Board of Trustees of Michigan State University v. aaron brooks
Claim Number: FA1903001834528
Complainant is Board of Trustees of Michigan State University (“Complainant”), represented by Connie Berg of Michigan State University Office of the General Counsel, Michigan, USA. Respondent is aaron brooks (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <spartansbasketballjersey.info>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 18, 2019; the Forum received payment on March 18, 2019.
On March 19, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <spartansbasketballjersey.info> 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 March 21, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 10, 2019 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@spartansbasketballjersey.info. Also on March 21, 2019, 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 April 12, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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
1. Respondent’s <spartansbasketballjersey.info> domain name is confusingly similar to Complainant’s MICHIGAN STATE SPARTANS mark.
2. Respondent does not have any rights or legitimate interests in the <spartansbasketballjersey.info> domain name.
3. Respondent registered and uses the <spartansbasketballjersey.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a major state university whose sports teams have been known as the "Spartans" since the mid-1920s. Complainant holds a registration for its MICHIGAN STATE SPARTANS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,470,709 , registered Dec. 29, 1987).
Respondent registered the <spartansbasketballjersey.info> domain name on June 26, 2017, and uses it to sell counterfeit versions of Complainant’s goods.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Panel finds that Complainant has established rights in the MICHIGAN STATE SPARTANS mark for the purposes of Policy ¶ 4(a)(i) based on its registration with the USPTO (e.g. Reg. No. 1,470,709, registered Dec. 29, 1987). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”).
Respondent’s <spartansbasketballjersey.info> domain name deletes the terms “MICHIGAN” and “STATE” from Complainant’s mark and adds the descriptive term “basketballjersey” and the gTLD “.info”. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)); see also VNY Model Management, Inc. v. Lisa Katz / Domain Protection LLC, FA 1625115 (Forum Aug. 17, 2015) (finding that Respondent’s <vnymodels.com> domain name is confusingly similar to the VNY MODEL MANAGEMENT mark under Policy ¶ 4(a)(i)). Thus, the Panel finds that Respondent’s <spartansbasketballjersey.info> domain name is confusingly similar to Respondent’s MICHIGAN STATE SPARTANS mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
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 Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent lacks rights and legitimate interests in the <spartansbasketballjersey.info> domain name, as Respondent is not commonly known by the disputed domain name. Complainant has not authorized Respondent to use the MICHIGAN STATE SPARTANS mark. The WHOIS information for the disputed domain name lists the registrant as “aaron brooks.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name); see also Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
Complainant further argues that even if Respondent was an authorized distributor of Complainant’s products, Respondent is not authorized to register a domain name using Complainant’s mark. The Panel agrees and notes that even an authorized distributor cannot use a mark in a domain name to make a bona fide offering of goods or services, or a legitimate noncommercial or fair use, if not authorized to do so. See Associated Materials, Inc. v. Perma Well, Inc., FA 154121 (Forum May 23, 2003) (finding that, although the respondent was a distributor of the complainant’s product, the respondent did not have permission to use the complainant’s mark in its registered domain name and, therefore, was not using the domain name as a bona fide offering of goods or services or a legitimate noncommercial or fair use).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent has a history of registering domain names that are confusingly similar to other major universities’ sports teams without the right to do so. Where a respondent has previously owned various domain names infringing on famous third-party marks and the respondent has been ordered to transfer domain names in previous UDRP decisions, the Panel may find bad faith under Policy ¶ 4(b)(ii). See Sanlam Life Insurance Limited v. Syed Hussain / Domain Management MIC, FA 1787219 (Forum June 15, 2018) (finding bad faith per Policy ¶ 4(b)(ii) where the complainant provided evidence the respondent owned various domain names infringing on famous third-party marks; and also that the respondent had been ordered to transfer domain names in previous UDRP decisions). Complainant cites two adverse UDRP decisions listing the respondent as “Aaron Brooks” as evidence that Respondent has a history of bad faith registration. See The Board of Regents of the University of Oklahoma v. Aaron Brooks, FA 1803101 (Forum Sept. 25, 2018) and The Pennsylvania State University v. Aaron Brooks, FA 1803778 (Forum Sept. 26, 2018). Therefore, the Panel finds bad faith under Policy ¶ (b)(ii).
Complainant contends that Respondent registered and uses the <spartansbasketballjersey.info> domain name in bad faith as Respondent attempts to attract, for commercial gain, Internet users to the disputed domain name by displaying Complainant’s mark, logos, and selling counterfeit versions of Complainant’s goods. Mimicking a complainant’s website in order to confuse internet users into believing a respondent is affiliated or associated with a complainant supports a finding of bad faith registration and use under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Selling counterfeit versions of a complainant’s products is also evidence of bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv). See Ontel Products Corporation v. waweru njoroge, FA 1762229 (Forum Dec. 22, 2017) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iii) and (iv) through the respondent’s registration and use of the infringing domain name to reference the complainant’s products and offer competitive and/or counterfeit products). Complainant provides a screenshot of the website resolving from the disputed domain name, which displays Complainant’s mark and logo and purportedly offers Complainant’s goods. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii) and (iv).
Complainant argues the MICHIGAN STATE SPARTANS mark is well-known and famous worldwide and this is further evidence that Respondent registered the disputed domain name in bad faith. The Panel agrees and finds Respondent had actual knowledge of Complainant’s rights in the mark, thus demonstrating bad faith under Policy ¶ 4(a)(iii). See Coachella Music Festival, LLC v. ALEXANDER DE ALMEIDA LOPES, FA 1705267 (Forum Jan. 9, 2017) (finding the respondent had actual knowledge of the complainant’s COACHELLA mark when it registered and used the <coachellastuff.com> domain name—and thus did so in bad faith—because the complainant presented adequate evidence that its mark was well-known and famous).
The Panel finds that 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 <spartansbasketballjersey.info> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 22, 2019
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