Brooks Sports, Inc. v. Donna Norman / Brooks Running Shoes Apparel
Claim Number: FA1709001748625
Complainant is Brooks Sports, Inc. (“Complainant”), represented by Jared Barrett of Seed Intellectual Property Law Group PLLC, Washington, USA. Respondent is Donna Norman / Brooks Running Shoes Apparel (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME(s)
The domain name at issue is <brooksauthentic.com>, registered with Tucows Domains Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 12, 2017; the Forum received payment on September 12, 2017.
On September 12, 2017, Tucows Domains Inc. confirmed by e-mail to the Forum that the <brooksauthentic.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 September 13, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 3, 2017 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@brooksauthentic.com. Also on September 13, 2017, 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 Forum transmitted to the parties a Notification of Respondent Default.
On October 5, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 registered the BROOKS mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,161,034, registered Jul. 14, 1981). Respondent’s <brooksauthentic.com> domain name is confusingly similar to Complainant’s mark as it appends the generic term “authentic” and the generic top-level-domain (“gTLD”) “.com” to Complainant’s BROOKS mark.
Respondent has no rights or legitimate interests in the <brooksauthentic.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the <brooksauthentic.com> domain name to intentionally attract, for commercial gain, Internet users to the resolving site by creating confusion with Complainant’s BROOKS marks as to the source of Respondent’s site.
Respondent registered and uses the <brooksauthentic.com> domain name in bad faith. Respondent disrupts Complainant’s business. Respondent intentionally attracts Internet users otherwise seeking Complainant for Respondent’s commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Brooks Sports, Inc., registered the BROOKS mark with the USPTO (e.g. Reg. No. 1,161,034, registered Jul. 14, 1981). Respondent’s <brooksauthentic.com> domain name is confusingly similar to Complainant’s mark.
Respondent, Donna Norman / Brooks Running Shoes Apparel, registered the <brooksauthentic.com> domain name on August 9, 2017.
Respondent has no rights or legitimate interests in the <brooksauthentic.com> domain name. Respondent’s domain name resolves to a website that mimics that of Complainant’s brooksrunning.com site.
Respondent registered and uses the <brooksauthentic.com> 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(f), 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 (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 has rights in the BROOKS mark based upon registration with the USPTO. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.).
Respondent’s <brooksauthentic.com> domain name is confusingly similar to Complainant’s mark as it appends the generic term “authentic” and the gTLD “.com” to Complainant’s wholly incorporated BROOKS mark.
Respondent has no rights or legitimate interests in the <brooksauthentic.com> domain name. Complainant has not authorized Respondent to use its BROOKS mark. Respondent is not commonly known as the <brooksauthentic.com> domain name under Policy ¶ 4(c)(ii). The WHOIS identifies “Donna Norman” as the registrant. See Braun Corp. v. Loney, FA 699652 (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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Navistar International Corporation v. N Rahmany, FA 1620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
Respondent doesn’t use the <brooksauthentic.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because it attempts to pass off as Complainant for its own commercial gain. Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Respondent disrupts Complainant’s business by diverting customers who may be seeking Complainant to Respondent’s website. Use of a disputed domain name to divert customers from a complainant to a respondent shows bad faith per Policy ¶ 4(b)(iii). See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA 1623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”). Here, Respondent sells similar goods to those of Complainant from a website that replicates Complainant’s website design.
Respondent intentionally attracts Internet users otherwise seeking Complainant for Respondent’s commercial gain. Respondent registered and uses the <brooksauthentic.com> domain name in bad faith by intercepting users seeking Complainant’s services and commercially benefits by offering competing services. Using a confusingly similar domain name to offer services in direct competition with a complainant can show bad faith. See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA 1579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brooksauthentic.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 18, 2017
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