Retail Brand Alliance, Inc. v. c/o BROOKSBROTHER.COM
Claim Number: FA1111001416335
Complainant is Retail Brand Alliance, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is identified as c/o BROOKSBROTHER.COM (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brooksbrother.com>, registered with DotRegistrar.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 18, 2011; the National Arbitration Forum received payment on November 18, 2011.
On November 21, 2011, DotRegistrar confirmed by e-mail to the National Arbitration Forum that the <brooksbrother.com> domain name is registered with DotRegistrar and that Respondent is the current registrant of the name. DotRegistrar has verified that Respondent is bound by the DotRegistrar 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 November 28, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 19, 2011 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@brooksbrother.com. Also on November 28, 2011, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 30, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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" 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 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:
Complainant markets specialty business, contemporary and leisure apparel and accessories for men, women and children under its BROOKS BROTHERS mark.
Complainant owns trademark registrations on file with the United States Patent and Trademark Office (“USPTO”) for its BROOKS BROTHERS mark (including Reg. No. 667,458, registered September 23, 1958).
Respondent registered the <brooksbrother.com> domain name on May 2, 2000.
The disputed domain name resolves to a website at which Internet users encounter a pop-up window advising that they have won a prize, and then a second pop-up window requiring them to enter their personal information which purports to enter them in to a survey and rewards program they must complete in order to receive the prize.
Respondent’s <brooksbrother.com> domain name is confusingly similar to Complainant’s BROOKS BROTHERS mark.
Respondent has not been commonly known by the disputed domain name.
Respondent is not sponsored by or affiliated with Complainant, and Respondent is not permitted to use Complainant’s BROOKS BROTHERS trademark in a domain name.
Respondent does not have any rights to or legitimate interests in the domain name <brooksbrother.com>.
Respondent both registered and uses the <brooksbrother.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has rights in its BROOKS BROTHERS trademark under Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that, where a complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that a complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in a mark pursuant to Policy ¶ 4(a)(i)).
Respondent’s <brooksbrother.com> domain name differs from Complainant’s BROOKS BROTHERS mark by the removal of the space between its terms and of the letter “s” in Complainant’s mark, together with the addition of the generic top-level domain (“gTLD”) “.com.” These alterations of the mark in forming the contested domain name are insufficient to remove the <brooksbrother.com> domain name from the realm of confusing similarity with the mark for purposes of Policy ¶ 4(a)(i). See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from a complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also Keystone Publ’g., Inc. v. UtahBrides.com, D2004-0725 (WIPO Nov. 17, 2004) (finding that the <utahwedding.com> domain name was confusingly similar to the complainant’s UTAHWEDDINGS.COM mark because the domain name simply lacked the letter “s”); further see Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007):
The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have any rights to or legitimate interests in the <brooksbrother.com> domain name. Under Policy ¶ 4(a)(ii), once Complainant has made out a prima facie showing in support of this assertion, the burden shifts to Respondent to prove that it does have rights to or legitimate interests in the contested domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), finding that:
complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.
Complainant has made out a sufficient prima facie case under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to presume that Respondent does not have rights to or legitimate interests in the <brooksbrother.com> domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to the allegations of a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence).
Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for con-cluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by observing that Complainant alleges, and Respondent does not deny, that Respondent has not been commonly known by the disputed domain name, that Respondent is not sponsored by or affiliated with Complainant, and that Respondent is not permitted to use Complainant’s BROOKS BROTHERS trademark in a domain name. Moreover, while the pertinent WHOIS information identifies the registrant of the <brooksbrother.com> domain name as “c/o BROOKSBROTHER.COM” , Respondent has not provided any evidence to indicate that it has commonly been known by the contested domain name. on this record, we therefore conclude that Respondent is not commonly known by the <brooksbrother.com> domain name so as to have demonstrated that it has rights to or legitimate interests in that domain name pursuant to Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that a respondent was not “commonly known by” the <shantiyoga-works.com> domain name, and so had failed to show that it had rights to or legitimate interests in that domain name, despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although a respondent listed itself as “AIM Profiles” in the relevant WHOIS contact information, there was no evidence in the record to suggest that that respondent was commonly known by a disputed domain name).
We also note that Complainant asserts, without objection from Respondent, that Respondent’s <brooksbrother.com> domain name resolves to a website that features a pop-up window telling Internet users that they have won a prize, and that a second pop-up window requires Internet users to complete a survey and enter their e-mail addresses in order to claim their prizes. This use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain under Policy ¶ 4(c)(iii). See Victoria’s Secret Stores Brand Mgmt., Inc. v. egyGossip.com, FA 1288062 (Nat. Arb. Forum Nov. 20, 2009) (holding that the use of a disputed domain name confusingly similar to the mark of another to offer a complainant’s gift cards in exchange for completion of surveys by Internet users was not a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Homer TLC, Inc. v. Wang, FA 1336037 (Nat. Arb. Forum Aug. 23, 2010) (finding that the “[r]espondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)” when the disputed domain name resolved to a survey website that purported to offer Internet users a gift card usable at a complainant’s stores).
The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent presumably benefits commercially, whether directly or by the receipt of referral fees, when Internet users complete the survey and enter the rewards program featured on the website resolving from the contested domain name. For this reason, and because Respondent’s domain name is confusingly similar to Complainant’s BROOKS BROTHERS trademark, Respondent’s registration and use of the domain in this manner stands as evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name there in question was obviously connected with a complainant’s marks, thus creating a likelihood of confusion among Internet users for a respondent’s commercial gain); see also Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used the complainant’s well-known mark to attract users to the respondent's website).
Because Respondent’s <brooksbrother.com> domain name differs from Complainant’s BROOKS BROTHERS trademark by a single letter, it is evident that Respondent chose this domain name as part of a scheme to take advantage of common typing mistakes of Internet users searching for the website of Complainant on the Internet. This practice, called typo-squatting, is also evidence that Respondent registered and uses the domain in bad faith within the meaning of Policy ¶ 4(a)(iii). See Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding that a respondent registered and used a domain name in bad faith where that respondent “created ‘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’. . . through Respondent’s persistent practice of ‘typosquatting’”); see also Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that a respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form).
For these reasons, the Panel finds that Complainant has satisfied its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <brooksbrother.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 7, 2012
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