Brooks Sports, Inc. v. Sofie Schubert
Claim Number: FA2012001926982
Complainant is Brooks Sports, Inc. (“Complainant”), represented by Mayura I. Noordyke of Cozen O’Connor, Minnesota, USA. Respondent is Sofie Schubert (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brooksrunningshoescanada.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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 31, 2020; the Forum received payment on December 31, 2020.
On January 4, 2021, 1API GmbH confirmed by e-mail to the Forum that the <brooksrunningshoescanada.com> domain name is registered with 1API GmbH and that Respondent is the current registrant of the name. 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 January 4, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 25, 2021 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@brooksrunningshoescanada.com.
Also on January 4, 2021, 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 January 26, 2021 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the BROOKS established through its portfolio of trademark registrations described below and the goodwill that it has acquired by the use of the mark in connection with a variety of goods in the athletic apparel, footwear and accessories industry for many years.
Complainant alleges that the disputed domain name is confusingly similar to its BROOKS mark because it contains Complainant’s mark in its entirety and differs from the BROOKS trademark only by the addition of the generic terms “running” and “shoes,” in combination with the geographic term “Canada” and the generic Top-Level Domain (“gTLD”) <.com> extension. Complainant submits that where, as in this case, a domain name incorporates a distinctive mark in its entirety, it creates sufficient similarity between the mark and the domain name to render it confusingly similar. See Lowen Corp. v. Henry Chan, Case No. D2004-4030 (WIPO Aug. 5, 2004) (finding that the domain name lowensigns.com is confusingly similar to LOWEN).
Complainant submits that the additional elements are insufficient to distinguish the domain name and adds that the gTLD extension <.com> is irrelevant in determining the issue of similarity.
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name <brooksrunningshoescanada.com> arguing that Respondent has never been commonly known by the disputed domain name or by the BROOKS mark and has never acquired any trademark rights therein. There is no evidence in the WHOIS information to suggest that Respondent is known by the disputed domain name.
Given Complainant’s long-time and extensive rights in the BROOKS mark in connection with athletic apparel, footwear and accessories and related goods, Complainant submits that Respondent could not have rights in the BROOKS mark unless Complainant granted such rights to Respondent. However, that has not occurred.
Complainant asserts that Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. 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 refers to a screenshot of the website to which the disputed domain name resolves to illustrate 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.
The screenshot shows that the content of the website purports to offer Complainant’s goods for sale at discount rates. The homepage displays the Complainant’s BROOKS mark in the banner and displays images of Complainant’s products offered for sale at discount rates, using Complainant’s trademarks, product names, and product images in the listings.
Other aspects of content on Respondent’s website indicate that the website is illegitimate and fraudulent. For example, the “Shipping & Returns” link at the bottom of the home page leads to a webpage that that repeatedly refers to “body piercing” products, which are totally unrelated to the products offered for sale on the website. Below is an excerpt from the “Shipping & Returns” page:
“Non-Returnable Items A Product Will Only Be Accepted For Exchange Or Refund If It Is Returned Unworn, Undamaged And In New Condition. All Body Piercing Is Dispatched In Clear Plastic Bags And Sealed With A Tamper Proof Label Which Allows Customers To View The Items And Still Make Use Of Our Fantastic Returns Policy However, We Will Not Exchange Or Refund Any Item Of Body Piercing If We Believe That The Sealed Packaging Has Been Opened Or Tampered With. This Does Not Affect Your Statutory Rights. If An Item Has Been Engraved We Are Unable To Offer An Exchange Or Provide A Full Refund. We Will, However, Offer A 50% Refund.”
Furthermore, Complainant adds that Respondent’s website appears to be collecting personal information through an embedded form that requests information such as a mailing address and phone number and email address.
This web form is displayed through the “Register” link at the top of the website.
Finally, the footer of Respondent’s website includes the following copyright notice: “ Copyright © 2020 brooksrunningshoescanada. Powered by brooksrunningshoescanada.com”
Complainant submits that such use of its BROOKS mark in the copyright notice further indicates that Respondent is attempting to mislead consumers as to a connection or affiliation between Respondent and Complainant by trying to pass itself off as Complainant.”
Complainant submits that the disputed domain name was registered and is being used in bad faith arguing that Respondent’s conduct otherwise shows that Respondent actually knew about Complainant and Complainant’s BROOKS mark when the disputed domain name that incorporates a well-known trademark was registered.
Subsequently Respondent’s use of Complainant’s BROOKS mark in the domain name to divert visitors to Respondent’s web site for commercial gain as described above amounts to bad faith use.
Complainant concludes that the content posted on the web site to which the disputed domain name resolves, and the use Respondent made of the site provides evidence that Respondent actually knew about and is fully aware of Complainant’s BROOKS mark, as evidenced by the repeated use of Complainant’s BROOKS mark and the offering of unauthorized goods of Complainant. Such conduct clearly indicates Respondent’s attempt to cause consumer confusion and pass off as Complainant and further supports a finding of bad faith pursuant to Policy ¶ 4(a)(iii). See, e.g., Orbitz Worldwide, LLC v. Domain Librarian, Case No. FA1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize “constructive notice” as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant produces athletic apparel, footwear and accessories on which it markets using the BROOKS mark for which it owns a portfolio of United States registered trademarks including:
· United States registered trademark BROOKS, registration number 1161034, registered on July 14, 1981 on the Principal Register for goods in international class 25;
· United States registered trademark BROOKS (chevron design), registration number 4,631,302, registered on the Principal Register on November 4, 201 for goods in international class 25.
The disputed domain name <brooksrunningshoescanada.com> was registered on September 18, 2020 and resolves to a website that purports to offer Complainant’s products at discounted rates.
In the absence of any Response, there is no information available about Respondent except for that 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.
Respondent availed of a privacy service to conceal her identity on the published WhoIs, which was disclosed by the Registrar in the course of this proceeding.
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 convincing and uncontested evidence that it has rights in the BROOKS trademark that it established through its portfolio of trademark registrations described above and the goodwill that it has acquired by the use of the mark in connection the sale of athletic apparel, footwear and accessories industry for many years.
The disputed domain name consists of the BROOKS mark in combination with the terms “running”, “shoes”, “Canada” and gTLD extension <.com>.
Complainant’s BROOKS mark is the initial, dominant, and only distinctive element in the disputed domain name. The descriptive terms “running” and “shoes,” and the geographic term “Canada” add no distinctive character to the disputed domain name and for the purpose of comparison the gTLD <.com> may be ignored as it would be considered by Internet users to be a necessary technical element for a domain name.
This Panel finds therefore that the disputed domain name is confusingly similar to the BROOKS trademark in which Complainant has rights. 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 is known by the disputed domain name <brooksrunningshoescanada.com>;
· given Complainant’s long-time and extensive rights in the BROOKS mark in connection with athletic apparel, footwear and accessories and related goods, Respondent could not have rights in the BROOKS mark unless Complainant had granted such rights to Respondent, which has not occurred;
· Respondent has no relationship, affiliation, connection, endorsement or association with Complainant;
· Respondent has never requested or received any authorization, permission or license from Brooks to use the disputed domain name or the BROOKS mark in any way;
· the screenshot of the website to which the disputed domain name resolves illustrates 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;
· the screenshot shows that the content of the website purports to offer Complainant’s goods for sale using Complainant’s trademarks, product names, and product images in the listings without license or permission;
· links at the bottom of the home page leads to a webpage that repeatedly refers to “body piercing” products, which are totally unrelated to the products offered for sale on the website;
· Respondent’s website appears to be collecting personal information through an embedded form that requests information such as a mailing address and phone number and email address;
· the copyright notice on Respondent’s website uses the BROOKS mark in an attempt to mislead consumers as to a connection or affiliation between Respondent and Complainant by trying to pass itself off as Complainant.
It is well established that where a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in a domain name in issue, the burden of production shifts to the respondent to establish such rights or interests. In this proceeding Respondent has failed to discharge this burden.
This Panel must therefore find that the Respondent has no rights or legitimate interests in the disputed domain name and Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant has shown that it has a long and established reputation in the use of the BROOKS mark on athletic apparel and footwear. The disputed domain name contains a clear reference to both Complainant’s mark and running shoes.
No explanation was provided by Respondent as to why the disputed domain name was chosen and registered. It follows therefore that on the balance of probabilities the registrant of the disputed domain name was aware of Complainant and its athletic footwear products when the disputed domain name was chosen and registered.
Since it was registered, the disputed domain name has been used as the address of a website on which Respondent not only purports to offer for sale Complainant’s products at discounted rates but also contains references to body piercing products with which Complainant has no connection.
Respondent is using Complainant’s marks on her website in such a way as to create the impression that there is a commercial relationship with Complainant. Complainant’s BROOKS chevron design mark and logo is presented prominently on the website to which the disputed domain name resolves without license or authority of Complainant. Additionally Respondent’s website fails to identify Respondent or that Respondent has no connection with Complainant. Taken together these elements of content on Respondent’s website combine to create the misleading impression that the website is in some way associated with Complainant. Given that Respondent has sought to conceal her identity on the published WhoIs and has failed to respond in this proceeding, this Panel finds on the balance of probabilities that Respondent intentionally has sought to create this misleading impression.
Additionally, as the BROOKS mark is the dominant and only distinctive element in the disputed domain name, its use by Respondent is calculated to create initial interest confusion among Internet users which amounts to use in bad faith for the purposes of the Policy.
Complainant has alleged but has not adduced any evidence that the disputed domain name has been used for phishing.
This Panel finds therefore that on the balance of probabilities, Respondent is using the disputed domain name in bad faith by engaging in an intentional attempt to attract, for commercial gain, Internet users to her web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship ,affiliation, or endorsement of Respondents web site and the body piercing products referred to on it, with which Complainant has no connection.
This Panel finds therefore that the disputed domain name has been registered and is being used in bad faith.
Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to be granted the reliefs sought.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brooksrunningshoescanada.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: January 27, 2021
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