Brooks Sports, Inc. v. Li Hou Chang
Claim Number: FA1908001856881
Complainant is Brooks Sports, Inc. (“Complainant”), represented by Mayura I. Noordyke of Cozen O’Connor, Minnesota, USA. Respondent is Li Hou Chang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brooksrunnin.com>, registered with Alibaba Cloud Computing (Beijing) Co., Ltd..
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 12, 2019; the Forum received payment on August 12, 2019.
On August 15, 2019, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <brooksrunnin.com> domain name is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the name. Alibaba Cloud Computing (Beijing) Co., Ltd. has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) 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 August 21, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 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@brooksrunnin.com. Also on August 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 September 12, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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. Complainant is known as a world-leader in athletic clothing and footwear, including high-performance running shoes. Complainant has rights in the BROOKS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,161,034 registered July 14, 1981).
2. Complainant has owned and operated the <brooksrunning.com>[i] domain name since 1999. Respondent’s <brooksrunnin.com> domain name is confusingly similar to Complainant’s BROOKS mark. Respondent incorporates Complainant’s BROOKS mark and adds the generic term “runnin” along with the “.com” generic top-level domain (“gTLD”).
3. Respondent has no rights or legitimate interests in the <brooksrunnin.com> domain name as Respondent is not commonly known by the domain name.
4. Respondent fails to make bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Respondent uses the domain name to redirect to Complainant’s website.
5. Respondent also engages in the practice of typosquatting by deliberately introducing a typographical error into Complainant’s BROOKS mark and legitimate <brooksrunning.com> domain name.
6. Respondent registered and is using the <brooksrunnin.com> domain name in bad faith as Respondent uses the domain name to redirect visitors to Complainant’s own website. Respondent engages in the practice of typosquatting.
7. Lastly, Respondent had actual knowledge of Complainant’s rights in the BROOKS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the BROOKS mark. Respondent’s domain name is confusingly similar to Complainant’s BROOKS mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <brooksrunnin.com> domain name and that Respondent registered and uses the domain name in bad faith.
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”).
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDINGS
Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Chinese language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent’s understanding of the Chinese language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language).
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
Complainant has rights in the BROOKS mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in a mark 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.”). Complainant has provided the Panel with a copy of its USPTO registration for the BROOKS mark. Therefore, Complainant has adequately shown rights in the BROOKS mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <brooksrunnin.com> domain name is confusingly similar to Complainant’s BROOKS mark. Registration of a domain name that includes a complainant’s mark and incorporates a generic term and gTLD does not distinguish the domain name from the mark 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)). Respondent incorporates Complainant’s BROOKS mark and adds the generic term “runnin” along with the “.com“ gTLD. Therefore, Respondent’s <brooksrunnin.com> domain name is confusingly similar to Complainant’s BROOKS mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <brooksrunnin.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues Respondent lacks rights or legitimate interest in the <brooksrunnin.com> domain name as Respondent is not commonly known by the domain name nor has Respondent been given license or consent to use the BROOKS mark or register domain names using Complainant’s mark. WHOIS information may be used to determine whether a respondent is commonly known by a 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 mark may indicate that the respondent is not commonly known by the 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 <brooksrunnin.com domain name lists the registrant as “Li Hou Chang” and there is no other evidence to suggest that Respondent was authorized to use the BROOKS mark or was commonly known by the <brooksrunnin.com> domain name. Therefore, Respondent is not commonly known by the <brooksrunnin.com> domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Respondent uses the <brooksrunnin.com> domain name to redirect Internet users to Complainant’s website. Use of a domain name incorporating a complainant’s mark to redirect internet users to a complainant’s website is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) . . .”). Here, Complainant has provided the Panel with a screenshot of Respondent’s domain name’s resolving webpage that directly links to a product on Complainant’s own website. Therefore, Respondent has failed to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant further argues that Respondent engages in the practice of typosquatting by deliberately introducing a typographical error into Complainant’s BROOKS mark and legitimate <brooksrunning.com> domain name. A respondent’s acts of typosquatting may demonstrate a respondent’s lack of rights or legitimate interests in a domain name per Policy ¶ 4(a)(ii). See Chegg Inc. v. yang qijin, FA1503001610050 (Forum Apr. 23, 2015) (“Users might mistakenly reach Respondent’s resolving website by misspelling Complainant’s mark. Taking advantage of Internet users’ typographical errors, known as typosquatting, demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii).”); see also Microsoft Corporation v. michal restl c/o Dynadot Privacy, FA1409001582219 (Forum Nov. 4, 2014) (finding that the respondent’s addition of a single-character to the complainant’s mark illustrated typosquatting and provided further evidence that the respondent’s lacked rights or legitimate interests in the disputed domain name). The evidence supports Complainant’s assertion that Respondent purposefully introducing a misspelling of the word “running” in registering its <brooksrunnin.com> domain name. Therefore, the Panel holds that Respondent engaged in typosquatting which is not a legitimate interest under Policy ¶ 4(a)(ii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and is using the <brooksrunnin.com> domain name in bad faith as Respondent uses the domain name to redirect visitors to Complainant’s own website. Use of a domain name incorporating the mark of another to redirect internet users to that party’s own website is evidence of bad faith per Policy ¶ 4(a)(iii). See Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Forum May 12, 2011) (“The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant’s own site, is still registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).”). Complainant has provided the Panel with a screenshot of Respondent’s domain name’s resolving webpage that directly links to a product on Complainant’s own website. Therefore, the Panel holds that Respondent has engaged in bad faith per Policy ¶ 4(a)(iii).
Complainant argues that Respondent engages in typosquatting. A respondent engages in typosquatting when a domain name consists of a complainant’s mark with small typographical errors. See Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (finding the respondent engaged in typosquatting—and thus registered and used the at-issue domain names in bad faith—where the names consisted of the complainant’s mark with small typographical errors introduced therein). Complainant argues that Respondent purposefully introducing a misspelling of the word “running” in registering its <brooksrunnin.com> domain name. The Panel agrees; thus the Panel holds that Respondent engaged in typosquatting which is evidence of bad faith per Policy ¶ 4(a)(iii).
Lastly, Complainant argues Respondent had actual knowledge of Complainant’s rights in the BROOKS. Actual knowledge of Complainant’s rights in a mark prior to registering the domain name incorporating that mark 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.”). Registration and use of a domain name that incorporates a well-known mark is evidence of actual knowledge. See iFinex 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”). The record supports Complainant’s argument that its efforts to advertise and promote the BROOKS mark and its goods make the mark well-known. Furthermore, Respondent’s <brooksrunnin.com> domain name’s resolves to a webpage that directly links to a product on Complainant’s own website. Therefore, the Panel holds that Respondent had actual knowledge of Complainant’s rights in the BROOKS mark which constitutes bad faith per Policy ¶ 4(a)(iii).
The Panel finds 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 <brooksrunnin.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: September 19, 2019
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