Brooks Brothers Group, Inc. v. Oleg Techino / Argosweb Corp
Claim Number: FA1406001566115
Complainant is Brooks Brothers Group, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Oleg Techino / Argosweb Corp (“Respondent”), Seychelles.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brooksbrothdrs.com>, registered with GODADDY.COM, LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 23, 2014; the National Arbitration Forum received payment on June 23, 2014.
On June 24, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <brooksbrothdrs.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC 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 June 25, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 15, 2014 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@brooksbrothdrs.com. Also on June 25, 2014, 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 July 22, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 name be transferred from Respondent to Complainant.
A. Complainant
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the BROOKSBROTHERS.COM mark. Respondent’s domain name is confusingly similar to Complainant’s BROOKSBROTHERS.COM mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <brooksbrothdrs.com> domain name, and that Respondent registered and uses the domain name 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 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 alleges that it has used the BROOKSBROTHERS.COM mark in commerce since 2004 in connection with the retail sale of clothing for men, women, and children, and has operated in the retail clothing field since 1856. Complainant has a valid trademark with the United States Patent and Trademark Office (“USPTO”) for the BROOKSBROTHERS.COM mark (Reg. No. 2,625,045, registered on September 24, 2002). Although Respondent resides in Seychelles, it is irrelevant under Policy ¶ 4(a)(i) as Complainant need not register its mark in the country that Respondent operates in. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of Policy ¶ 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant contends that the domain name <brooksbrothdrs.com> is confusingly similar to the trademark in which Complainant has rights. The domain name merely creates a typographical error in Complainant’s mark. Such errors create an inference of confusing similarity. See CEC Entm’t, Inc. v. Peppler, FA 104208 (Nat. Arb. Forum Mar. 21, 2002) (finding that the <chuckcheese.com> domain name was confusingly similar to the complainant’s CHUCK E. CHEESE mark because the domain name only differed from the mark by one letter). Accordingly, the Panel finds that the <brooksbrothdrs.com> domain name is confusingly similar to the BROOKSBROTHERS.COM mark pursuant to Policy ¶ 4(a)(i) because the name is merely the misspelling of the mark with no distinctive alterations thereto.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant urges that Respondent is not commonly known by the disputed domain name <brooksbrothdrs.com>. Complainant further notes it has never authorized Respondent’s use of the BROOKSBROTHERS.COM trademark in Internet domain names. The registrant of the disputed domain name is listed as “Oleg Techino”. In Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006), the panel found that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute. Based on the foregoing authority, the Panel holds that Respondent is not commonly known by the disputed domain name <brooksbrothdrs.com> under Policy ¶ 4(c)(ii).
Complainant states that Respondent is using the disputed domain name to redirect Internet users to a website featuring generic links to third-party websites, some of which compete directly with Complainant. Respondent’s domain name resolves to a webpage featuring links that lead consumers to products of Claimant’s competitors, such as “Wholesale Dresses,” “Men’s Invisible High Heels,” and “Men’s Clothing.” The Panel finds that Respondent is not using the dispute 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), as the disputed domain name resolves to a website that links to direct competitors of Complainant. 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”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent has engaged in an ongoing pattern of cybersquatting. Complainant asserts that Respondent has been engaged in a pattern of cybersquatting over time based on searches through the NAF and WIPO UDRP decision databases. E.g., Wells Fargo & Co. v. Oleg Techino, FA 150781 (Nat. Arb. Forum Aug. 7, 2013). Accordingly, the Panel determines that Respondent has registered and is using the disputed domain name in bad faith. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
Complainant claims that Respondent’s use of the disputed domain name is disrupting Complainant’s business. Complainant asserts that Respondent is linking users to direct competitors of Complainant through the disputed domain name. The Panel holds that Respondent has registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because some of the advertisements viewable on the domain name’s resolving website include products that compete with those sold by Complainant in the ordinary course of business. 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).”).
Complainant asserts that Respondent is using the disputed domain name for commercial gain through reliance on confusion or mistake by linking potential customers to products sold by Complainant’s competitors. Respondent’s domain name resolves to a website featuring links that lead to competing products-- “Wholesale Dresses,” “Men’s Invisible High Heels,” and “Men’s Clothing.” It is reasonable to presume that Respondent receives compensation for promoting these links. The Panel finds that Respondent is attempting to mislead consumers as to Complainant’s affiliation with the disputed domain name, and Respondent is likely profiting from the resulting confusion. Therefore, The Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See 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 contends that Respondent’s typosquatting behavior is indicative of bad faith because the disputed domain name varies so little from Complainant’s trademark. The Panel agrees that Respondent has engaged in typosquatting and therefore determines that Respondent has registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’ . . . through Respondent’s persistent practice of ‘typosquatting’”).
The Panel finds Complainant has satisfied 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 <brooksbrothdrs.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 23, 2014
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