Brooks Sports, Inc. v. chen jia jin
Claim Number: FA1910001869243
Complainant is Brooks Sports, Inc. (“Complainant”), represented by Mayura I. Noordyke of Cozen O’Connor, US. Respondent is chen jia jin (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brooshoes.com> (‘the Domain Name’), registered with Xiamen ChinaSource Internet Service Co., Ltd.
The undersigned certifies that she has acted independently and impartially and to the best of his or 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 October 30, 2019; the Forum received payment on October 30, 2019.
On November 06, 2019, Xiamen ChinaSource Internet Service Co., Ltd confirmed by e-mail to the Forum that the <brooshoes.com> domain name is registered with Xiamen ChinaSource Internet Service Co., Ltd and that Respondent is the current registrant of the name. Xiamen ChinaSource Internet Service Co., Ltd has verified that Respondent is bound by the Xiamen ChinaSource Internet Service 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 November 11, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 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@brooshoes.com. Also on November 11, 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 December 5, 2019, 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.
Preliminary Issue: Language of Proceeding
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.
A. Complainant
The Complainant’s contentions can be summarised as follows:
The Complainant is the owner of several trade marks containing BROOKS registered in the USA for athletic footwear including the wordmark BROOKS with first use recorded as 1914 and logo versions which have also been registered with use in commerce recorded since 1987. It has owned Brooksrunning.com since 1999.
The Domain Name registered in 2019 is a misspelling of the Complainant’s mark merely omitting the letters ‘ks’ and adding the generic term ‘shoes’ and the gTLD .com and is confusingly similar to the Complainant’s mark.
The Respondent is not commonly known by the Domain Name and is not authorised by the Complainant.
The web site attached to the Domain Name mimics the Complainant’s web site using the Complainant’s logo, displays pictures of the Complainant’s goods, says falsely that it is an official site of the Complainant and displays the address of the Complainant’s Australian distributor when there is no connection therewith. Consumers are likely to be confused into thinking that the site attached to the Domain Name is affiliated with the Complainant and the site is collecting their personal information. This fraudulent and phishing activity cannot be a bona fide offering of goods or services or a non commercial legitimate fair use.
It is typosquatting and opportunistic bad faith, registering a Domain Name containing a well known mark to divert consumers on the Internet for commercial gain by using the Complainant’s trade marks including its logo showing actual knowledge of the Complainant and its business. The site attached to the Domain Name is suspected to be related to another fraudulent site which was the subject of transfer to the Complainant under the Policy.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of several trade marks containing BROOKS registered in the USA for athletic footwear including the wordmark BROOKS with first use recorded as 1914 and logo versions which have also been registered with use in commerce recorded since 1987. It has owned Brooksrunning.com since 1999.
The Domain Name registered in 2019 has been used to point to a site mimicking the official site of the Complainant using the Complainant’s logo and the address of its Australian distributor and falsely stating that it is an official site.
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
The Domain Name consists of a misspelling of the Complainant’s BROOKS mark (registered in the USA for footwear and used since 1914) – omitting the letters ‘ks’ and adding the generic term ‘shoes’ and the gTLD “.com.”
The Panel agrees that misspellings such as the omission of letters does not prevent confusing similarity between the Domain Name and the Complainant's BROOKS trade mark pursuant to the Policy. See Am. Online, Inc. v David, FA104980 (Forum Apr 10, 2002) (‘The misspelling of a famous mark does not diminish the confusingly similar nature between the marks and the disputed domain name’).
Previous panels have found confusing similarity when a respondent merely adds a generic term to a Complainant's mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000)(finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). The Panel agrees that the addition of the generic term ‘shoes’ to the Complainant's mark does not distinguish the Domain Name from the Complainant's trade mark pursuant to the Policy
The gTLD “.com” does not serve to distinguish the Domain Name from the Complainant’s mark. See Red Hat Inc v Haecke FA726010 (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 the Complainant has rights.
Rights or Legitimate Interests
The Complainant has not authorised the use of a misspelt version of its mark. There is no evidence or reason to suggest the Respondent is commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 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 the Complainant's BROOKS mark spelled correctly and its official logo thereby strongly suggesting that there is a commercial connection with the 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 the site appears to be collecting customer data. Phishing and typosquatting cannot be a bona fide offering of goods and services or a legitimate non commercial or fair use.
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the 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 the Respondent’s site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as the Complainant’s trade mark spelt correctly and its official logo are used without permission. The use of the Complainant's logo shows that the Respondent is aware of the Complainant and its business. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of the 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) (holding that registering a domain name which incorporates a misspelt famous mark in the hope that Internet users will mistype it 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 the 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brooshoes.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: December 7, 2019
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