Retail Brand Alliance Inc. v. Open Water Enterprises Limited c/o Louise S
Claim Number: FA0802001153556
Complainant is Retail Brand Alliance Inc. (“Complainant”), represented by John
M. Rannells, of Baker and Rannells PA,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brooksbros.com>, registered with eNom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On March 10, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 31, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <brooksbros.com> domain name is confusingly similar to Complainant’s BROOKS BROTHERS mark.
2. Respondent does not have any rights or legitimate interests in the <brooksbros.com> domain name.
3. Respondent registered and used the <brooksbros.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Retail Brand Alliance Inc., uses the BROOKS
BROTHERS mark for clothing and retail clothing store services. Complainant registered the BROOKS BROTHERS
mark with the United States Patent and Trademark Office (“USPTO”) on
Respondent registered the <brooksbros.com>
domain name on
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."
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(e), 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. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. 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); see also 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.”).
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.
Complainant registered the BROOKS BROTHERS mark with the
USPTO. The panel in Innomed Techs., Inc. v. DRP Services, FA 221171 (Nat. Arb. Forum
The <brooksbros.com> domain name is confusingly similar to Complainant’s mark
because it fully incorporates the first term of the mark and uses a common
abbreviation of the second term. In
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant bears the initial burden of demonstrating that Respondent lacks all rights and legitimate interests in the disputed domain name, thus establishing a prima facie case. Complainant has asserted that Respondent lacks all rights and legitimate interests in the <brooksbros.com> domain name, satisfying the requirements under Policy ¶ 4(a)(ii) and effectively shifting the burden to Respondent. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Because Respondent failed to respond to the Complaint, the Panel presumes that Respondent lacks all rights and legitimate interests in the disputed domain name. The Panel will nevertheless examine all evidence in the record to determine if Respondent has any rights or legitimate interests under Policy ¶ 4(c). See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint).
The WHOIS information does not indicate that Respondent is commonly known by the disputed domain name. In Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), the panel stated that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) did not apply. Moreover, Respondent has not been authorized or licensed by Complainant to use the BROOKS BROTHERS mark. Therefore, the Panel finds that Respondent is not commonly known by the <brooksbros.com> domain name under Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent’s use of the disputed domain name to link Internet users to Complainant’s website and clothing websites competing with Complainant’s business fails to demonstrate 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 Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <brooksbros.com>
domain name to link Internet users to competing websites, receiving a referral
fee for redirecting Internet users.
Respondent is benefiting from the goodwill associated with the BROOKS
BROTHERS mark, and Respondent’s use is capable of creating confusion as to
Complainant’s source, sponsorship, affiliation, or endorsement of the website
that resolves from the disputed domain name.
The panel in G.D. Searle & Co. v. Celebrex Drugstore, FA
123933 (Nat. Arb. Forum Nov. 21, 2002) found that the respondent registered and
used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the
respondent was using the confusingly similar domain name to attract Internet
users to its commercial website. Therefore,
here, the Panel concludes that Respondent’s use of the disputed domain name
evidences registration and use in bad faith under Policy ¶ 4(b)(iv). See Sports
Moreover, by redirecting Internet users to competing websites, the Panel finds evidence of registration and use in bad faith under Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brooksbros.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 16, 2008
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