Brooks Sports, Inc. v. Long Chen
Claim Number: FA2008001910555
Complainant is Brooks Sports, Inc. (“Complainant”), represented by Mayura I. Noordyke of Cozen O’Connor, Minnesota, USA. Respondent is Long Chen (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <brookses.fun>, <brookses.website>, and <brookses.xyz> ("the Domain Names"), registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of 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 August 28, 2020; the Forum received payment on August 28, 2020.
On September 1, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <brookses.fun>, <brookses.website>, and <brookses.xyz> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 September 2, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 22, 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@brookses.fun, postmaster@brookses.website, postmaster@brookses.xyz. Also on September 2, 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 September 24, 2020 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 Names be transferred from Respondent to Complainant.
A. Complainant
The Complainant is the owner of the mark BROOKS registered in the USA for footwear with first use recorded as 1914. It also has registered trademarks for its official logo.
The Domain Names registered in 2020 are confusingly similar to the Complainant’s trade mark adding only the letters "se" and the gTLDs ".fun", ".website" or ".xyz", none of which prevents said confusing similarity.
The Respondent does not have rights or legitimate interests in the Domain Names. The Respondent is not commonly known by the Domain Names and is not authorised by the Complainant.
The Domain Names resolve to web sites purporting to be official or authorised sites of the Complainant using its name spelt correctly and the Complainant’s official logo and purporting to sell the Complainant’s products using material copied from the Complainant’s site. Customer details are also being collected on the sites. The address and contact details shows on all three sites correspond to contact details already known to be associated with a scam.
The Respondent’s confusing and deceptive conduct constituting passing off and phishing and cannot be a bona fide offering of goods and services or legitimate noncommercial or fair use. It is bad faith registration and use, diverting and deceiving customers for commercial gain and misuse of a well-known mark. The contents of the web sites including the use of the Complainant’s logo shows the Respondent had actual knowledge of the Complainant and its business.>>
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the mark BROOKS registered in the USA for footwear with first use recorded as 1914. It also has registered trademarks for its official logo.
The Domain Names registered in 2020 point to sites using the Complainant’s name spelt correctly and the Complainant’s logo as a masthead appearing to be sites of or authorised by the Complainant and purporting to sell the Complainant’s products. The contact details given on the sites appear to be associated with another site known to be a scam site. The Domain Names appear to be typosquatting registrations.
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”).
The Domain Names each consist of a misspelling of the Complainant’s BROOKS mark (registered in the USA for footwear and used since 1914) adding the letters "se" to read "Brookses", and the gTLDs ".fun", ".website" or ".xyz".
Panels have found that adding extra letters to a registered mark does not distinguish a domain name from that mark. See Twitch Interactive, Inc. v Antonio Teggi, FA 1626528 (Forum Aug 3, 2015) (finding that twitcch.tv is confusingly similar to the TWITCH TV trade mark because the domain name consisted of a common misspelling of the mark by merely adding the letter ‘c’). The Panelist agrees with the Complainant that the addition of the random letters "se" does not prevent confusing similarity between the Domain Names and the Complainant’s trade mark which is still identifiable within the Domain Names.
gTLDs such as ".fun", ".website" or ".xyz" do not serve to distinguish the Domain Names from the Complainant’s mark. See Red Hat Inc v Haecke FA 726010 (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 Names are 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 from the WhoIs information that the Respondent is commonly known by the Domain Names. 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 Names is commercial and so cannot be legitimate non-commercial use.
The web sites attached to the Domain Names uses the Complainant's BROOKS mark spelled correctly and its official logo as a masthead 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 contact details associated with the sites attached to the Domain Names have been associated with phishing which is not a bona fide offering of goods or services. Nor is typosquatting (such as the misspelling of "Brooks" as "Brookses" in the Domain Names in this case) a bona fide offering of goods or services.
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Names 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 Names in relation to the Respondent’s sites is confusing and disruptive in that visitors to the sites might reasonably believe they are connected to or approved by the Complainant as the Complainant’s trade mark spelt correctly and its official logo are used as a masthead without permission on each site. 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 websites by creating a likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web sites 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) ('registering a domain name which entirely incorporates a famous mark with additional letter (s) in the hope that Internet users will mistype the Complainant’s mark 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 Names were 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 <brookses.fun>, <brookses.website>, and <brookses.xyz> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: September 24, 2020
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