national arbitration forum

 

DECISION

 

Brooks Brothers Group, Inc. v. Isaac Goldstein

Claim Number: FA1303001488928

PARTIES

Complainant is Brooks Brothers Group, Inc. (“Complainant”), represented by CitizenHawk, Inc., California.  Respondent is Isaac Goldstein (“Respondent”), Hong Kong Special Administrative Region.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wwwbrooksbrothers.com>, registered with Vedacore.com, Inc.

 

PANEL

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.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 7, 2013; the National Arbitration Forum received payment on March 7, 2013.

 

On March 8, 2013, Vedacore.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <wwwbrooksbrothers.com> domain name is registered with Vedacore.com, Inc. and that Respondent is the current registrant of the names.  Vedacore.com, Inc. has verified that Respondent is bound by the Vedacore.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 8, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 28, 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@wwwbrooksbrothers.com.  Also on March 8, 2013, 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 April 5, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <wwwbrooksbrothers.com> domain name is confusingly similar to Complainant’s BROOKS BROTHERS mark.

 

2.    Respondent does not have any rights or legitimate interests in the  <wwwbrooksbrothers.com> domain name.

 

3.    Respondent registered and used the <wwwbrooksbrothers.com> domain name in bad faith.

 

B.  Respondent failed to submit a timely Response in this proceeding.

 

FINDINGS

Complainant is a well-known retailer of apparel and many other goods, and holds several trademark registrations for its BROOKS BROTHERS marks, including Registration Number 0,667,458 with the U.S. Patent and Trademark Office (“USPTO”), issued September 23, 1958.

 

Respondent registered the <wwwbrooksbrothers.com> domain name on January 17, 2013, and uses it to display generic links to third parties, some of which compete with Complainant.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant has rights in its BROOKS BROTHERS mark pursuant to Policy ¶ 4(a)(i), based on its registration with the USPTO.  Panels routinely find that registration of a mark with a federal trademark authority, regardless of the location of the parties, is evidence of rights in a mark.  See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also 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; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).

 

Respondent’s <wwwbrooksbrothers.com> domain name is confusingly similar to Complainant’s BROOKS BROTHERS mark, since it incorporates Complainant’s entire mark and merely adds the generic “www” to the beginning of the mark, duplicating a common typing mistake made by Internet users.  The disputed domain name also adds the gTLD “.com,” and eliminates the space in the mark.  These changes are insufficient to distinguish the disputed domain name from Complainant’s mark.  See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain name <wwwbankofamerica.com> is confusingly similar to the complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name)”; see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007), where the panel held that spaces and gTLDs are irrelevant to a Policy ¶ 4(a)(i) analysis.

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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.”).

 

Complainant contends that Respondent is not commonly known by the <wwwbrooksbrothers.com> domain name.  The WHOIS record lists “Isaac Goldstein” as the registrant, which is not similar to the disputed domain name.  Complainant states that it has not permitted Respondent to use its BROOKS BROTHERS mark, and Respondent is not affiliated with Complainant.  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).

 

Complainant also contends that Respondent is not using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  Complainant states that Respondent uses the disputed domain name to divert Internet users to Respondent’s website displaying generic links to third parties, some of which directly compete with Complainant.  Previous panels have found that diverting Internet users to the respondent’s website is not a bona fide offering or a legitimate noncommercial or fair use.  See See 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);  see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).  Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <wwwbrooksbrothers.com> domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent’s <wwwbrooksbrothers.com> domain name capitalizes on a common typing mistake of Internet users seeking Complainant.  This is “typosquatting” and is evidence of bad faith registration and use under Policy ¶ 4(a)(iii).  See Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the ‘www’ portion of [a] web-address,” which was evidence that the domain name was registered and used in bad faith)”.

 

Respondent uses the <wwwbrooksbrothers.com> domain name to divert potential customers away from Complainant to third party websites, which disrupts Complainant’s business, further evidence of bad faith under Policy ¶ 4(a)(iii).  See Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites, respondent’s use constituted disruption under Policy ¶ 4(a)(iii).”).

 

Respondent is using Complainant’s BROOKS BROTHERS mark in the disputed domain name to attract and mislead Internet users, for Respondent’s commercial gain.  Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv).  See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.  Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).

 

Complainant also argues that Respondent has demonstrated a pattern of bad faith by registering other domain names incorporating the trademarks of others and provided previous UDRP rulings against Respondent.  The Panel finds that this is additional evidence of Respondent’s bad faith.

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <wwwbrooksbrothers.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Sandra J. Franklin, Panelist

Dated:  April 12, 2013

 

 

 

 

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