Brooks Sports, Inc. v. Thuy Pham / Tamarawink
Claim Number: FA1709001748640
Complainant is Brooks Sports, Inc. (“Complainant”), represented by Jared Barrett of Seed Intellectual Property Law Group PLLC, Washington, USA. Respondent is Thuy Pham / tamarawink (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brooksdistributor.com>, registered with Tucows Domains Inc.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 12, 2017; the Forum received payment on September 12, 2017.
On September 14, 2017, Tucows Domains Inc. confirmed by e-mail to the Forum that the <brooksdistributor.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 14, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 4, 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@brooksdistributor.com. Also on September 14, 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 6, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 the domain name be transferred from Respondent to Complainant.
A. Complainant
Trademark Information:
Complainant Brooks Sports, Inc. is the owner of, among others:
U.S. Trademark Registration No. 1,161,034 for BROOKS for “athletic shoes” in Class 25; U.S. Trademark Registration No. 1,683,840 for BROOKS and Path Design, for “athletic clothing; namely, shirts, pants, jackets, hats, caps, shorts, tights and hosiery, and athletic footwear” in Class 25;
U.S. Trademark Registration No. 2,521,124 for BROOKS and Path Design, for “clothing, namely, shoes, socks, footwear” in Class 25;
U.S. Trademark Registration No. 4,631,302 for BROOKS and Path Design, for “footwear; shoes; athletic clothing, namely, gloves, mittens, hats, headbands, jackets, jogging suits, pants, shirts, shorts, socks, t-shirts, tank tops, tights, track suits, visors, warm up suits, waterproof jackets and pants, wind resistant jackets” in Class 25;
U.S. Trademark Registration No. 2,750,754 for the Path Design, for “shoes, footwear, shirts, pants, jackets, hats, shorts, tights and T-shirts” in Class 25; and
U.S. Trademark Registration No. 3,787,318 for RUN HAPPY for “caps; footwear; gloves; hats; headbands; jackets; jogging suits; pants; shirts; shoes; shorts; socks; T-shirts; tank tops; tights; track suits; visors; warm up suits; waterproof jackets and pants; wind resistant jackets” in Class 25.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds:
[a.] The subject domain name is identical or confusingly similar to a trademark in which Complainant has rights.
[i.] Complainant holds exclusive rights in at least the United States in the registered trademarks BROOKS, BROOKS and Path Designs, shown above, the Path Design, shown above, and RUN HAPPY (collectively the “Brooks Marks”) in connection with footwear and apparel, rights that were subject to several U.S. federal registrations prior to Respondent’s registration of the subject domain name, which appears to have been registered in August 2017 according to the Whois record. Complainant uses its Brooks Marks in connection with promoting and selling footwear and apparel. Screenshots from Complainant’s brooksrunning.com website showing example use of the Brooks Marks are attached.
[ii.] The leading and dominant portion of the subject domain name, i.e. “brooks,” is identical to Complainant’s registered BROOKS trademark. In addition, the entire “brooksdistributor.com” domain name simply combines the gTLD “.com” and a generic name (i.e., “distributor”) with Complainant’s BROOKS mark. A domain name containing the identical mark of a complainant combined with only a generic word or term and the gTLD is confusing similar to the mark. See, e.g., Google Inc. v. Yongqi Liu, FA0912001297473 (Forum January 15, 2010) (finding googleinvest.biz confusingly similar to complainant’s GOOGLE mark).
[b.] Respondent should be considered as having no rights or legitimate interests in the domain name that is the subject of the present complaint.
[i.] According to the domain name registration, Respondent is Thuy Pham of Tamarawink.
[ii.] Respondent is not using and has not used the subject domain name in connection with a bona fide offering of goods or services. Instead, the domain name has been used to intentionally attract, for commercial gain, Internet users to the resolving site by creating confusion with Complainant's Brooks Marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s site. Such use is insufficient to establish rights or legitimate interests in a domain name, and instead, provides evidence of bad faith registration and use. Screenshots from the subject domain name are enclosed.
[iii.] Complainant has not licensed or otherwise permitted Respondent to use the Brooks Marks or to apply for or use any domain name incorporating the same.
[iv.] Respondent is not commonly known as “Brooks,” “BrooksDistributor,” or any variant thereof, and to the best of Complainant’s knowledge, Respondent has not applied for or obtained any state or federal trademark or service mark registration for the same.
[v.] Respondent is not making legitimate noncommercial use of the subject domain name, but rather, is intentionally attracting, presumably for commercial gain, Internet users to the resolving site by creating confusion with Complainant's Brooks Marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s site. The site mimics that of Complainant’s brooksrunning.com site to attract unsuspecting users.
[vi.] The above facts establish that Respondent should be considered as having no rights or legitimate interests in the domain name that is the subject of the present complaint.
[c.] The domain name should be considered as having been registered and being used in bad faith.
[i.] The subject domain name constitutes a variation of Complainant’s brooksrunning.com domain name and incorporates Complainant’s BROOKS mark in its entirety, such that Internet users seeking the brooksrunning.com site or Complainant’s Brooks goods may easily find themselves diverted to Respondent’s “brooks” formative site. Once redirected, Internet users are deceived into disclosing their personal and financial information through confusion arising from the unauthorized use of Complainant’s Brooks Marks, as well as use of a site that mimics that of Complainant’s brooksrunning.com site. Respondent is believed to be capitalizing on this deception and confusion.
Redirection of traffic meant for Complainant’s genuine site for financial gain by creating a likelihood of confusion with Complainant's Brooks Marks is evidence of bad faith registration and use pursuant to ICANN Policy ¶4(b)(iv).
[ii.] Moreover, registering a domain name primarily for the purpose of disrupting the business of a competitor is evidence of bad faith registration and use pursuant to ICANN Policy ¶4(b)(iii). Here, Respondent is disrupting Complainant’s business by diverting consumers who may be seeking Complainant’s legitimate Brooks site and goods by creating a likelihood of confusion with a mock site operated by Respondent under Complainant’s Brooks Marks.
[iii.] The above facts clearly evidence bad faith registration and use of the subject domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 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 established its rights in its BROOKS mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,161,034, registered Jul. 14, 1981). Registration with the USPTO (or any other governmental authority for that matter) suffices to demonstrate rights in a mark under Policy ¶4(a)(i), even if Respondent is in another country. See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (“Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶4(a)(i)”). Complainant has rights in the BROOKS mark.
Respondent’s <brooksdistributor.com> domain name is confusingly similar to Complainant’s mark because it appends the generic term “distributor” and the gTLD “.com” to the fully incorporated mark. The addition of generic and descriptive terms do not prevent a finding of confusing similarity. A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶4(a)(i)). Respondent’s <brooksdistributor.com> domain name is confusingly similar to Complainant’s mark.
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to Respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (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 claims Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its BROOKS mark in any fashion. A lack of contradicting evidence in the record to the effect a respondent was authorized to use a complainant’s mark in a domain name is evidence of a lack of rights and legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that Respondent was not commonly known by the disputed domain name where Complainant had never authorized Respondent to incorporate its NAVISTAR mark in any domain name registration). Absent information in the record to the contrary, the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that Respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The <brooksdistributor.com> WHOIS information of record lists “Thuy Pham” as the registrant. There is no obvious relationship between Respondent’s name and the disputed domain name. Respondent is not commonly known by <brooksdistributor.com>.
Complainant claims Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent uses the <brooksdistributor.com> resolving website to pass itself off as Complainant. Using a domain name to pass a respondent off as a complainant is not a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶4(c)(i) or Policy ¶4(c)(iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found Respondent’s attempt to pass itself of as Complainant was not 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) when Respondent used the disputed domain name to present users with a website that was nearly identical to Complainant’s website). Respondent’s <brooksdistributor.com> resolves to a website that mimics Complainant’s <brooksrunning.com>. Respondent has failed to use the <brooksdistributor.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial fair use.
The Panel finds Policy ¶4(a)(ii) satisfied.
Respondent registered and is using the <brooksdistributor.com> domain name in bad faith. Respondent disrupts Complainant’s business under Policy ¶4(b)(iii) by offering competing products and diverting Internet users away from Complainant’s website to Respondent’s website. Registration and use of a domain name for the purpose of disrupting a complainant’s business constitutes bad faith. See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Forum Aug. 1, 2006) (finding that Respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶4(b)(iii) by redirecting Internet users to Respondent’s competing website); see also Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (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).”). Respondent has registered and used the <brooksdistributor.com> domain name in bad faith.
Respondent has registered and is using the <brooksdistributor.com> domain name in bad faith under Policy ¶4(b)(iv) by attempting to attract Internet traffic and commercially benefit from the goodwill of the BROOKS mark. Using a disputed domain name to create confusion as to the source, sponsorship, affiliation or endorsement of the content therein constitutes bad faith under Policy ¶4(b)(iv). See Capital One Fin. Corp. & Capital One Bank v. Howel, FA 289304 (Forum Aug. 11, 2004) (“The <capitalonebank.biz> domain name is confusingly similar to Complainant’s mark, it is being used to redirect Internet users to a website that imitates Complainant’s credit application website, and it is being used to frequently [sic] acquire personal information from Complainant’s clients. Respondent’s use of the domain name supports findings of bad faith registration and use pursuant to Policy ¶4(a)(iii).”). Complainant provided screenshots of the <brooksdistributor.com> resolving website which prominently feature Complainant’s logo, products and BROOKS mark (although Complainant did not comment on the authenticity of the goods being advertised). The <brooksdistributor.com> web site is no longer on-line. Respondent did not provide any information under Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) which would allow the Panel to reach a different conclusion (which is Respondent’s burden), such as:
• Respondent must actually be offering the goods or services at issue; AND
• Respondent must use the site to sell only the trademarked goods; AND
• The site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents; AND
• Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
The Panel must conclude Respondent registered and used the infringing domain name in bad faith.
Complainant claims the <brooksdistributor.com> resolving website is designed to deceive Internet users into disclosing their personal and financial information by the unauthorized use of Complainant’s mark. Phishing for Internet user’s information under the guise of a complainant is evidence of bad faith under Policy ¶4(a)(iii). See Capital One Fin. Corp. v. Howel, FA 289304 (Forum Aug. 11, 2004) (defining “phishing” as “a practice that is intended to defraud consumers into revealing personal and proprietary information”); see also Google Inc. v. Domain Admin / Whois Privacy Corp., FA1506001622862 (Forum Aug. 10, 2015) (finding that Respondent’s apparent use of the disputed domain name in furtherance of a ‘phishing’ scheme further established its bad faith registration and use of the disputed domain name under Policy ¶4(a)(iii)). Respondent does not dispute this fact, although Complainant did not disclose what information was being sought. The Panel must conclude Respondent engaged in a phishing scheme, constituting in bad faith under the penumbra of Policy ¶4(a)(iii).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <brooksdistributor.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, October 11, 2017
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