Brooks Sports, Inc. v. Hieronim Samelczak / Andrea Reither / Pilar Herrero / Reimar Volker / Kristin Kuehnlein
Claim Number: FA2010001918698
Complainant is Brooks Sports, Inc. (“Complainant”), represented by Mayura I. Noordyke of Cozen O’Connor, Minnesota, US. Respondent is Hieronim Samelczak / Andrea Reither / Pilar Herrero / Reimar Volker / Kristin Kuehnlein (“Respondent”), Poland, Germany, and Estonia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <brooksrunningshoesnz.com>, <brooksrunningshoesoutlet.com>, <brooksrunninguk.com>, <brookssuomi.com>, and <brooksrunningshoesoutlets.com>, registered with 1API GmbH.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 28, 2020; the Forum received payment on October 28, 2020.
On October 30, 2020, 1API GmbH confirmed by e-mail to the Forum that the <brooksrunningshoesnz.com>, <brooksrunningshoesoutlet.com>, <brooksrunninguk.com>, <brookssuomi.com>, and <brooksrunningshoesoutlets.com> domain names are registered with 1API GmbH and that Respondent is the current registrant of the names. 1API GmbH has verified that Respondent is bound by the 1API GmbH 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 3, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 23, 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@brooksrunningshoesnz.com, postmaster@brooksrunningshoesoutlet.com, postmaster@brooksrunninguk.com, postmaster@brookssuomi.com, postmaster@brooksrunningshoesoutlets.com. Also on November 3, 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 November 25, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
The identity of the underlying domain name registrants was protected by a privacy service but in consequence of these proceedings the Registrar disclosed the names of the holders of the domain names as the following: Hieronim Samelczak, Andrea Reither, Pilar Herrero, Reimar Volker and Kristin Kuehnlein.
Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant has alleged that the domain names are effectively controlled by the same person and/or entity, operating under aliases. In particular, Complainant submits that (i) the resolving websites share similarities, (ii) all domain names are registered with the same registrar, (iii) four of the five domain names have the same name server, and (iv) three of the domain names combine Complainant’s trademark, BROOKS, with a country name or abbreviation.
On balance, the Panel finds sufficient evidence of systemic similarities pointing to a single mind behind the domain names and so concludes that these proceedings can continue, treating the named domain name owners as the single Respondent.
A. Complainant
Complainant asserts trademark rights in BROOKS and alleges that the disputed domain names are confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant uses the trademark BROOKS in connection with the sale of sporting clothes and footwear;
2. the trademark, BROOKS, is registered with the United States Patent and Trademark Office (“USPTO”) as, inter alia, Reg. No. 1,161,034, registered July 14, 1981;
3. the disputed domain names were registered on the following dates:
|
Domain name |
Registration date |
|
<brooksrunningshoesnz.com> |
August 19, 2019 |
|
<brooksrunningshoesoutlet.com> |
June 5, 2020 |
|
<brooksrunninguk.com> |
June 20, 2020 |
|
<brookssuomi.com> |
July 10, 2020 |
|
<brooksrunningshoesoutlets.com> |
September 18, 2020 |
4. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark; and
5. the domain names resolve to webpages that use the trademark, BROOKS, and offer for sale goods of the same nature as those sold by Complainant’s business under the trademark.
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 based on 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.[i]
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights.[ii] Since Complainant provides evidence of its USPTO trademark registration the Panel is satisfied that it has rights in the name BROOKS.
The domain names take the trademark and add non-distinctive matter in the form of the generic words or phrases such as “running”, “running shoes” or “running shoes outlet/s” and/or country names (Suomi[iii]) or country abbreviations (UK, NZ). The Panel finds that the disputed domain names are confusingly similar to the trademark[iv] and so finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved, based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[v]
Neither the publicly available WHOIS information, nor the names of the underlying domain name holders, provides any prima facie evidence that Respondent might be commonly known by any of the disputed domain names. There is no evidence that Respondent has any trademark rights and Complainant states that it has not given Respondent permission to use the trademark for any purpose. The evidence shows no legitimate noncommercial or fair use as the domain names since they all resolve to websites which, to a degree, mimic Complainant's website and offer for sale competitive goods.
The Panel finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use under paragraph 4(c)(i) or (iii) of the Policy.
The onus shifts to Respondent to establish a legitimate interest in the domain names. In the absence of a Response, that prima facie case is not met and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
The Panel finds that paragraph 4(b)(iv) has direct application. The Panel has already found the compared terms to be confusingly similar and the Panel finds that the resolving website exists for commercial gain in some form or another. In terms of the Policy, the Panel finds that Respondent’s registered and used confusing similar domain names intending to create the requisite confusion described by paragraph 4(b)(iv).
The Panel finds registration and use in bad faith[vi] and so finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brooksrunningshoesnz.com>, <brooksrunningshoesoutlet.com>, <brooksrunninguk.com>, <brookssuomi.com>, and <brooksrunningshoesoutlets.com> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Date: November 27, 2020
[i] See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum Jul. 31, 2000) holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true; Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”)
[ii] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum Jun. 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)
[iii] The name by which Finns call Finland.
[iv] See, for example, Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) holding that the addition of both the word “advisors” and the gTLD “.com” did not negate a finding of confusing similarity under Policy ¶ 4(a)(i); see also, Dell Inc. v. SNAB Corporation, FA 1785051 (Forum May 30, 2018) finding the inclusion of a geographic term did not distinguish the domain name and increased possible confusion.
[v] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[vi] See, for example, DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); 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.”
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