooksrunningschweiz.com>, <brookssaldiitalia.com>, and <brooks-turkiye.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 April 13, 2021, the Forum served the Complaint and all Annexes, including a Vietnamese language Written Notice of the Complaint, setting a deadline of May 3, 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@brooksaustria.com, postmaster@brooksrunningschweiz.com, postmaster@brookssaldiitalia.com, postmaster@brooks-turkiye.com. Also on April 13, 2021, the Vietnamese language 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 May 6, 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 alleges 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. All the at-issue domain names incorporate the BROOKS mark along with a geographic or foreign term, the webpages associated with the at-issue domains are very similar, and all of the domain names were registered with the same registrar, MAT BAO CORPORATION, within a two-day time span. 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.
PRELIMINARY ISSUE: SUPPORTED LANGUAGE REQUEST
The relevant domain name registration agreement is written in Vietnamese, thereby making the language of the proceedings Vietnamese. Nevertheless, Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to conclude that the Respondent is conversant and proficient in the English language. Some of Respondent’s domain names incorporate the English words and all target a company headquartered in the United States. Similarly, the webpages addressed by the at-issue domain names offer some of their content in English. These circumstances give rise to the unrebutted presumption that Respondent is proficient in English. Furthermore, conducting the proceedings in Vietnamese would unduly and unnecessarily burden Complainant. Moreover, although proper notice of this proceeding, written in Vietnamese, was served on Respondent, Respondent made no objection with regard to the language of the proceedings being in English. Therefore, the Panel concludes that this proceeding should continue in English. See Morgan Stanley v. NaShan, FA1703414 (Forum Dec. 14, 2016) (holding proceedings in English language because the registration of a .store domain “primarily targets English-speaking Internet users” and the disputed name contains English words); see also, The Toronto-Dominion Bank v. Long Xiang, FA1817214 (Forum Dec. 11, 2018) (holding the proceeding should proceed in English because the term TD BANK, which is the dominant portion of one of the two disputed domain names at issue, does not carry any specific meaning in the Chinese language); see also, Siemens AG v. Li Chang Kong, D2017-1968 (WIPO, Nov. 29, 2017) (proceeding with English language despite Chinese registration agreement because the disputed domain names consisted of Latin letters, rather than Chinese characters).
A. Complainant
Complainant contends as follows:
Complainant, Brooks Sports, Inc., is in the athletic clothing and footwear industry.
Complainant has rights in the BROOKS mark based upon the registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <brooksaustria.com>, <brooksrunningschweiz.com>, <brookssaldiitalia.com>, and <brooks-turkiye.com> domain names are confusingly similar to Complainant’s BROOKS mark because they wholly incorporate the mark, simply adding generic and/or geographic terms and the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the at-issue domain names. Respondent is not licensed or authorized to use Complainant’s BROOKS mark and is not commonly known by any of the domain names. Additionally, Respondent doesn’t use the domains names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain names to pass itself off as Complainant by redirecting users to webpages that bear Complainant’s marks and offer competing products. Additionally, Respondent uses the domain names in connection with potentially fraudulent activities.
Respondent registered and uses the disputed domain names in bad faith. Respondent attempts to attract Internet users to its websites for commercial gain by offering competing products under Complainant’s mark. Additionally, Respondent had actual knowledge of Complainant’s rights in the BROOKS mark when it registered the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding. However the Panel notes that the <brooksaustria.com> domain name was registered on February 22, 2021 and the <brooksrunningschweiz.com>, <brookssaldiitalia.com>, and <brooks-turkiye.com> domain names were registered on February 23, 2021.
Complainant has rights in the BROOKS mark.
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 for sale at discount rates 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 <brooksaustria.com>, <brooksrunningschweiz.com>, <brookssaldiitalia.com>, and <brooks-turkiye.com> domain names each incorporate Complainant’s BROOKS trademark followed by generic geographic terms. One domain name includes a hyphen, and another includes the suggestive term, “running.” Each domain name concludes with the top-level “.com.” Under the Policy the differences between each of the domain names and Complainant’s trademark do nothing to distinguish any of the domain names from the BROOKS mark. Therefore, the Panel concludes that Respondent’s <brooksaustria.com>, <brooksrunningschweiz.com>, <brookssaldiitalia.com>, and <brooks-turkiye.com> domain names are each confusingly similar to Complainant’s BROOKS trademark. See Ant Small and Micro Financial Services Group Co., Ltd. v. Ant Fin, FA 1759326 (Forum Jan. 2, 2018) (“Respondent’s <antfinancial-investorrelations.com> Domain Name is confusingly similar to Complainant’s ANT FINANCIAL mark. It incorporates the mark entirely. It adds a hyphen, the descriptive terms “investor relations,” and the “.com” gTLD, but these additions are insufficient to distinguish the Domain name from complainant’s mark for the purposes of Policy ¶ 4(a)(i).”); see also Ticketmaster Corp. v. Kumar, FA 744436 (Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark); 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 “Sophia Fisher / Elena Wortmeier / Astrid Rompza / Vedat Kurt” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by any at-issue domain name. The Panel therefore concludes that Respondent is not commonly known by any at-issue domain name 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.”).
Respondent uses its <brooksaustria.com>, <brooksrunningschweiz.com>, <brookssaldiitalia.com>, and <brooks-turkiye.com> domain names to pass itself off as Complainant. The domain names’ websites offer unauthorized products for sale prices while displaying Complainant’s trademark along with images and product photos from Complainant’s genuine website. The websites addressed by the confusingly similar domain names thus pretend to be sponsored by Complainant, when they are not. Respondent thus intends to deceive internet users into believing there is an affiliation between Complainant and Respondent’s misleading websites when there is no such affiliation. The websites also appear to be fraudulent in their offerings as internal references are sometimes nonsensical and unrelated to the products being offered for sale. 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).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of each at-issue domain names 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 confusingly similar at-issue domain names to address websites displaying Complainant’s trademark along with other content related to Complainant. The websites addressed by the at-issue domain names offer Complainant’s products for sale without Complainant’s authorization to do so. Respondent’s use of its confusingly similar 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 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).”).
Additionally, Respondent had actual knowledge of Complainant’s rights in the BROOKS trademark when it registered <brooksaustria.com>, <brooksrunningschweiz.com>, <brookssaldiitalia.com>, and <brooks-turkiye.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 the websites addressed by the domain names. Respondent’s registration and use of the confusingly similar domain names with knowledge of Complainant’s rights in each such domain names further 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 <brooksaustria.com>, <brooksrunningschweiz.com>, <brookssaldiitalia.com>, and <brooks-turkiye.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 7, 2021
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