Brooks Sports, Inc. v. Kelly Genualdi
Claim Number: FA2001001879523
Complainant is Brooks Sports, Inc. (“Complainant”), represented by Mayura I. Noordyke of Cozen O’Connor, United States. Respondent is Kelly Genualdi (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brooksstore.com>, registered with NameCheap, Inc..
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 17, 2020; the Forum received payment on January 17, 2020.
On January 20, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <brooksstore.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 January 22, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 11, 2020 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@brooksstore.com. Also on January 22, 2020, 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 February 12, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 relies on its claimed rights in the BROOKS trademark established by its portfolio of registered trademarks described below and its long and extensive use of the BROOKS mark in its international sports footwear business.
Complainant submits that the disputed domain name is confusingly similar to its BROOKS trademark as it consists of the BROOKS trademark in its entirety in combination with generic term “store.”
Complainant submits that the addition of the word “store” to Complainant’s BROOKS mark does not negate the confusing similarity between the disputed domain name and Complainant’s mark and argues that Forum panels have found that adding a generic term or abbreviation or random letters fails to distinguish the resulting domain name from the incorporated trademark. See Allen Edmonds, LLC a/k/a Allen Edmonds Corporation v. Aitken Iain, Case No.
FA1905001841363 (Forum May 31, 2019) (finding that the addition of the generic term “store” to the complainant’s mark is insufficient to distinguish the disputed domain name from the complainant’s mark).
Complainant adds that the addition of a generic top-level domain <.com> is irrelevant in determining confusing similarity for the purposes of Policy ¶ 4(a)(i). See, e.g., Delta Corporate Identity, Inc. & Delta Air Lines, Inc., citing Busy Body, Inc. v. Fitness Outlet Inc., Case No. D2000-0127 (WIPO Apr. 22, 2000) (“[t]he addition of the generic top- level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants”).
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name, asserting that there is no evidence in the WHOIS information to suggest that Respondent has ever been commonly known by the disputed domain name or by the BROOKS mark or has ever acquired any trademark rights therein. Complainant adds that Respondent has never requested or received any authorization, permission or license from Complainant to use the disputed domain name or the BROOKS mark in any way.
Complainant has adduced evidence in the form of a screenshot illustrating that the disputed domain name resolves to a website that repeatedly displays Complainant’s BROOKS mark and offers Complainant’s unauthorized goods for sale. Complainant argues that the content on Respondent’s website creates a false sense that there is an affiliation, connection or association between Respondent and Complainant and that Respondent’s goods are in some way authorized, sponsored or endorsed by Complainant, when no such affiliation, connection, association, authorization, sponsorship or endorsement exists. Complainant adds that the use of Complainant’s BROOKS mark in the content throughout Respondent’s website site is likely to create confusion as to the source of Respondent’s products.
Complainant submits that such use of the disputed domain name cannot be characterized as being in good faith and in connection with a bona fide offering of goods or services. See Crocs, Inc. v. jing dian, Case No. FA1410001587214 (Forum Dec. 12, 2014) (finding bad faith where the respondent used the disputed domain name to display the complainant’s marks to sell unauthorized goods).
Complainant adds that Respondent’s use cannot be characterized as fair use. Panels often use the standard set forth in the Oki Data decision to assess nominative fair use. See Oki Data Americas, Inc. v. ASD, Inc., Case No. D2001-0903 (WIPO Nov. 6, 2001). Under the Oki Data standard, for a Respondent to show a bona fide interest under the Policy, Respondent must meet the following standards: (i) Respondent must actually be offering the goods or services at issue; (ii) Respondent must use the disputed domain name to sell only the trademarked goods (as opposed to using the domain name to bait Internet users and then switch them to other goods); (iii) the disputed domain name must accurately disclose the registrant’s relationship with the trademark owner; and (iv) the Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
Respondent must meet all of these factors in order to demonstrate a legitimate interest, and failure to meet any one of the factors is sufficient to render the fair use defense inapplicable. See, e.g., American Council on Educ. & GED Testing Service LLC v. robel getaneh, Case No. FA1712001761719 (Forum Jan. 31, 2018) (stating that the respondent “must satisfy all factors in order to have a legitimate interest in or right to use the domain name” and that the respondent’s “failure to meet any one of the factors (let alone multiple) is fatal to its fair use defense.”).
Complainant submits that Respondent fails to meet the Oki Data standard, and thus Respondent’s use of the disputed domain name does not constitute a fair use. Complainant submits that upon information and belief, Respondent is not, in fact, offering the goods that are listed for sale on the website. In addition, Respondent is using the disputed domain name to offer for sale unauthorized versions of Complainant’s trademarked goods at a discounted rate. Finally, Respondent’s website mischaracterizes Respondent’s relationship with Complainant by suggesting that the website is owned by or otherwise affiliated with Complainant, when, in fact, it is not.
Complainant adds that Respondent is not making a legitimate noncommercial use of the disputed domain name without intent for commercial gain to misleadingly divert consumers.
Complainant argues that the disputed domain name was registered and is being used in bad faith arguing that Respondent had actual knowledge of Complainant and Complainant’s trademark rights in its BROOKS mark and yet proceeded to register and use the <brooksstore.com> domain name in bad faith.
Complainant adds that the evidence shows that Respondent used Complainant’s BROOKS mark in a domain name to divert visitors to Respondent’s own web site for commercial gain; and that Respondent has registered and is using the disputed domain name that incorporates Complainant’s well-known trademark as the address of a website that offers for sale unauthorized goods of Complainant at discount rates. Complainant submits that such use is indicative of bad faith. See Swarovski Aktiengesellschaft v. ailong c ailong xiong, Case No. FA1407001571172 (Forum Sept. 5, 2014) (finding bad faith where respondent used the disputed domain name in connection with a website purportedly offering unauthorized goods of Complainant and stating that the respondent’s bad faith was “apparent in that [r]espondent is profiting from the likelihood Internet users will mistakenly believe the goods sold through the domain name’s website are legitimate…”).
Complainant further submits that the homepage associated with the disputed domain name displays Complainant’s BROOKS mark in the banner and displays images of Complainant’s products offered for sale at discount rates without Complainant’s authorization or consent and argues that Respondent is therefore using Complainant’s trademarks, product names, and product images on the website to which the disputed domain name resolves.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant was established in 1914 has grown to become a global manufacturer and supplier of sports footwear bearing the BROOKS trademark.
Complainant is the owner of a portfolio of registrations for the BROOKS trademark including United States registered trademark BROOKS, registration number 1,161,034, registered on July 14, 1981 for the following goods “Athletic shoes” in international class 25, claiming first use in commerce in 1914.
Complainant has an established Internet presence and maintains a website to which its <brooksrunning.com> domain name which was registered on November 25, 1999 resolves.
The disputed domain name was registered on November 25, 2019, which happened to be the twentieth anniversary of the registration of Complainant’s domain name and resolves to a website that purports to offer for sale what Complainant describes as “unauthorized goods” at discount rates.
The disputed domain name was registered using a privacy service with concealed the identity of Respondent.
In the absence of a Response or other communication from Respondent, there is no information available about Respondent except for that which is provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the Forum’s request for verification of the registration details of the disputed domain name in the course of this Complaint proceeding which revealed the identity Respondent.
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 has adduced uncontested evidence of its rights in the BROOKS trademark established by its ownership of the above-mentioned trademark registrations and its use of the mark in its sports footwear business.
The disputed domain name consists of Complainant’s mark in its entirety in combination with the word “store.” This Panel finds that Complainant’s mark is the first, dominant and only distinctive element in the disputed domain name and accepts Complainant’s submission that the addition of the word “store” to Complainant’s BROOKS mark does not distinguish the resulting domain name from the incorporated trademark.
This panel also finds that the for the purposes of comparison for the purposes of Policy ¶ 4(a)(i), the gTLD <.com> may be ignored in the circumstances of the present Complaint.
This Panel finds that the disputed domain name is confusingly similar to the BROOKS mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing that there is no evidence in the WHOIS information to suggest that Respondent has ever been commonly known by the disputed domain name or by the BROOKS mark or has ever acquired any trademark rights therein; that Respondent has never requested or received any authorization, permission or license from Complainant to use the disputed domain name or the BROOKS mark in any way; that the disputed domain name resolves to a website that repeatedly displays Complainant’s BROOKS mark and offers for sale goods that appear to be unauthorized goods of Complainant; that the content on Respondent’s website creates a false sense that there is an affiliation, connection or association between Respondent and Complainant and that Respondent’s goods are in some way authorized, sponsored or endorsed by Complainant, when no such affiliation, connection, association, authorization, sponsorship or endorsement exists and that the use of Complainant’s BROOKS mark in the content throughout Respondent’s website site is likely to create confusion as to the source of Respondent’s products; that Respondent’s use of the disputed domain name cannot be characterized as being in good faith and in connection with a bona fide offering of goods or services and that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers; that upon information and belief.
Complainant has further alleged that Respondent is not, in fact, offering the goods that are listed for sale on the website but instead Respondent is using the disputed domain name to offer for sale unauthorized versions of Complainant’s trademarked goods at a discounted rate; and that Respondent’s website mischaracterizes Respondent’s relationship with Complainant by suggesting that the website is owned by or otherwise affiliated with Complainant, when, in fact, it is not. Consequently, Respondent fails to meet the Oki Data standard and cannot claim a fair use defense as a bona fide reseller of Complainant’s products.
As Complainant has made out a prima facie case, the burden of production shifts to Respondent to prove that it has rights or legitimate interests. As Respondent has failed to respond to the Complaint to discharge that burden.
This Panel must therefore find that on the balance of probabilities respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
It is improbable that registrant of the disputed domain was unaware of Complainant, its name, mark and products when the disputed domain name was registered not only because of Complainant’s reputation but also because of the use to which the disputed domain name has been put to purport to sell Complainant’s products.
On the uncontested evidence of Complainant, he website to which the disputed domain name resolves purports to offer products for sale which are not Complainant’s products, but which bear Complainant’s trademark.
This Panel finds therefore that by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship ,affiliation, or endorsement of his web site and a product or service on your web site.
In reaching this decision, the Panel is conscious that Registrar in response to the Forum’s request for verification of the registration details of the disputed domain name in the course of this Complaint proceeding which revealed the identity Respondent.
This Panel finds that on the balance of probabilities the disputed domain name was registered and is being used in bad faith. Complainant has therefore also succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is entitled to succeed in this application.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brooksstore.com> domain name be TRANSFERRED from Respondent to Complainant.
_________________________
Panelist
Dated: February 13, 2020
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