Brooks Sports, Inc. v. jiajin chen / JoyceCheadle
Claim Number: FA1812001820458
Complainant is Brooks Sports, Inc. (“Complainant”), represented by Mayura Noordyke of Cozen O’Connor, Minnesota, USA. Respondent is jiajin chen / JoyceCheadle (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brookesvops.com> (‘the Domain Name’), registered with Jiangsu Bangning Science & technology Co. Ltd.
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.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 11, 2018; the Forum received payment on December 11, 2018.
On December 11, 2018, Jiangsu Bangning Science & technology Co. Ltd. confirmed by e-mail to the Forum that the <brookesvops.com> domain name is registered with Jiangsu Bangning Science & technology Co. Ltd. and that Respondent is the current registrant of the name. Jiangsu Bangning Science & technology Co. Ltd. has verified that Respondent is bound by the Jiangsu Bangning Science & technology Co. Ltd. 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 December 12, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 2, 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@brookesvops.com. Also on December 12, 2018, 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 January 4, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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 is the owner of the mark BROOKS registered in the USA for footwear with first use recorded as 1914. It also has registered trademarks for its official logo.
The Domain Name registered in 2018 is confusingly similar to Complainant’s trade mark adding only random letters ‘e’ and ‘vops’ and the gTLD .com which do not distinguish the Domain Name from Complainant’s mark.
Respondent does not have rights or legitimate interests in the Domain Name Respondent is not commonly known by ‘Brookesvops’ and is not authorized by Complainant. The Domain Name resolves to a web site mimicking the official site of Complainant using its name spelt correctly and Complainant’s official logo and using the description ‘official website’ purporting to sell Complainant’s products. The copyright notice says ‘© 2018 Brooks’ and gives the address of Complainant’s Australian distributor who is not connected with the site attached to the Domain Name. Complainant has been contacted by a confused customer. Customer details are also being collected on the site. Respondent’s confusing and deceptive conduct constituting passing off and phishing cannot be a bona fide offering of goods and services or legitimate noncommercial or fair use. It is bad faith registration and use confusing customers for commercial gain and misuse of a well-known mark. The contents of the web site shows Respondent had actual knowledge of Complainant and its business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of the mark BROOKS registered in the USA for footwear with first use recorded as 1914. It also has registered trademarks for its official logo.
The Domain Name registered in 2018 has been used to purport to offer Complainant’s goods on a site described as ‘official’ and mimicking Complainant’s official web site using Complainant’s name spelt correctly and its official logo and the address of its Australian distributor when there is no actual connection with Complainant or said distributor. Customer details are being collected.
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.”).
Identical or Confusingly Similar
The Domain Name consists of a misspelling of Complainant’s BROOKS mark (registered in the USA for footwear and used since 1914) - adding an ‘e’ to read ‘Brookes’, the letters ‘vops’ and the gTLD.com. Panels have found that adding one letter to a registered mark does not distinguish a domain name from that mark. See Twitch Interactive, Inc. v. Antonio Teggi, FA 1626528 (Forum Aug. 3, 2015) (finding that twitcch.tv is confusingly similar to the TWITCH TV trade mark because the domain name consisted of a common misspelling of the mark by merely adding the letter ‘c’). The Panelist also agrees with Complainant that the addition of the random letters ‘vops’ which do not appear to have a discernible meaning does not distinguish the Domain Name from Complainant’s trade mark which is still identifiable in a misspelt form within the Domain Name.
The gTLD .com does not serve to distinguish the Domain Name from Complainant’s mark. See Red Hat Inc v. Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose to a mark in which Complainant has rights.
Rights or Legitimate Interests
Complainant has not authorized the use of a misspelt version of its mark. There is no evidence or reason to suggest Respondent is commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
The use of the Domain Name is commercial and so cannot be legitimate non-commercial use.
The web site attached to the Domain Name uses Complainant's BROOKS mark spelled correctly and its official logo and is described as ‘official’ using falsely the address of Complainant’s Australian distributor, thereby strongly suggesting that there is a commercial connection with Complainant when there is not. The Panel finds this use is deceptive and passing off. As such it cannot amount to the bona fide offering of goods and services or fair use. See iFinex Inc. v. Yuri Heifetz/Genie-Solution, FA 1789385 (Forum July 9, 2018) (holding that the respondent’s mimicking the complainant’s web site in order to cause existing or potential customers of the Complainant’s to believe they are dealing with the complainant is prima facie evidence of the respondent’s lack of rights and legitimate interests in the disputed domain name). Further phishing and typosquatting cannot be a bona fide offering of goods and services or a legitimate noncommercial or fair use.
As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the Panelist the use made of the Domain Name in relation to Respondent’s site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by Complainant as Complainant’s trade mark spelt correctly, its official logo and Complainant’s Australian distributor’s address are used without permission. The use of Complainant's logo and distributor’s address on Respondent's web site shows that Respondent is aware of Complainant and its business. Accordingly, the Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of Complainant. See Allianz of AM. Corp v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use where the respondent was diverting Internet users searching for the complainant to its own website).
Typosquatting itself is also evidence of relevant bad faith registration and use. See Diners Club int'l Ltd. v. Domain Admin ****** It's all in the name ******, FA 156839 (Forum June 23, 2003) ('registering a domain name which entirely incorporates a famous mark with additional letter (s) in the hope that Internet users will mistype the Complainant’s mark and be taken to the Respondent’s site is registration and use in bad faith).
Further, phishing can be evidence of bad faith registration and use within the Policy 4 (a)(iii) See Klabzuba Oil & Gas, Inc v. LAKHPAT SINGH BHANDARI, FA 1506001625750 (Forum July 17, 2015).
As such, the Panelist believes that Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iv) and 4 (b)(iii). There is no need to consider further grounds of bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brookesvops.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
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