DECISION

 

Brooks Sports, Inc. v. Samantha Meyer

Claim Number: FA2007001905081

 

PARTIES

Complainant is Brooks Sports, Inc. (“Complainant”), represented by Mayura I. Noordyke of Cozen O’Connor, Minnesota, United States.  Respondent is Samantha Meyer (“Respondent”), Arkansas, United States.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <brookshoesforun.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com..

 

PANEL

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.

 

Petter Rindforth as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on July 20, 2020; the Forum received payment on July 20, 2020.

 

On July 22, 2020, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <brookshoesforun.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 July 22, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 11, 2020 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@brookshoesforun.com.  Also on July 22, 2020, 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 August 12, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.   Complainant

 

The Complainant is known as a world-leader in athletic clothing and footwear, including high-performance running shoes. Complainant has rights in the BROOKS trademark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,116,034, registered July 14, 1981). Respondent’s <brookshoesforun.com> domain name is confusingly similar to Complainant’s BROOKS trademark. Respondent incorporates the trademark in its entirety and adds the generic terms “shoes,” “for,” and “run” along with the “.com” generic top-level domain (“gTLD”).

 

Respondent has no rights or legitimate interests in the <brookshoesforun.com> domain name as Respondent is not commonly known by the disputed domain name nor did Complainant authorize Respondent to use the BROOKS trademark in any way. Respondent also fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s disputed domain name resolves to a webpage that offers unauthorized goods of Complainant.

 

Respondent registered and used the <brookshoesforun.com> domain name in bad faith as Respondent attempts to confuse internet users by displaying Complainant’s BROOKS trademark and offer unauthorized goods for sale. Respondent also had actual knowledge of Complainant’s rights in the BROOKS trademark due to the fame and notoriety of the mark in commerce.

 

B.   Respondent

 

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Complainant is the owner of the following U.S. trademark registrations:

 

No. 1,161,034 BROOKS (word), registered July 14, 1981 for goods in class 25;

No. 5,596,496 BROOKS (fig), registered October 30, 2018 for goods in class 25;

No. 4,631,302 BROOKS (fig), registered November 4, 2014 for goods in class 25;

No. 1,683,840 BROOKS (fig), registered April 21, 1992 for goods in class 25; and

No. 4,728,097 BROOKS TRANSCEND (word), registered April 28, 2015 for goods in class 25.

 

The disputed domain name <brookshoesforun.com> was registered on March 10, 2020.

 

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(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”).

 

Identical and/or Confusingly Similar

Complainant claims to have rights in the BROOKS trademark through its registration with the USPTO. Registration of a trademark with the USPTO is sufficient to establish rights in a trademark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant has provided the Panel with a copy of its USPTO registrations for the BROOKS trademark (e.g. Reg. No. 1,116,034, registered July 14, 1981). Therefore, the Panel find that Complainant has rights in the BROOKS trademark per Policy ¶ 4(a)(i).

 

Complainant argues that Respondent’s <brookshoesforun.com> domain name is confusingly similar to Complainant’s BROOKS trademark. Registration of a domain name that contains a trademark in its entirety and adds generic terms and a gTLD does not distinguish the domain name from the trademark per 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)). Here, Complainant argues that Respondent incorporates the trademark in its entirety and adds the generic terms “shoes,” “for,” and “run” along with the “.com” gTLD. The Panel notes that the disputed domain name in fact incorporates the trademark BROOKS, followed by “shoesforun” and the “.com” gTLD. However, having in mind that Internet users often seek information in a speedy way, not focusing on minor misspellings, the Panel agrees with Complainant’s statement that it will rather be taken as the three descriptive words “shoes,” “for,” and “run”, thereby also clearly indicating the goods that the trademark BROOKS is well-known for: running shoes. Therefore, the Panel find that Respondent’s domain name is confusingly similar to Complainant’s trademark per Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 or legitimate interest in the <brookshoesforun.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the BROOKS trademark or register domain names using Complainant’s trademark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is 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). Additionally, lack of authorization to use a complainant’s trademark may indicate that the respondent is not commonly known by the disputed domain name. See 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)”). The WHOIS information for the disputed domain name lists the registrant as “Samantha Meyer” and there is no other evidence to suggest that Respondent was authorized to use the BROOKS trademark or was commonly known by the disputed domain name. Therefore, the Panel find that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).

 

Complainant also argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s disputed domain name resolves to a webpage that offers unauthorized goods of Complainant. Use of a disputed domain name to offer unauthorized products or services is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Fadal Engineering, LLC v. DANIEL STRIZICH,INDEPENDENT TECHNOLOGY SERVICE INC, FA 1581942 (Forum Nov. 13, 2014) (finding that Respondent’s use of the disputed domain to sell products related to Complainant without authorization “does not amount to 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).”). Here, Complainant has provided screenshots of Respondent’s <brookshoesforun.com> domain name’s resolving webpage that show Complainant’s trademark and products being offered for sale. Therefore, the Panel agree and find that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).

 

Registration and Use in Bad Faith

Complainant argues that Respondent registered and used the <brookshoesforun.com> domain name in bad faith as Respondent attempts to confuse internet users by displaying Complainant’s BROOKS trademark and offer unauthorized goods for sale. Use of a disputed domain name that offers unauthorized goods for sale to confuse internet users may be evidence of bad faith per Policy ¶ 4(b)(iii). See Kipling Apparel Corp. v. Yan Feng Geng, FA 1703296 (Forum Dec. 20, 2016) (finding the respondent registered and used the <kiplingstores.com> domain name in bad faith per Policy ¶ 4(b)(iii) because the respondent used the domain name to sell the complainant’s products that were either counterfeit or genuine products resold without authorization). Here, as noted above, Complainant has provided screenshots of Respondent’s <brookshoesforun.com> domain name’s resolving webpage that show Complainant’s trademark and products being offered for sale. Therefore, the Panel agree and find that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iii).

 

Complainant further argues that Respondent had knowledge of Complainant’s rights in the BROOKS trademark at the time of registering the disputed <brookshoesforun.com> domain name. The Panel disregards arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). However, the Panel choose to determine whether Respondent had actual knowledge of Complainant's rights in the trademark prior to registering the disputed domain name, as actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum January 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support this assertion, Complainant points to its trademark registrations along with the fact that Respondent impersonates Complainant to further a fraudulent scam. Considering the actual use of the disputed domain name for the same type of goods that the Complainant offers, the Panel finds that Respondent had actual knowledge of Complainant’s BROOKS trademark. The Panel find that Respondent registered and uses the disputed domain name in bad faith per 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 <brookshoesforun.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Petter Rindforth, Panelist

Dated:  August 18, 2020

 

 

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