Brooks Brothers Group, Inc. v. Zhichao Yang
Claim Number: FA1303001488737
Complainant is Brooks Brothers Group, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Zhichao Yang (“Respond-ent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brooksbrothers.co>, registered with GODADDY.COM, INC.
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 March 6, 2013; the National Arbitration Forum received payment on March 6, 2013.
On March 7, 2013, GODADDY.COM, INC. confirmed by e-mail to the National Arbitration Forum that the <brooksbrothers.co> domain name is registered with GODADDY.COM, INC. and that Respondent is the current registrant of the names. GODADDY.COM, INC. has verified that Respondent is bound by the GODADDY.COM, INC. 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 March 7, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 27, 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@brooksbrothers.co. Also on March 7, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail address-es 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 April 4, 2013, 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 retailer of specialty business, contemporary and leisure appar-el and accessories.
Complainant holds registrations, on file with the United States Patent and Trade-mark Office (“USPTO”) for the BROOKS BROTHERS trademark (including Reg. No. 667,458, registered September 23, 1958).
Respondent registered the disputed <brooksbrothers.co> domain name no earlier than September 23, 2011.
Respondent’s 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 in any way.
Complainant has not given Respondent permission to use Complainant’s BROOKS BROTHERS mark in a domain name.
Respondent uses the disputed domain name to redirect unsuspecting Internet users to a website featuring pay-per-click links to third-party websites, some of which directly compete with Complainant’s business.
Respondent has no rights to or legitimate interests in respect of the disputed domain name.
Respondent is a serial cyber-squatter and typo-squatter.
The domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is substantively identical 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 for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a UDRP complainant’s rights in a mark under Policy ¶ 4(a)(i)).
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 in which Respondent resides or does business (here China). See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that under Policy ¶ 4(a)(i) it does not matter whether a com-plainant has registered its trademark in the country in which a respondent re-sides, only that it can establish rights in its mark in some jurisdiction).
Turning then to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <brooksbrothers.co> domain name is confusingly similar to Complainant’s BROOKS BROTHERS mark. The domain name contains the entire mark, absent only the space between the terms of the mark, and adding the country code top-level domain (“ccTLD”) “co.” These al-terations of the mark, made in creating the domain name, fail to save the domain name from the realm of confusing similarity under the standards of the Policy. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007):
Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a [TLD] does not sufficiently distinguish the disputed domain name from the mark pursuant to 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 a 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 branch 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 finding 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 ex-amine 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 Respond-ent 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 <brooksbrothers.co> domain name domain name, that Respondent is not sponsored by or affiliated with Complainant in any way, and that Complainant has not given Respondent permission to use Complainant’s BROOKS BROTHERS mark in a domain name. Moreover, the pertinent WHOIS information identifies the registrant of the dis-puted domain name only as “Zhichao Yang,” which does resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed do-main name so as to have acquired rights to or legit-imate interests in it within the meaning of Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVEL-ERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding, based on the relevant WHOIS information and other evi-dence in the record, that a re-spondent was not commonly known by the domain name <cigaraficionada.com>, and so had failed to show that it had rights to or legitimate interests in that domain name as described in Policy ¶ 4(c)(ii)).
We next observe that Complainant contends, without objection from Respondent, that Respondent uses the disputed domain name to redirect unsuspecting Inter-net users to a website featuring pay-per-click links to third-party websites, some of which directly compete with Complainant’s business. This is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use of the domain name under Policy ¶ 4(c)(iii). See, for ex-ample, Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that a respondent had not demonstrated either a bona fide offering of goods or services or a legitimate non-commercial or fair use of a domain name where “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded from the evidence that, as alleged in the Complaint, Respond-ent is a serial cyber-squatter, having been party to a number of UDRP proceed-ings in which it was found to have appropriated the marks of others, incorporating them in bad faith in domain names which were ordered transferred to various mark owners. See Capital One Financial Group Corp. v. Zhichao Yang, FA 1473336 (Nat. Arb. Forum January 9, 2013); Redcats USA v. Zhichao Yang, FA 1462454 (Nat. Arb. Forum October 10, 2012); and Wells Fargo & Company v. Zhichao Yang, FA 1477756 (Nat. Arb. Forum February 7, 2013). Under Policy ¶ 4(b)(ii), this pattern of behavior may be taken as evidence of bad faith registration and use of the domain name here at issue. See Liberty Mut. Ins. Co. v. Bing Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
We are likewise convinced that Respondent’s employment of a domain name which is confusingly similar, indeed substantively identical, to Complainant’s BROOKS BROTHERS mark, to operate for Respondent’s profit the website resolving from that domain name disrupts Complainant’s business, which itself demonstrates bad faith registration and use of the domain name under Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008):
Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
Accordingly, 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 <brooksbrothers.co> domain name be forth-with TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 10, 2013
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