Brooks Sports, Inc. v. Milen Radumilo
Claim Number: FA1906001848586
Complainant is Brooks Sports, Inc. (“Complainant”), represented by Mayura I. Noordyke of Cozen O’Connor, Minnesota, USA. Respondent is Milen Radumilo (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brooksshoesindia.com>, registered with Name Connection Spot LLC.
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.
Complainant submitted a Complaint to the Forum electronically on June 18, 2019; the Forum received payment on June 18, 2019.
On June 19, 2019, Name Connection Spot LLC confirmed by e-mail to the Forum that the <brooksshoesindia.com> domain name is registered with Name Connection Spot LLC and that Respondent is the current registrant of the name. Name Connection Spot LLC has verified that Respondent is bound by the Name Connection Spot 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 June 20, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 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@brooksshoesindia.com. Also on June 20, 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 July 14, 2019, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is 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 (e.g. Reg. No. 1,161,034, registered July 14, 1981). Respondent’s domain name <brooksshoesindia.com> is confusingly similar to Complainant’s BROOKS trademark as the domain name adds the generic term “shoes” and geographic term “India” along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <brooksshoesindia.com> as Complainant has not licensed or authorized Respondent to use the BROOKS trademark nor is Respondent commonly known by the disputed domain name. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s domain name resolves to a website containing numerous sponsored links to other commercial sites. Respondent’s domain name diverts visitors to competing websites and uses Complainant’s BROOKS trademark to create the impression that the two are related. Respondent receives compensation every time one of the links is clicked on.
Respondent registered and is using the <brooksshoesindia.com> domain name in bad faith. Respondent uses a confusingly similar domain name to direct consumers to a website with links to competing third-parties. Respondent also had knowledge of Complainant’s rights in the BROOKS trademark as shown by links related to Complainant’s competitors along with the fact that the trademark is well-known.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
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. 4,728,097 BROOKS TRANSCEND (word), registered April 28, 2015 for goods in class 25;
No. 2,521,124 BROOKS (fig), registered December 18, 2001 for goods in class 25;
No. 1,683,840 BROOKS (fig), registered April 21, 1992 for goods in class 25; and
No. 1,161,034 BROOKS (word), registered July 14, 1981 for goods in class 25.
Respondent registered the <brooksshoesindia.com> domain name on April 30, 2019.
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”).
Complainant claims to have rights in the BROOKS trademark through its registrations with the USPTO. Registration of a trademark with the USPTO is sufficient to demonstrate rights in a trademark per Policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Here, Complainant has provided the Panel with copies of the USPTO registrations for the BROOKS trademark (e.g. Reg. No. 1,161,034, registered July 14, 1981). Therefore, the Panel finds that Complainant has rights in the BROOKS trademark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <brooksshoesindia.com> domain name is confusingly similar to Complainant’s BROOKS trademark as the domain name adds the generic term “shoes” and geographic term “India” along with the “.com” gTLD. Use of a domain name that includes a complainant’s trademark along with a generic or geographic term and a gTLD generally does not sufficiently distinguish a disputed domain name from a trademark. 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 Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sep. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy ¶4(a)(i) analysis.”). In this case, the word “shoes” is directly related to the goods provided by the Complainant under the trademark BROOKS, and the geographical term “India” may indicate the Complainant is selling directly to the Indian market or that the goods are produced in India. In any case, the generic additions are not enough to distinguish the disputed domain name from Complainant’s trademark. Therefore, the Panel finds that Respondent’s <brooksshoesindia.com> domain name is confusingly similar to Complainant’s BROOKS trademark per Policy ¶ 4(a)(i).
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 has no rights or legitimate interests in the <brooksshoesindia.com> domain name as Respondent is not commonly known by the disputed domain name nor did Complainant authorize Respondent to use Complainant’s BROOKS trademark in any way. 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)”). There is nothing in the record to suggest that Complainant authorized Respondent to use Complainant’s BROOKS trademark. Additionally, the WHOIS information identifies “Milen Radumilo” as Respondent. Therefore, the Panel finds that Respondent lacks rights or legitimate interests in the <brooksshoesindia.com> domain name per Policy ¶ 4(c)(ii).
Complainant further contends that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s domain name resolves to a website containing numerous sponsored hyperlinks to other competing commercial sites. Use of a domain name to resolves to a webpage that contains sponsored commercial links to websites in competition with a complainant is generally not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Here, Complainant has provided screenshots of Respondent’s domain name resolving webpage that shows links to websites such as “New Balance Walking Shoes” and “Women Shoes Online.” The Panel therefore finds 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).
Complainant additionally adds that Respondent’s domain name diverts visitors to a competing website and use Complainant’s BROOKS trademark to create the impression that the two are related. Use of a domain name to create the appearance that a respondent is affiliated with a complainant in some way is generally not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)). Here, as mentioned above, Complainant has provided the Panel with screenshots of Respondent’s domain name resolving webpage that shows links to various footwear related products. Complainant also argues, although without any concrete evidence, that Respondent receives compensation every time one of the links is clicked on by an Internet user. The Panel finds that Respondent’s use of the disputed domain name to participate in commercial activity is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent registered and is using the <brooksshoesindia.com> domain name in bad faith as Respondent uses a confusingly similar domain name to direct consumers to a website with competing third party links. Use of a confusingly similar domain name to advertise third-party competitors maybe evidence of bad faith registration and use per Policy ¶ 4(b)(iii). See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iii)”). Here, Complainant has provided screenshots of Respondent’s domain name resolving webpage that shows links to third parties in the footwear industry. Therefore, the Panel finds that Respondent engaged in bad faith registration and use per Policy ¶ 4(b)(iii).
Complainant argues that Respondent has registered and is using the <brooksshoesindia.com> domain name that incorporates a well-known trademark, which is further evidence of bad faith registration and use. Use of a domain name that incorporates a famous trademark to result in consumer confusion that complainant is affiliated with respondent maybe evidence of bad faith registration and use per Policy ¶ 4(b)(iv). See BBY Solutions, Inc. v. Grant Ritzwoller, FA 1703389 (Forum Dec. 21, 2016) (finding bad faith because the <bestbuyus.com> domain name was obviously connected with the complainant’s well-known BEST BUY mark, thus creating a likelihood of confusion strictly for commercial gain). Here, Complainant argues that Respondent’s inclusion of its BROOKS trademark in the domain name creates a likelihood of confusion where Internet users might think that there is a relationship between Complainant and Respondent. Therefore, the Panel agrees that Respondent has registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Lastly, Complainant contends that Respondent had knowledge in Complainant’s rights in the BROOKS trademark prior to registering the disputed domain name. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, actual knowledge of a complainant’s rights in a mark prior to registering a disputed domain name can adequately evince 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 domain name to provide links related to a complainant’s competitors maybe evidence of actual knowledge in a trademark per Policy ¶ 4(a)(iii). See Norgren GmbH v. Domain Admin / Private Registrations Aktien Gesellschaft, FA1501001599884 (Forum Feb. 25, 2014) (holding that the respondent had actual knowledge of the complainant and its rights in the mark, thus demonstrating bad faith registration under Policy ¶ 4(a)(iii), where the respondent was using the disputed domain name to purposely host links related to the complainant’s field of operation). As noted above, the Complainant has provided screenshot of the resolving webpage associated with the at-issue domain name which shows links to third-party businesses engaged in the advertising of footwear related products. Complainant also avers that its BROOKS trademark is well known given its extensive advertising. Based on this, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the BROOKS trademark per 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 <brooksshoesindia.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: July 16, 2019
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