Brooks Sports, Inc. v. Lucas Pfaff / Keefe Walle
Claim Number: FA2102001932366
Complainant is Brooks Sports, Inc. (“Complainant”), represented by Mayura I. Noordyke of Cozen O’Connor, Minnesota, USA. Respondent is Lucas Pfaff / Keefe Walle (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brooksrunningsg.com>, registered with MAT BAO CORPORATION.
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 17, 2021. The Forum received payment on February 17, 2021. The Complaint was received in English.
On February 26, 2021, MAT BAO CORPORATION confirmed by e-mail to the Forum that the <brooksrunningsg.com> domain name is registered with MAT BAO CORPORATION and that Respondent is the current registrant of the name. MAT BAO CORPORATION has verified that Respondent is bound by the MAT BAO CORPORATION registration agreement, which is in Vietnamese, 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 English language Complaint and all Annexes, including a Vietnamese and English 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@brooksrunningsg.com. Also on March 1, 2021, the Vietnamese and English 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 29, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDINGS
As noted, the Registration Agreement is in Vietnamese. Pursuant to Rule 11(a), the language of the proceeding shall be Vietnamese unless otherwise determined by the Panel, having regard to the circumstances of the proceeding.
Complainant submits that the language of the proceeding should be English. Respondent has neither consented nor objected to this. The domain name <brooksrunningsg.com> comprises English words. It resolves to a website with exclusively English content.
In the absence of any Response, these circumstances satisfy the Panel that Respondent is sufficiently conversant and proficient in the English language that it would be unnecessarily time-consuming and costly to require Complainant to translate the Complaint into Vietnamese. Accordingly, pursuant to Rule 11(a), the Panel determines that the language of the proceeding shall be English.
A. Complainant
Complainant provides athletic clothing and footwear under the BROOKS trademark and operates the “www.brooksrunning.com” website. Complainant has rights in the BROOKS mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”). Respondent’s <brooksrunningsg.com> domain name is confusingly similar to Complainant’s BROOKS mark.
Respondent has no rights or legitimate interests in the <brooksrunningsg.com> domain name. Respondent is not commonly known by the domain name and has no relationship with Complainant, nor is Respondent authorized to use the BROOKS mark. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to divert consumers to Respondent’s website where it passes itself off as Complainant, offers unauthorized goods for sale, and potentially engages in phishing.
Respondent registered and uses the <brooksrunningsg.com> domain name in bad faith. The website to which the domain name resolves repeatedly displays Complainant’s BROOKS mark; offers for sale goods that appear to be unauthorized goods of Complainant; and creates a false sense that Respondent and its goods are in some way authorized, sponsored or endorsed by Complainant. Respondent’s use of Complainant’s well-known BROOKS mark throughout the website is likely to create confusion as to the source of Respondent’s products as well as any affiliation, connection or association between Respondent and Complainant and its BROOKS mark, when no such affiliation exists.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 shown that it has rights in the BROOKS mark based on registration of the mark with the USPTO (e.g., Reg. No. 1,161,034, registered July 14, 1981). The Panel finds the Respondent’s <brooksrunningsg.com> domain name to be confusingly similar to Complainant’s BROOKS mark as it simply adds to the mark the generic term “running” and the Singapore country code “sg”, which are insufficient to distinguish the domain name from the mark, together with the inconsequential “.com” generic top-level domain (“gTLD”) which may be ignored.
Complainant has established this element.
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in a disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent 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) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The domain name <brooksrunningsg.com> was registered on January 8, 2021, many years after Complainant registered its well-known BROOKS trademark and many years after Complainant started using for its website the domain name <brooksrunning.com>, which it registered in 1999. The <brooksrunningsg.com> domain name differs from Complainant’s <brooksrunning.com> domain name only by the addition of the Singapore country code “sg” before the gTLD “.com”. It resolves to a webpage imitating that of Complainant and frequently displaying Complainant’s BROOKS mark.
These circumstances, coupled with Complainant’s assertions, constitute a prima facie case that Respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii). Accordingly, the burden shifts to Respondent to show it does have rights or legitimate interests. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
In the circumstances of this case, the Panel finds that Respondent has no rights or legitimate interests in respect of the <brooksrunningsg.com> domain name.
Complainant has established this element.
Registration and Use in Bad Faith
This element requires Complainant to establish, on the balance of probability, that Respondent both registered the disputed domain name in bad faith and is using it in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
By the addition of the Singapore country code “sg” before the gTLD “.com” the <brooksrunningsg.com> domain name is clearly a deliberately typosquatted version of Complainant’s <brooksrunning.com> domain name (itself a basis for finding bad faith).
Further, the content of the website to which the <brooksrunningsg.com> domain name resolves satisfies the Panel that Respondent was well aware of Complainant’s well-known BROOKS mark when registering the domain name and that, by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s well-known BROOKS mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and of the products on its website.
Accordingly, the Panel finds that the <brooksrunningsg.com> domain name was registered and is being used in bad faith.
The Panel notes that Respondent’s bad faith is also evidenced by the provision of false contact details in Australia to the Registrar, namely an address purporting to be in the city of Whyalla, in the State of New South Wales, whereas the city of Whyalla is in the State of South Australia.
Complainant has established this element.
DECISION
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 <brooksrunningsg.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: March 30, 2021
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