Brooks Sports, Inc. v. Aatin Necdo / Petra Bland / Whoisprotection.cc / Domain Admin / Franziska Abt / Lucius Jimenez / Brigitte Schreiner
Claim Number: FA2102001931295
Complainant is Brooks Sports, Inc. (“Complainant”), represented by Mayura I. Noordyke of Cozen O’Connor, Minnesota, USA. Respondent is Aatin Necdo, Germany / Petra Bland, Germany / Whoisprotection.cc / Domain Admin, Malaysia / Franziska Abt, Germany / Lucius Jimenez, Australia / Brigitte Schreiner, Germany (collectively the “Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <brooksbrasil.com>, <brooks-nz.com>, <brooksosterreich.com>, <brooksrunningespana.com>, <brooksrunningnz.com>, <brooksshoestoronto.com>, <brooksshoesireland.com>, and <brooksrunnersaustralia.com> (the “disputed domain names”), registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; PDR Ltd. d/b/a PublicDomainRegistry.com; and MAT BAO CORPORATION (the “Registrars”).
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.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 8, 2021; the Forum received payment on February 8, 2021.
On February 8, 2021, February 9, 2021, and February 26, 2021, the Registrars confirmed by e-mail to the Forum that the <brooksbrasil.com>, <brooks-nz.com>, <brooksosterreich.com>, <brooksrunningespana.com>, <brooksrunningnz.com>, ,<brooksshoestoronto.com>, <brooksshoesireland.com>, and <brooksrunnersaustralia.com> disputed domain names are registered with the Registrars ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; PDR Ltd. d/b/a PublicDomainRegistry.com; and MAT BAO CORPORATION and that Respondent is the current registrant of the names. The Registrars have verified that Respondent is bound by their respective registration agreements 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 March 1, 2021, the Forum served the Complaint and all Annexes, including a Vietnamese language Written Notice of the Complaint, setting a deadline of March 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@brooksbrasil.com, postmaster@brooks-nz.com, postmaster@brooksosterreich.com, postmaster@brooksrunningespana.com, postmaster@brooksrunningnz.com, postmaster@brooksshoestoronto.com, postmaster@brooksshoesireland.com, postmaster@brooksrunnersaustralia.com. Also, on March 1, 2021, the Vietnamese language 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 March 25, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE 1: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged, and the Panel agrees, that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which are operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.” Therefore, the Panel concludes that the disputed domain names are all controlled or effectively owned by the same person or entity for the reasons set forth below.
The Panel finds that all the disputed domain names resolve to highly similar websites (including identical language on certain webpages and almost all disputed domain names contain similar errors and typographical errors), and all offer unauthorized goods of Complainant. Moreover, all of the disputed domain names were registered within a two-week period between December 23, 2020 and January 4, 2021, with a few of the disputed domain names being registered on identical days. Moreover, all the disputed domain names contain the BROOKS trademark in its entirety. Two of the disputed domain names use the identical generic term “shoe” to separate the BROOKS trademark and a geographic term, modifying it in essentially the same way (either through the addition of a descriptive term or a geographic term and/or a hyphen and followed by the generic Top-Level Domain (“gTLD”) “.com”), and two of the disputed domain names use the country code for New Zealand, “nz”. Finally, certain of the disputed domain names are registered with the same Registrar and use the exact same privacy protection service to hide the Registrant information.
In sum, the Panel has determined that all Respondents are properly part of this proceeding.
Under the Rules, the language of the proceedings is the language of the registration agreement, unless otherwise agreed upon by the parties, or unless the panel determines that a different language should be used under Rule 11. Here, the registration agreements for the disputed domain names are in Vietnamese. Pursuant to UDRP Rule 11(a), the Panel finds that it is appropriate to proceed in English since the disputed domain names all contain the English name “BROOKS”, two contain the English word “shoes”, two contain “running”, and another includes “runners.” The disputed domain names are also targeted at Complainant, which is a company headquartered in the United States. In addition, the websites to which the disputed domain names resolve all display at least some content that is in English, suggesting that Respondent is able to converse in English. Therefore, after considering the circumstances of the present case, the Panel has decided that the proceeding should be in English.
A. Complainant
Complainant is a world leader in athletic clothing and footwear, including high-performance running shoes. Complainant has rights in the BROOKS trademark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,161,034, registered July 14, 1981) (hereinafter referred to as the “BROOKS Mark”).
Complainant contends that the disputed domain names are identical or confusingly similar to Complainant’s BROOKS Mark as it includes the BROOKS Mark in its entirety, merely adding generic terms, hyphens, and/or geographic terms as well as the gTLD “.com”. Complainant additionally claims that Respondent lacks rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names nor has Respondent been authorized by Complainant to use the BROOKS Mark.
Finally, Complainant contends that Respondent registered and is using the disputed domain names in bad faith because the disputed domain names are used to misrepresent Respondent as affiliated with Complainant’s business. Moreover, the website to which the disputed domain names resolve contains unauthorized goods and Respondent also uses the disputed domain names as part of a phishing scheme.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant holds trademark rights in the BROOKS Mark, that the disputed domain names are confusingly similar to Complainant’s BROOKS Mark, that Respondents lack rights or legitimate interests in the disputed domain names, and that Respondents registered and are using the disputed domain names 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 the disputed domain names should be cancelled or transferred:
(1) the disputed domain names registered by Respondent are 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 disputed domain names; and
(3) the disputed domain names have been registered and are 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 Panel concludes that Complainant has rights in the BROOKS Mark based on the registration of the trademark with the USPTO (e.g., Reg. No. 1,161,034, registered July 14, 1981). Registration of a mark with the USPTO confers upon a complainant trademark rights for purposes of the Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”)
The Panel finds that Respondents’ Disputed Domain Names are confusingly similar to the BROOKS Mark under Policy ¶ 4(a)(i), as the Disputed Domain Names incorporate the trademark in its entirety, merely adding generic terms such as “shoes”, “runners”, and “running”, and geographic terms, such as Toronto, Ireland and Australia, a hyphen, and a “.com” gTLD. The addition of generic or geographic terms, a hyphen, and/or a gTLD generally fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Brooks Sports, Inc. v. Dieter Maier, FA2008001907703 (Forum Sept. 15, 2020) (holding <brookssaleaustralia.com> confusingly similar to Complainant’s BROOKS Mark despite addition of generic term, geographic term and gTLD). Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant’s BROOKS Mark per Policy ¶ 4(a)(i).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
In order for Complainant to succeed under this element, it must first make a prima facie case that Respondents lack rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondents to show that they have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interests in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). Here, the Panel holds that Complainant has made out a prima facie case.
The Panel finds that Respondents have no rights or legitimate interests in the disputed domain names as Respondents have not provided evidence nor proven that they are commonly known by the disputed domain names, nor has Complainant authorized Respondents to use the BROOKS Mark. Respondents have no relationship, affiliation, connection, endorsement or association with Complainant.
Moreover, the Panel finds that Respondents fail to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondents’ disputed domain names resolve to a website that offers the unauthorized sale of Complainant’s goods. The use of disputed domain names to offer unauthorized versions of a complainant’s product for sale is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(a)(i). See Russell & Bromley Limited v. Li Wei Wei, FA 1752021 (Forum Nov. 17, 2017) (“The respondent’s use of the disputed domain name to pass itself off as the complainant to advertise and sell unauthorized products of the complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii).”).
Additionally, the Panel finds that Respondents’ attempt to perpetrate a phishing scheme by gathering personal information from users on the website to which the disputed domain names resolve does not demonstrate rights or legitimate interests in the disputed domain names per Policy ¶ 4(a)(ii). See Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (finding the respondent lacked rights and legitimate interests in the domain name because it used the name to resolve to a website virtually identical to the Complainant’s to prompt users to enter their login information so that the Respondent could access that customer’s account).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
The Panel finds that, based on the record, the Complainant has demonstrated the existence of Respondent’s bad faith registration and use pursuant to paragraph 4(b) of the Policy.
The Panel finds that Respondent registered and is using the disputed domain names in bad faith because the disputed domain names resolved to a website that offered unauthorized or counterfeit versions of Complainant’s products for sale. See Kipling Apparel Corp. v. Yan Feng Geng, FA 1703296 (Forum Dec. 20, 2016) (finding the respondent registered and used the <kiplingstores.com> domain name in bad faith per Policy ¶ 4(b)(iii) because the respondent used the domain name to sell the complainant’s products that were either counterfeit or genuine products but resold without authorization).
Moreover, the Panel finds that Respondent had actual knowledge of Complainant’s BROOKS Mark when registering the disputed domain names because Respondent repeatedly used the BROOKS Mark on its website that displayed unauthorized or counterfeit versions of Complainant’s products for sale. Respondent had actual knowledge of Complainant’s BROOKS Mark where, as here, the Respondent used Complainant’s well-known trademark in a way that directed consumers away from Complainant’s official website. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct Internet traffic to a website which is a direct competitor of Complainant”).
Finally, the Panel finds that Respondent perpetrated a phishing scheme in an attempt to gather personal and/or financial information from customers arriving at Respondent’s website. Registering a disputed domain name to seek personal or financial information under false pretenses is evidence of bad faith under Policy ¶ 4(a)(iii). See Emdeon Business Services, LLC v. HR Emdeon Careers, FA1507001629459 (Forum Aug. 14, 2015) (finding that the respondent had engaged in an email phishing scheme indicating bad faith under Policy ¶ 4(a)(iii), where respondent was coordinating the disputed domain name to send emails to Internet users and advising them to disclose personal information in the process).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brooksbrasil.com>, <brooks-nz.com>, <brooksosterreich.com>, <brooksrunningespana.com>, <brooksrunningnz.com>, <brooksshoestoronto.com>, <brooksshoesireland.com>, and <brooksrunnersaustralia.com> disputed domain names be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: April 8, 2021
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