Brooks Brothers Group, Inc. v. Above.com Domain Privacy
Claim Number: FA1210001469183
Complainant is Brooks Brothers Group, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brookesbros.com>, registered with ABOVE.COM PTY LTD.
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 electron-ically on October 25, 2012; the National Arbitration Forum received payment on October 25, 2012.
On October 29, 2012, ABOVE.COM PTY LTD. confirmed by e-mail to the Nation-al Arbitration Forum that the <brookesbros.com> domain name is 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 October 30, 2012, the Forum served the Complaint and all Annexes, includ-ing a Written Notice of the Complaint, setting a deadline of November 19, 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, adminis-trative, and billing contacts, and to postmaster@brookesbros.com. Also on October 30, 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 December 3, 2012, 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 Not-ices, 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
Complainant is a leading retailer of high end specialty business, contemporary and leisure apparel and accessories.
Complainant owns and operates a website at <brooksbrothers.com>.
Complainant holds trademark registrations, on file with the United States Patent and Trademark Office (“USPTO”) for the BROOKS BROTHERS mark (including Reg. No. 667,458, registered September 23, 1958).
Respondent registered the disputed domain name on November 25, 2009.
Respondent’s <brookesbros.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 otherwise affiliated with Complainant, and Complainant has not given Respondent permission to use Complainant’s mark in a domain name.
Respondent uses the disputed domain name to redirect Internet users to a web-site featuring links to third-party websites, some of which directly compete with Complainant’s business, from the operation of which websites Respondent pre-sumably receives “pay-per-click” fees.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent’s employment of the contested domain name disrupts Complainant’s business.
Respondent has registered and is using the disputed domain name in bad faith.
B. Respondent
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."
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 can-celled 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representa-tions 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 Verti-cal 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 reason-able 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.”
Complainant has rights in the BROOKS BROTHERS trademark under Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003):
Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the … mark.
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that of Respondent’s place of residence or place of business (here Australia). See Ren-aissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. For-um Apr. 23, 2007) (finding that it does not matter for purposes of the Policy whether a UDRP complainant has acquired rights in its trademark by registering the mark in the country in which a respondent resides, only that it can establish such rights in some jurisdiction).
Turning then to the central question arising under Policy ¶ 4(a)(i), we conclude from our review of the record that Respondent’s <brookesbros.com> domain name is confusingly similar to Complainant’s BROOKS BROTHERS mark. The domain name fully incorporates the first term of the mark and uses a common abbreviation for the second term, also adding the letter “e” to the first term and the generic top level domain (“gTLD”) “.com” to complete the domain name. These alterations of the mark, made in creating the domain name, do not dis-tinguish the domain name from the mark under the standards of the Policy. See Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to a UDRP complain-ant’s AMAZON.COM mark). See also Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name was confusingly similar to a UDRP complainant’s MINNESOTA STATE LOT-TERY mark under Policy ¶ 4(a)(i)). Further 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 of a UDRP complainant’s mark and the addition of a gTLD do not establish distinctiveness of the resulting domain name from that mark under Policy ¶ 4(a)(i)).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting 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 Complainant has not given Respondent permission to use Complainant’s mark in a domain name. Moreover, the pertinent WHOIS information identifies the regis-trant of the domain name only as “Above.com Domain Privacy,” which does not resemble the domain name. On this record we conclude that Respondent has not been commonly known by the disputed domain name so as to have demon-strated that it has rights to or legitimate interests in the domain name within the contemplation of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a re-spondent was not commonly known by the <coppertown.com> domain name, and so had failed to show that it had rights to or legitimate interests in that do-main name under Policy ¶ 4(c)(ii), where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the disputed domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent is using the disputed domain name to redirect Internet users to a website featuring links to third-party websites, some of which directly compete with Complainant’s business, for which Respondent presumably receives “pay-per-click” fees. This employment of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommer-cial or fair use under Policy ¶ 4(c)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because a “[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 ser-vices or a legitimate noncommercial or fair use).
The Panel therefore finds that Complainant has satisfied the requirements of Pol-icy ¶ 4(a)(ii).
We are persuaded from the evidence that Respondent’s employment of the contested domain name in the manner described in the Complaint disrupts Complainant’s business. This stands as evidence of bad faith registration and use of the domain name under Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008):
The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).
We are likewise convinced from the evidence that Respondent must profit from the diversion of Internet users to the click-through websites links to which are featured on its resolving website. That this is so, and that it results from the employment of a domain name which is confusingly similar to Complainant’s BROOKS BROTHERS trademark and thus causes confusion among Internet users as to the possibility of Complainant’s association with the domain name, is evidence that Respondent has registered and uses the disputed domain name in bad faith under Policy ¶4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith registration and use of a domain name under Policy ¶ 4(b)(iv) where a respondent’s domain name resolved to a website featuring links to third-party websites that offered services similar to those marketed by a UDRP complainant).
For these reasons, the Panel finds that Complainant has met 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 <brookesbros.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 14, 2012
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