Brooks Sports, Inc. v. chen jia jin
Claim Number: FA1911001871373
Complainant is Brooks Sports, Inc. (“Complainant”), represented by Mayura I. Noordyke of Cozen O’Connor, Minnesota, USA. Respondent is chen jia jin (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brookswse.com>, registered with Xiamen ChinaSource Internet Service 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 14, 2019; the Forum received payment on November 14, 2019.
On November 20, 2019, Xiamen ChinaSource Internet Service Co., Ltd confirmed by e-mail to the Forum that the <brookswse.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 December 2, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 23, 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@brookswse.com. Also on December 2, 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 27, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant is a world-leader in athletic clothing and footwear.
The language of this proceeding should be in English.
Complainant has rights in the BROOKS mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <brookswse.com> domain name is identical or confusingly similar to Complainant’s mark as it adds the letters “WSE” to Complainant’s mark to and adds the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <brookswse.com> domain name. There is no evidence to suggest that Respondent is commonly known by the disputed domain name and Complainant has not authorized, permitted, or licensed Respondent to use the mark. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to resolve to a website which passes off as Complainant by displaying Complainant’s mark and products.
Respondent registered and uses the <brookswse.com> domain name in bad faith as Respondent uses the confusingly similar disputed domain name to attract Internet users for commercial gain. Respondent had actual and constructive knowledge of Complainant’s rights in the BROOKS mark when registering the disputed domain name as demonstrated by Respondent’s use of Complainant’s mark on the resolving webpage and display of Complainant’s products.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the BROOKS mark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the BROOKS trademark.
Respondent uses the <brookswse.com> domain name to address a website designed to pass itself off as being sponsored by Complainant. The website displays Complainant’s mark and products.
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”).
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. Respondent’s <brookswse.com> domain name incorporates the English word “brooks” and targets a company headquartered in the United States. The webpage addressed by the at-issue domain name is in English. These circumstances give rise to an unrebutted presumption that Respondent is proficient in English. Further, conducting the proceedings in Chinese would unduly and unnecessarily burden Complainant. Therefore, the Panel concludes that this proceeding should be in English. Morgan Stanley v. NaShan, FA1703414 (Forum, Dec. 14, 2016) (holding proceedings in English language because the registration of a .store domain “primarily targets English-speaking Internet users” and the disputed name contains English words); see also, The Toronto-Dominion Bank v. Long Xiang, FA1817214 (Forum, Dec. 11, 2018) (holding the proceeding should proceed in English because the term TD BANK, which is the dominant portion of one of the two disputed domain names at issue, does not carry any specific meaning in the Chinese language); see also, Siemens AG v. Li Chang Kong, D2017-1968 (WIPO, ) (proceeding with English language despite Chinese registration agreement because the disputed domain names consisted of Latin letters, rather than Chinese characters).
The at-issue domain is confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has a USPTO registration for its BROOKS trademark. Such registration is sufficient to demonstrate Complainant’s rights in the BROOKS mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <brookswse.com> domain name contains Complainant’s <brookswse.com> trademark, followed by the letters “wse” all followed by the top-level domain name “.com.” The difference between Respondent’s domain name and Complainant’s trademark is insufficient to distinguish the <brookswse.com> domain name from the BROOKS trademark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <brookswse.com> domain name is confusingly similar to Complainant’s BROOKS trademark. See Bloomberg Finance L.P. v. Sunny Bhadauria, FA 1786429 (Forum June 7, 2018) (finding the <bloombergquint.org> domain name to be confusingly similar to the complainant’s BLOOMBERG mark, as the name consists of the mark, the added term “quint” (which refers to the complainant’s Indian business partner “Quintillian Media”) and the gTLD “.org”); see also, Coachella Music Festival, LLC v. Domain Administrator / China Capital Investment Limited, FA 1734230 (Forum July 17, 2017) (“The addition of letters—particularly of those that create a common misspelling—fails to sufficiently distinguish a domain name from a registered mark.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
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.
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “chen jia jin” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <brookswse.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <brookswse.com> domain name for the purposes of Policy ¶ 4(c)(ii). 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).
Additionally, Respondent uses its <brookswse.com> domain name to pass itself off as Complainant. The confusingly similar domain name addresses a webpage which features Complainant’s trademark and products. Respondent’s use of the at-issue domain name in this manner indicates neither a bona fide offering of goods or services under Policy ¶ 4 (c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). 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).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below without limitation, there is evidence from which the Panel may conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
As mentioned above regarding rights and interests, Respondent uses the at-issue confusingly similar domain name to address a webpage displaying Complainant’s trademark and products. Respondent’s use of its <brookswse.com> domain name to mimic Complainant’s website in order to give the impression of affiliation or association with Complainant demonstrates bad faith registration and use under Policy ¶ 4(b)(iv). 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.”).
Additionally, Respondent had actual knowledge of Complainant’s rights in the BROOKS mark when it registered <brookswse.com> as a domain name. Respondent’s actual knowledge is evident from Respondent’s incorporation of Complainant’s well-known trademark in the at-issue domain name, as-well-as from Respondent’s display of Complainant’s trademark and products on the website addressed by the <brookswse.com> domain name. Respondent’s registration and use of a confusingly similar domain name with knowledge of Complainant’s rights in such domain name shows Respondent’s bad faith pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brookswse.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 28, 2019
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