Retail Brand Alliance, Inc. v. Above.com Domain Privacy
Claim Number: FA1204001441390
Complainant is Retail Brand Alliance, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <broooksbrothers.com>, <brookesbrothers.com>, and <brooksbrothersfactorystore.com>, registered with Above.com Pty Ltd.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 27, 2012; the National Arbitration Forum received payment on April 27, 2012.
On May 8, 2012, Above.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <broooksbrothers.com>, <brookesbrothers.com>, and <brooksbrothersfactorystore.com> domain names are registered with Above.com Pty Ltd. and that Respondent is the current registrant of the names. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. 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 May 10, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 30, 2012 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@broooksbrothers.com, postmaster@brookesbrothers.com, and postmaster@brooksbrothersfactorystore.com. Also on May 10, 2012, 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 June 1, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
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 names be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <broooksbrothers.com>, <brookesbrothers.com>, and <brooksbrothersfactorystore.com> domain names are confusingly similar to Complainant’s BROOKS BROTHERS mark.
2. Respondent does not have rights or legitimate interests in the <broooksbrothers.com>, <brookesbrothers.com>, and <brooksbrothersfactorystore.com> domain names.
3. Respondent registered and used the <broooksbrothers.com>, <brookesbrothers.com>, and <brooksbrothersfactorystore.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Retail Brand Alliance, Inc., has registered the BROOKS BROTHERS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 667,458 registered September 23, 1958). Complainant uses the mark to brand its clothing line.
Respondent, Above.com Domain Privacy, registered the disputed domain names as early as March 3, 2008. Respondent’s disputed domain names resolve to a website offering links to third-party businesses, some of which compete with Complainant’s own product offerings.
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(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.”).
Complainant asserts that it has established its rights in the BROOKS BROTHERS mark by registering the mark with the USPTO (e.g., Reg. No. 667,458 registered September 23, 1958). Complainant submits multiple printouts from the USPTO website to support its assertion. The printouts provided demonstrate that the BROOKS BROTHERS mark is registered with the USPTO and that Complainant is the owner of those registrations. Therefore, the Panel finds that Complainant has established its rights in the BROOKS BROTHERS mark under Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant also asserts that Respondent’s <broooksbrothers.com>, <brookesbrothers.com>, and <brooksbrothersfactorystore.com> domain names are confusingly similar to Complainant’s BROOKS BROTHERS mark. The disputed domain names all include the entire mark, or phonetic analogs of the BROOKS BROTHERS mark, along with the generic top-level domain (“gTLD”) “.com,” while removing the space between terms. The <broooksbrothers.com> and <brookesbrothers.com> domain names both include an additional letter to Complainant’s BROOKS BROTHERS mark, the letter “o” or the letter “e.” The <brooksbrothersfactorystore.com> domain name includes the entire mark, while merely adding the generic terms “factory” and “store.” The Panel finds that Respondent has failed to sufficiently differentiate its <broooksbrothers.com>, <brookesbrothers.com>, and <brooksbrothersfactorystore.com> domain names from Complainant’s BROOKS BROTHERS mark, thereby making the domain names confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end).
The Panel finds Complainant has established Policy ¶ 4(a)(i).
The Panel finds that Complainant successfully shifted the burden of proof to Respondent by making a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain names. See F. Hoffmann-La Roche AG v. Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names.”). Respondent failed to not only meet its burden in this case, but also failed to file any Response, which allows the Panel to presume a lack of rights and legitimate interests on Respondent’s part unless the evidence submitted by Complainant contradicts such a finding. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). Therefore, the Panel will analyze the entire record before determining whether Respondent has rights or legitimate interests in the disputed domain names and will do so in accordance with the factors enumerated in Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the disputed domain names. The WHOIS information identifies the registrant of the disputed domain names as “Above.com Domain Privacy,” which the Panel notes is a privacy shield commonly used when registering domain names. The Panel also notes that there is no evidence on the record that could be construed in such a way as to contradict Complainant’s contention. Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant also contends that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names. Respondent’s disputed domain names resolve to a website offering links to third-party businesses, some of which compete with Complainant’s own product offerings, like “Nordstrom,” “Jos A. Bank,” and assorted other clothiers. The Panel finds that offering links to third-party websites does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”); see also H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Complainant alleges that Respondent has engaged in typosquatting, thereby precluding a finding that it has rights or legitimate interests in the disputed domain names. The <broooksbrothers.com> and <brookesbrothers.com>, domain names are both prototypical examples of typosquatting, where a registrant of a domain name will merely add a single letter to a mark and use that misspelling as its domain name. However, the <brooksbrothersfactorystore.com> domain name does not exemplify the characteristics of a typosquatted domain name because of the addition of the generic terms “factory” and “store.” Therefore, the Panel concludes that Respondent has engaged in typosquatting with regard to the <broooksbrothers.com> and <brookesbrothers.com> domain names, which provides supporting evidence of a lack of rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). Conversely, the Panel determines that the <brooksbrothersfactorystore.com> domain name is not an example of typosquatting and therefore does not fall within this analysis under Policy ¶ 4(a)(ii).
The Panel finds that Complainant has established Policy ¶ 4(a)(ii).
Complainant alleges that Respondent registered and uses the disputed domain names to confuse Internet users as to the affiliation and sponsorship of the resolving websites. Respondent’s disputed domain names resolve to a website offering links to Complainant’s competitors in the clothing industry. The Panel notes that Internet users may become confused as to whether or not Complainant is affiliated with the website because of the inclusion of links to clothing companies’ websites. The Panel also notes that the website includes a link to Complainant’s own website, potentially furthering that confusion. Presumably, Respondent generates revenue by collecting a small click-through fee for each Internet user it is able to divert to one of the linked websites. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv) because Respondent is attempting to commercially gain by confusing Internet users into believing that the resolving website may be affiliated with Complainant. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Complainant alleges that Respondent has engaged in typosquatting, which Complainant states is evidence of bad faith registration and use. The Panel notes that the <broooksbrothers.com> and <brookesbrothers.com> domain names are both classic examples of typosquatting. In both disputed domain names, a single letter was added to Complainant’s BROOKS BROTHERS mark, comprising what the Panel finds are common misspellings of Complainant’s mark. However, the <brooksbrothersfactorystore.com> domain name does not typify the accepted characteristics of a typosquatted domain name because generic terms were added to the mark: “factory” and “store.” Therefore, the Panel concludes that Respondent has engaged in typosquatting with regard to the <broooksbrothers.com> and <brookesbrothers.com> domain names, which provides supporting evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”) However, the Panel declines to find that Respondent engaged in typosquatting with regard to the <brooksbrothersfactorystore.com> domain name.
The Panel finds that Complainant has established Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <broooksbrothers.com>, <brookesbrothers.com>, and <brooksbrothersfactorystore.com> domain names be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: June 14, 2012
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