DECISION

 

Brooks Sports, Inc. v. chen jia jin

Claim Number: FA1905001842230

 

PARTIES

Complainant is Brooks Sports, Inc. (“Complainant”), represented by Mayura I. Noordyke, Minnesota, US.  Respondent is chen jia jin (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <brooksae.com>, registered with Xiamen 35.Com Technology Co., Ltd.

 

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on May 8, 2019; the Forum received payment on May 8, 2019.

 

On May 9, 2019, Xiamen 35.Com Technology Co., Ltd. confirmed by e-mail to the Forum that the <brooksae.com> domain name is registered with Xiamen 35.Com Technology Co., Ltd. and that Respondent is the current registrant of the name.  Xiamen 35.Com Technology Co., Ltd. has verified that Respondent is bound by the Xiamen 35.Com 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 May 14, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 3, 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@brooksae.com.  Also on May 14, 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 June 7, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDINGS

Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant operates in the athletic clothing and footwear industry. Complainant has rights in the BROOKS mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,161,034, registered July 14, 1981). See Compl. Ex. A. Respondent’s <brooksae.com> domain name is identical or confusingly similar to Complainant’s BROOKS mark because it wholly incorporates Complainant’s BROOKS mark, and merely adds the letters “ae” and the “.com” generic top-level domain (“gTLD”).

 

2.    Respondent lacks rights or legitimate interests in the <brooksae.com> domain name. Respondent is not authorized to use Complainant’s BROOKS mark and is not commonly known by the disputed domain name. See Compl. Ex. D. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use because Respondent attempts to pass off as Complainant to sell competing or counterfeit goods. See Compl. Ex. D.

 

3.    Respondent registered and uses the <brooksae.com> domain name in bad faith. Respondent attempts to attract, for commercial gain, users to the disputed domain name where Respondent attempts to pass off as Complainant to sell competing or counterfeit goods. See Compl. Ex. D. Finally, Respondent had actual knowledge of Complainant’s BROOKS mark prior to registering the disputed domain name.

 

B.   Respondent

1.    Respondent did not submit a response in this proceeding.

 

FINDINGS

1.    Respondent’s <brooksae.com> domain name is confusingly similar to Complainant’s BROOKS mark.

2.    Respondent does not have any rights or legitimate interests in the <brooksae.com> domain name.

3.    Respondent registered or used the <brooksae.com> domain name in bad faith.

 

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 asserts rights in the BROOKS mark based upon registration with the USPTO (e.g., Reg. No. 1,161,034, registered July 14, 1981). See Compl. Ex. A. Registration of a mark with the USPTO is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds Complainant has rights in the BROOKS mark per Policy ¶ 4(a)(i).

 

Complainant argues Respondent’s <brooksae.com> domain name is identical or confusingly similar to Complainant’s BROOKS mark because it wholly incorporates Complainant’s BROOKS mark, and merely adds the letters “ae” and the “.com” generic top-level domain (“gTLD”). Changing a single letter at the end of a mark is sufficient to evince confusing similarity under Policy ¶ 4(a)(i); furthermore, the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Staples, Inc. v. Whois Privacy Shield Services, FA 1617690 (Forum June 5, 2015) (“Changing a single letter (especially when it is the final letter) is a minor enough change to support a finding of confusing similarity under Policy ¶ 4(a)(i).”); see also Direct Energy Marketing Limited v. Xushuaiweiren / xushuaiwei, FA 1762707 (Forum Jan. 22, 2018) (“Removal of spaces and additions of TLDs are irrelevant to a Policy ¶ 4(a)(i) analysis.”). Here, Respondent added the two letter combination “ae” to the end of the BROOKS mark, and a gTLD. The Panel agrees that adding two letters and a gTLD to the end of a mark is as similarly minor of an addition as adding a single letter to the end of a mark, and the Panel agrees Respondent’s <brooksae.com> domain name is identical or confusingly similar to Complainant’s BROOKS mark.

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that 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 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 has no rights or legitimate interests in the <brooksae.com> domain name as Respondent is not commonly known by the disputed domain name and is not authorized by Complainant to use the BROOKS mark. WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. 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 mark may support a finding that the respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). Complainant provides WHOIS information for Respondent indicating that Respondent is known as “chen jia jin” and no information of the record indicates that Respondent was authorized to use the Complainant’s BROOKS mark. See Compl. Ex. D. Therefore, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).

 

Next, Complainant argues Complainant argues Respondent lacks rights or  legitimate interests in the <brooksae.com> domain name because Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use when Respondent attempts to pass off as Complainant to sell competing or counterfeit goods. See Compl. Ex. D. Use of a disputed domain to pass off in furtherance of the sale of competing or counterfeit goods is not evidence of a bona fide offering of goods and services or a legitimate noncommercial or fair use. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). Therefore, the Panel finds that Respondent has failed to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).

 

Registration and Use in Bad Faith

Respondent registered and uses the <brooksae.com> domain name in bad faith because Respondent attempts to attract, for commercial gain, users to the disputed domain name where Respondent attempts to pass off as Complainant to sell competing or counterfeit goods. See Compl. Ex. D. Use of a disputed domain name to mimic a complainant’s website and reference a complainant’s products to offer competitive or counterfeit products is evidence of bad faith registration and use. 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.”). Thus, the Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii) and (iv).

 

Finally, Complainant asserts that Respondent had actual and/or constructive knowledge of Complainant’s rights in the BROOKS mark as the result of Complainant’s extensive use of the mark predating the date on which respondent registered the <brooksae.com> domain name and Respondent’s use of the mark on the resolving webpage. See Compl. Ex. D. Although panels have generally not regarded constructive notice as sufficient for a finding of bad faith, actual knowledge of Complainant’s mark prior to registering is adequate to find bad faith under Policy ¶ 4(a)(iii). 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.”). Use of a mark on a resolving webpage may demonstrate that a respondent had actual knowledge of a complainant’s rights in a mark at the time of registration, thus constituting bad faith. Finex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 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”). Thus, the Panel agrees and finds that Respondent had actual notice of Complainant’s rights in the BROOKS mark under 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 <brooksae.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  June 19, 2019