Brooks Brothers Group, Inc. v. Private Registration / WhoisGuardService.com
Claim Number: FA1302001484267
Complainant is Brooks Brothers Group, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Private Registration / WhoisGuardService.com (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brooksbothers.com>, registered with Nanjing Imperiosus Technology Co. Ltd.
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.
James A. Carmody, Esq., as Panelist.
On February 10, 2013, Nanjing Imperiosus Technology Co. Ltd. confirmed by e-mail to the National Arbitration Forum that the <brooksbothers.com> domain name is registered with Nanjing Imperiosus Technology Co. Ltd. and that Respondent is the current registrant of the names. Nanjing Imperiosus Technology Co. Ltd. has verified that Respondent is bound by the Nanjing Imperiosus Technology Co. 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 February 19, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of March 11, 2013 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@brooksbothers.com. Also on February 19, 2013, the Chinese 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 25, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <brooksbothers.com> domain name, the domain name at issue, is confusingly similar to Complainant’s BROOKS BROTHERS mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Brooks Brother Group, Inc., is a leading retailer of high end specialty business, contemporary, and leisure apparel and accessories. Complainant specializes in the retail of men’s and women’s clothing, and children’s clothing, such as dress shirts and ties, children’s wear, accessories like footwear, briefcases, umbrellas, and hats. To support this business, Complainant has spent millions of dollars in advertisement and promotion of the marks through its website located at <brooksbrothers.com>. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the BROOKS BROTHERS mark (e.g., Reg. No. 667,458, registered September 23, 1958).
Respondent’s <brooksbothers.com> domain name is confusingly similar to Complainant’s mark because it differs by only a single character from Complainant’s mark. Respondent has not been commonly known by the disputed domain name. Respondent is using the disputed domain name to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Respondent’s advertised pay-per-click links are displayed on the resolving websites which promote products that compete with Complainant. The earliest date on which Respondent registered the disputed domain name was December 14, 2006.
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, Brooks Brother Group, Inc., is a leading retailer of high end specialty business, contemporary, and leisure apparel and accessories. It specializes in the retail of men’s and women’s clothing, and children’s clothing, such as dress shirts and ties, children’s wear, accessories like footwear, briefcases, umbrellas, and hats. Complainant has spent millions of dollars in advertisement and promotion of the marks through its website located at <brooksbrothers.com>. Complainant is the owner of trademark registrations with the USPTO for the BROOKS BROTHERS mark (e.g., Reg. No. 667,458, registered September 23, 1958). Although Respondent appears to reside in China, the Panel finds that Complainant does not need to register its mark in the country in which Respondent operates. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Accordingly, Complainant’s registration of the BROOKS BROTHERS mark with the USPTO demonstrates its rights in the mark pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Respondent’s <brooksbothers.com> domain name is confusingly similar to Complainant’s mark because it differs by only a single character from Complainant’s mark. The disputed domain name contains the removal of only one character. Respondent removes the “r” in Complainant’s BROOKS BROTHERS mark. The elimination of a letter in Complainant’s mark does not differentiate the domain name from the mark under Policy ¶ 4(a)(i). See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). Also, Respondent removes the space in Complainant’s BROOKS BROTHERS mark and adds the generic top-level domain (“gTLD”) “.com.” In Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007), the panel held that the elimination of spaces between terms and the addition of a gTLD does not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i). Thus, the Panel concludes that Respondent’s <brooksbothers.com> domain name is confusingly similar to Complainant’s BROOKS BROTHERS mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent 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.”).
The WHOIS information lists “Private Registration / WhoisGuardService.com” as the registrant of the disputed domain name. Complainant asserts that Respondent is not sponsored by or legitimately affiliated with Complainant in any way and that it has not given Respondent permission to use Complainant’s mark in a domain name. Respondent fails to provide additional evidence that it is commonly known by the disputed domain name. Prior panels have found that the respondent was not known by the domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006). Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Respondent is using the disputed domain name to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Respondent presumably receives pay-per-click fees from these linked websites. The Panel notes that Respondent’s domain name resolves to a website featuring links for Complainant’s website at <brooksbrothers.com>, “JOS A BANK MENS DRESS SHIRTS,” “RALPH LAUREN ONLINE,” and other links to clothing stores. Respondent’s use of the disputed domain name to provide links to Complainant and Complainant’s competitors is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent’s advertised pay-per-click links displayed on the resolving websites promote products that compete with Complainant. Respondent’s domain name resolves to a website featuring links to other clothing stores, such as “JOS A BANK MENS DRESS SHIRTS,” “RALPH LAUREN ONLINE,” and others. These links therefore divert potential customers away from Complainant to third-party websites, which disrupts Complainant’s business. In Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008), the panel held that respondent’s use of the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii). Therefore, the Panel determines that Respondent’s use of the disputed domain name disrupts Complainant’s business under Policy ¶ 4(b)(iii).
Respondent is using the disputed domain name website in connection with generating revenue as a “click-through” website. Respondent’s setting up of a “click through” website for which it likely receives revenue for each misdirected Internet user obviously demonstrates Respondent’s bad faith. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brooksbothers.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: March 27, 2013
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