Brooks Sports, Inc. v. Redacted for Privacy
Claim Number: FA2101001930204
Complainant is Brooks Sports, Inc. (“Complainant”), represented by Mayura I. Noordyke of Cozen O’Connor, Minnesota, USA. Respondent is Redacted for Privacy (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brookshot.com>, registered with Dynadot, LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 29, 2021; the Forum received payment on January 29, 2021.
On January 29, 2021, Dynadot, LLC confirmed by e-mail to the Forum that the <brookshot.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 February 2, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 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@brookshot.com. Also on February 2, 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.
A timely Response was received and determined to be complete on February 10, 2021.
On February 12, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant is a world-leader in athletic clothing and footwear, including high-performance running shoes. Complainant has rights in the BROOKS mark through its registrations with the United States Patent and Trademark Office (“USPTO”). (e.g. Reg. 1,161,034, registered July 14, 1981). See Compl. Ex. A. Respondent’s <brookshot.com> domain name is identical or confusingly similar to Complainant’s BROOKS mark as it incorporates the mark in its entirety and adds the word “hot”, along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <brookshot.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use its BROOKS mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead passes off as Complainant on the disputed domain name’s resolving website, where it offers Complainant’s products for sale without authorization and possibly collects internet user data.
Respondent registered and uses the <brookshot.com> domain name in bad faith. Respondent attracts internet users for commercial gain by passing off as Complainant on the disputed domain name’s resolving website and offering Complainant’s products for sale without authorization. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the mark.
Respondent’s response claiming identity theft only further demonstrates that the disputed domain name was registered in bad faith, and should be transferred to Complainant.
B. Respondent
Respondent expressed its Response in an email received by the Forum on February 5, 2021 which, formal parts omitted, stated as follows.
“To whom it may concern:
I received a Written Notice of Complaint regarding Brooks Sport, Inc. v.(
Redacted for Privacy) (FA2101001930204)).
The referenced case corresponds with a website brookshot.com. I do not own and have never owned this domain site. The corresponding email addresses ( Redacted) leads me to believe this is a scam. I am concerned about potential identity theft and would like this resolved as quickly as possible.
Please feel free to contact me at (Redacted) for questions or concerns.”
In its Additional Submission, Complainant submitted that the Response showed that Respondent did not have rights or legitimate interests in the disputed domain name and that the disputed domain name has been registered and is being used in bad faith, potentially in connection with identity theft and other fraudulent activities.
2. Complainant has established its trademark rights in the BROOKS mark through its registrations with the United States Patent and Trademark Office (“USPTO”). (e.g. Reg. 1,161,034, registered Jul. 14, 1981).
3. Respondent, registered the <brookshot.com> domain name on December 23, 2020.
4. Respondent passes itself off as Complainant on the disputed domain name’s resolving website, where it offers Complainant’s products for sale without authorization and possibly collects internet user data.
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.
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the BROOKS mark through its registrations with the USPTO. (e.g. Reg. 1,161,034, registered Jul. 14, 1981; Reg. 5,596,496, registered Oct. 30, 2018). See Compl. Ex. A. Registration with the USPTO is generally sufficient in establishing rights in a mark under Policy ¶ 4(a)(i). See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s BROOKS mark. Complainant argues that Respondent’s <brookshot.com> domain name is confusingly similar to Respondent’s BROOKS mark. Under Policy ¶ 4(a)(i). adding a generic or descriptive term, along with the “.com” gTLD is generally insufficient in differentiating a disputed domain name from the mark it incorporates. See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”). The disputed domain name incorporates Complainant’s BROOKS mark in its entirety and adds the word “hot”, along with the “.com” gTLD. Therefore, as the Panel agrees, it finds Respondent’s disputed domain name is identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s BROOKS trademark and to use it in its domain name in its entirety, adding only the generic word “hot”, which does not negate the confusing similarity that is present;
(b) Respondent, registered the <brookshot.com> domain name on December 23, 2020;
(c) Respondent passes itself off as Complainant on the disputed domain name’s resolving website, where it offers Complainant’s products for sale without authorization and possibly collects internet user data.
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent is not commonly known by the <brookshot.com> domain name, nor has Complainant licensed or authorized Respondent to use its BROOKS mark in the disputed domain name. Under Policy ¶ 4(c)(ii), relevant WHOIS information, among other evidence, may demonstrate that a Respondent is not commonly known by a disputed domain name. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS of record identifies Respondent as [ REDACTED], and nothing in the record rebuts Complainant’s submission that it never authorized or licensed Respondent to use its BROOKS mark in the disputed domain name. Therefore, as the Panel agrees, it finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the <brookshot.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to pass off as a Complainant and divert internet users to its resolving website, where Respondent sells Complainant’s goods without authorization and collects user information is not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”); see also iFinex Inc. v. Yuri Hefetz / Genie-Solution, FA 1789385 (Forum July 9, 2018) (holding that the respondent’s mimicing the complainant’s website in order to cause existing or potential customers to falsely believe they are setting up a new account with the complainant is prima facie evidence of the respondent’s lack of rights and legitimate interests in the disputed domain name). Complainant provides screenshots of the disputed domain name’s resolving website, which features Complainant’s mark and a false copyright notation claiming to be the “official” website of Complainant, while purporting to sell Complainant’s goods without authorization from Complainant, and possibly collecting user information. See Compl. Ex. C. Therefore, as the Panel agrees, it finds Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not sought in the Response to rebut the prima facie case established by Complainant, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <brookshot.com> domain name for bad faith attraction for commercial gain. Under Policy ¶ 4(b)(iv), passing off as a Complainant and selling Complainant’s products without authorization on a disputed domain name’s resolving website is generally considered bad faith attraction for commercial gain. See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”); see also Fossil Inc. v. NAS, FA 92525 (Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods). The Panel recalls Complainant’s screenshots of the disputed domain name’s resolving website, which features Complainant’s mark, along with what appear to be Complainant’s products for sale without authorization. See Compl. Ex. C. Therefore, as the Panel agrees, it finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent registered the <brookshot.com> domain name with actual knowledge of Complainant’s rights in the BROOKS mark. Under Policy ¶ 4(a)(iii), actual knowledge is generally sufficient to demonstrate bad faith registration and may be evidenced by Respondent’s incorporation of a well-known and/or registered mark into a disputed domain name, as well as Respondent’s use of the disputed domain name’s resolving website. See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). The Panel recalls that the disputed domain name incorporates Complainant’s mark in its entirety, while its resolving website contains Complainant’s mark and products for sale. See Compl. Ex. C. Therefore, as the Panel agrees, it finds Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the BROOKS mark and in view of the conduct of Respondent with respect to the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
PANEL NOTE: REDACTION OF RESPONDENT’S IDENTITY
Before announcing its Decision, the Panel wishes to raise another matter. In this proceeding, Respondent contended in effect that it did not own and has never owned this domain name and that it believes the registration and use of the domain name amount to a scam. It goes on to say that it is concerned about potential identity theft and would like the matter resolved as quickly as possible.
The evidence has made it clear in the opinion of the Panel that a fraud was perpetrated in the registration and use of the domain name and that the Respondent’s name was used without its knowledge or consent. Thus, although the named Respondent is the domain name holder and the proper Respondent in this proceeding, the real name and contact details of the person who wrongly effected the registration are unknown. It is also clear that this is the reason why Respondent very properly has made the foregoing submission.
This gives rise to the question whether there should be a redaction from the decision to protect the privacy of the Respondent. Neither party has requested itself any redaction. However, the Panel has formed the view that it may well be unfair to the Respondent to continue to have its name associated with the proceeding, and where the impression may be given to internet users that Respondent has responsibility for some of the events, whereas in fact Respondent does not have any such responsibility, being an innocent party.
The Panel has therefore decided to consider on its own initiative whether it should exercise the power to determine whether there should be a redaction from the decision to protect Respondent’s privacy. In considering the issue, the Panel refers to and incorporates the views it expressed when it considered this issue in OSilas Foundation v. Redacted for Privacy, Forum, FA2004001892126 (May 6, 2020) and it has taken that decision and the following rules and decisions into account.
Under Policy ¶ 4(j) the Panel has power to determine that portions of its decision may be redacted. The practical result of the exercise of this power is that the provider, in this case the Forum, will not publish on the internet the full decision, but will redact the portion determined by the Panel to be redacted. It is clear that the language of the Policy in that regard is wide enough to redact from a decision the case caption and any other reference to the named Respondent.
According to Policy ¶ 4(j), “[a]ll decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision.” In Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellzfargo.com>, FA 362108 (Forum Dec. 30, 2004) and Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellsfargossl>, FA 453727 (Forum May 19, 2005), the panels omitted the respondents’ personal information from the decisions, pursuant to Policy ¶ 4(j), to protect the respondents who claimed to be victims of identity theft from becoming aligned with acts the actual registrants appeared to have sought to impute to the respondents.
The Panel notes here that the power given to it by Policy ¶ 4(j) is a discretionary one that must be exercised judicially. In that regard the Panel would have to be satisfied that the case was an “exceptional” one and that it was appropriate to be made in all the circumstances.
ICANN Rule 16(b) also makes practical provision for the publication of the full decision except if the Panel determines otherwise under Policy ¶ 4(j).
It is true that Forum Supplemental Rule 15(b) provides “All requests pursuant to Policy paragraph 4(j) and Rule 16(b) to have a portion of the decision redacted, must be made in the Complaint, the Response, or an Additional Submission that is submitted before the Panel’s decision is published.” But in those cases where there is no request, such as the present case, the Panel has a discretion although, as has just been noted, the discretion must be exercised judicially.
The Panel notes that previous decisions have held that the registrar-confirmed registrant of a disputed domain name (per the WHOIS at commencement of the proceeding) is the proper respondent, notwithstanding the possibility that said respondent’s identity was stolen. See, e.g., Banco Bradesco S/A v. Gisele Moura Leite, D2014-0414 (WIPO Apr. 30, 2014). Despite this, the power to redact a portion of a decision is expressly conferred by Policy ¶ 4(j) and may be implemented by ICANN Rule 16 (b).Thus, in the present case the named registrant is the proper Respondent.
The role of the Panel is then to determine whether the circumstances of the present case including the apparent theft of Respondent’s identity warrant the redaction of Respondent’s name and any other identifying information from the Panel’s decision.
The Panel has considered this matter carefully. It is clear that whoever was responsible for registering the domain name in the name of Respondent has stolen its identity and been responsible for the scam and potential identity theft raised by named Respondent. Thus, in the opinion of the Panel, the identity of the Respondent should be protected by redaction.
The Panel has therefore decided that in all the circumstances this is an exceptional case and that it is appropriate to redact Respondent’s name and information from the Panel’s decision. The Panel therefore determines for the purposes of Policy ¶ 4(j) and ICANN Rule 16(b) that this will be done.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brookshot.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: February 15, 2021
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