Brooks Sports, Inc. v. betty turner
Claim Number: FA2102001930944
Complainant is Brooks Sports, Inc. ("Complainant"), represented by Mayura I. Noordyke of Cozen O'Connor, Minnesota, USA. Respondent is betty turner ("Respondent"), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brooksrunningireland.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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 4, 2021; the Forum received payment on February 4, 2021.
On February 5, 2021, 1API GmbH confirmed by email to the Forum that the <brooksrunningireland.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 February 8, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 1, 2021 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@brooksrunningireland.com. Also on February 8, 2021, the Written Notice of the Complaint, notifying Respondent of the email 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 March 5, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 has manufactured and sold running shoes and other athletic clothing and footwear under the BROOKS trademark since 1914. Complainant owns several United States trademark registrations for BROOKS and related marks, including a registration for BROOKS in the form of a standard character mark.
Respondent registered the disputed domain name <brooksrunningireland.com> in June 2020. The domain name is being used for a website that repeatedly displays Complainant's BROOKS mark and logo, and offers for sale products that appear to be those of Complainant. The title that is displayed for the home page is "Comfortable Brooks Running Shoes, Apparel & Accessories Outlet Ireland Online"; the BROOKS mark also appears within the titles for other pages of the website. Complainant states that Respondent has no relationship or affiliation with Complainant; that Respondent has not received any authorization, permission, or license to use its mark; and that Respondent is not known by the disputed domain name. Complainant suggests that the website is illegitimate and fraudulent, noting that it contains a number of language errors and irregular formatting, includes an embedded form that attempts to collect personal information from users, and causes the BROOKS mark to be displayed in a browser tab and elsewhere in an effort to pass off as Complainant.
Complainant contends on the above grounds that the disputed domain name <brooksrunningireland.com> is confusingly similar to its BROOKS mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <brooksrunningireland.com> incorporates Complainant's registered BROOKS trademark, adding the generic term "running" (which relates to Complainant's products), the geographic term "Ireland," and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Brooks Sports, Inc. v. Mandy Gaertner / Dennis Austerlitz / Klaudia Lang / Manuela Meyer / Marco Engel, FA 1929884 (Forum Feb. 26, 2021) (finding <brooksrunningaustralia.com> and <brooksireland.com> confusingly similar to BROOKS). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and it is being used for a misleading website that promotes unauthorized and possibly counterfeit versions of Complainant's products, falsely implying an affiliation with Complainant by displaying Complainant's mark and logo to a greater extent than would be permissible as a nominative fair use. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Brooks Sports, Inc. v. whbost / Jennifer Fabre, FA 1930268 (Forum Mar. 3, 2021) (finding lack of rights or interests in similar circumstances); Brooks Sports, Inc. v. Marco Holzman, FA 1930194 (Forum Feb. 26, 2021) (same); Brooks Sports, Inc. v. Mandy Gaertner / Dennis Austerlitz / Klaudia Lang / Manuela Meyer / Marco Engel, supra (same).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site 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 [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered a domain name incorporating Complainant's mark and is using it for a misleading website that passes off as Complainant for the purpose of promoting unauthorized and possibly counterfeit versions of its products, and possibly to phish for users' personal information. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Brooks Sports, Inc. v. Mandy Gaertner / Dennis Austerlitz / Klaudia Lang / Manuela Meyer / Marco Engel, supra (finding bad faith in similar circumstances); Brooks Sports, Inc. v. Liuzhao, FA 1900494 (Forum July 24, 2020) (same); Brooks Sports, Inc. v. Domain Administrator / See PrivacyGuardian.org, FA 1870279 (Forum Dec. 6, 2019) (same). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brooksrunningireland.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: March 9, 2021
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