DECISION

 

Brooks Sports, Inc. v. chen jia jin(143434) / chen jia jin

Claim Number: FA1910001866406

 

PARTIES

Complainant is Brooks Sports, Inc. (“Complainant”), represented by Mayura I. Noordyke of Cozen O’Connor, Minnesota, USA.  Respondent is chen jia jin(143434) / chen jia jin (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <brokesus.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 October 11, 2019; the Forum received payment on October 11, 2019.

 

On October 15, 2019, Xiamen 35.Com Technology Co., Ltd. confirmed by e-mail to the Forum that the <brokesus.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 October 16, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 5, 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@brokesus.com.  Also on October 16, 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 November 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.

 

Preliminary Issue: SUPPORTED LANGUAGE REQUEST

The Panel notes that 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).  Further, the Panel weighs the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party.  See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).  Therefore, after reviewing the applicable rules regarding the proceedings of the UDRP, and pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant is a world-leader in athletic clothing and footwear, including high-performance running shoes. Complainant has rights in the BROOKS mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,116,034, registered Jul. 14, 1981). See Compl. Ex. A. Respondent’s  <brokesus.com> domain name is confusingly similar to Complainant’s BROOKS mark as the name incorporates the mark in its entirety, merely deleting the letters “o” and “s” in the mark and adding the letter “e,” the geographic term “us” and a “.com” generic top-level domain (“gTLD”).

2.    Respondent has no rights or legitimate interests in the <brokesus.com> domain name. Respondent is not licensed, permitted or authorized to use Complainant’s BROOKS mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to pass off as Complainant in order to offer competing goods and obtain users’ personal information through a phishing scheme.

3.    Respondent registered and uses the <brokesus.com> domain name in bad faith. Respondent attempts to divert users, for commercial gain, to the disputed domain name’s resolving website. Furthermore, Respondent had actual and constructive knowledge of Complainant’s rights in the BROOKS mark prior to registering the disputed domain name.

 

B.   Respondent

1.    Respondent failed to submit a Response.

 

FINDINGS

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

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

3.    Respondent registered or used the <brokesus.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 claims rights in the BROOKS mark based upon its registration with the USPTO.  Registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i). Complainant provides copies of its’ USPTO registrations for the BROOKS mark (e.g., Reg. No. 1,116,034, registered Jul. 14, 1981). See Compl. Ex. A. Therefore, the Panel finds that Complainant has rights in the BROOKS mark per Policy ¶ 4(a)(i).

 

Next, Complainant asserts that the <brokesus.com> domain name is confusingly similar to the BROOKS mark as it contains the mark in its entirety, merely deleting the letters “o” and “s” in the mark and adding the letter “e,” the geographic term “us” and the “.com” gTLD. Misspelling of a complainant’s mark, either by adding or removing letters, and adding a geographic term along with a gTLD may not sufficiently mitigate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Am. Online, Inc. v. David, FA 104980 (Forum Apr. 10, 2002) (“The misspelling of a famous mark does not diminish the confusingly similar nature between the marks and the disputed domain names.”); 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.”); Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel agrees with Complainant and finds that the <brokesus.com> domain name is confusingly similar to Complainant’s BROOKS mark per Policy ¶ 4(a)(i).

 

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 <brokesus.com> domain name. Specifically Complainant argues Respondent is not licensed or authorized to use the BROOKS mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). 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.). Additionally, lack of authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record identifies Respondent as “chen jia jin(143434) / chen jia jin,” and there is no other evidence to suggest Respondent was authorized to use the BROOKS mark. See Compl. Ex. D. The Panel therefore finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).

 

Additionally, Complainant alleges Respondent fails to make a bona fide offering or goods or services or legitimate noncommercial or fair use because Respondent attempts to disrupt Complainant’s business by diverting internet users to a scam website where it sells competing products. Use of a domain name to disrupt complainant’s business in order to sell competing products may be evidence that a respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name under Policy ¶¶ 4(c)(i) or (iii). See Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”); see also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (“use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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, Complainant contends Respondent's website prominently displays the BROOKS trademark along with photographs of Complainant’s related products in an attempt to sell faulty products. See Compl. Ex. D. The Panel agrees that an attempt to sell Complainant’s counterfeit goods does not amount to a bona fide offering or good or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).

 

Furthermore, Complainant contends Respondent attempts to phish for internet users’ personal information at the website associated with the <brokesus.com> domain name. Use of a domain name to collect internet users’ personal and/or financial information may evidence a respondent lacks right and legitimate interests in a disputed domain name per Policy ¶ 4(a)(iii). See Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (finding the respondent lacked rights and legitimate interests in the domain name because it used the name to resolve to a website virtually identical to the complainant’s to prompt users to enter their login information so that the respondent may gain access to that customer’s cryptocurrency account). Complainant provides screenshots of the webpages associated with the disputed domain name which appears to be collecting users’ personal information through an embedded form that requests information such as a mailing address and phone number and also requires consumers to create an account. See Compl. Ex. D. Accordingly, the Panel concludes under a Policy ¶ 4(a)(iii) analysis that Respondent uses the disputed domain name to phish for internet users’ personal information.

 

Registration and Use in Bad Faith

Complainant argues that Respondent registered and uses the <brokesus.com> domain name in bad faith by disrupting Complainant’s business and diverting users to the disputed domain name which sells competing products. Disrupting a complainant’s business and diverting users to a disputed domain name which sells competing goods may evince bad faith per Policy ¶¶ 4(b)(iii) and (iv). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (finding bad faith where the respondent used the infringing domain name to disrupt the complainant’s business by diverting Internet users from the complainant’s website to the respondent’s website where it offered competing printer products); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Here, Complainant contends that Respondent is using the BROOKS mark on the resolving webpage to sell competing products. See Compl. Ex. D. Furthermore, by using the <brokesus.com> domain name along with photographs of Complainant’s products, Respondent attempts to profit by creating a likelihood of confusion with Complainant’s BROOKS mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site and products offered through the disputed domain name’s resolving website. Id. Therefore, the Panel finds Respondent attempts to disrupt Complainant’s business and commercially benefit off of Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) and/or (iv).

 

Finally, Complainant argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark. A respondent who registers an infringing domain name with knowledge of complainant’s mark may be acting in bad faith under Policy ¶ 4(a)(iii). See Coachella Music Festival, LLC v. ALEXANDER DE ALMEIDA LOPES, FA 1705267 (Forum Jan. 9, 2017) (finding the respondent had actual knowledge of the complainant’s COACHELLA mark when it registered and used the <coachellastuff.com> domain name—and thus did so in bad faith—because the complainant presented adequate evidence that its mark was well-known and famous).    Complainant asserts given the global reach of the Internet and the fact that Respondent's website displays the BROOKS mark, while copying content directly from Complainant’s legitimate website, Respondent must have been aware of Complainant and its BROOKS mark prior to registering the disputed domain name. See Compl. Ex. D. The Panel agrees that Respondent had actual knowledge of Complainant’s rights in the BROOKS mark prior to registering the <brokesus.com> domain name, thereby supporting a finding of bad faith 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 <brokesus.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

John J .Upchurch, Panelist

Dated:  November 20, 2019