Brooks Sports, Inc. v. Ya Lei Zhu
Claim Number: FA2102001932378
Complainant is Brooks Sports, Inc. (“Complainant”), represented by Mayura I. Noordyke of Cozen O’Connor, Minnesota, USA. Respondent is Ya Lei Zhu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brooksruns.com>, registered with Cloud Yuqu 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 17, 2021; the Forum received payment on February 17, 2021.
On February 18, 2021, Cloud Yuqu LLC confirmed by e-mail to the Forum that the <brooksruns.com> domain name is registered with Cloud Yuqu LLC and that Respondent is the current registrant of the name. Cloud Yuqu LLC has verified that Respondent is bound by the Cloud Yuqu 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 23, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 15, 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@brooksruns.com. Also on February 23, 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 March 18, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
The 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 trademark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,161,034, registered July 14, 1981). Respondent’s <brooksruns.com> domain name is identical or confusingly similar to Complainant’s BROOKS trademark as it merely adds the generic term “runs” and the generic top-level domain “.com” to Complainant’s trademark.
Respondent lacks rights or legitimate interests in the <brooksruns.com> domain name. Respondent is not commonly known by the disputed domain name nor has Respondent been authorized by Complainant to use the BROOKS trademark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent uses it to pass off as Complainant and offers to sell Complainant’s products on an unauthorized basis. Respondent also attempts to gather personal information from internet users.
Respondent registered and uses the <brooksruns.com> domain name in bad faith. Respondent uses the disputed domain name to pass off as Complainant and offers to sell Complainant’s products on an unauthorized basis. Additionally, Respondent had actual knowledge of Complainant’s rights to the BROOKS trademark prior to registering the disputed domain name based on Respondent’s use of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 1,161,034 BROOKS (word), registered July 14, 1981 for goods in class 25;
No. 5,596,496 BROOKS (fig), registered October 30, 2018 for goods in class 25;
No. 4,631,302 BROOKS (fig), registered November 4, 2014 for goods in class 25;
No. 1,683,840 BROOKS (fig), registered April 21, 1992 for goods in class 25; and
No. 4,728,097 BROOKS TRANSCEND (word), registered April 28, 2015 for goods in class 25.
The disputed domain name <brooksruns.com> domain name was registered on January 11, 2021.
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”).
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. However, in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the language of the complaint, even if it is different from the language of the registration agreement, can be accepted.
In this case, pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through i) the Chinese language Complaint and Commencement Notification, ii) the fact that the web site connected to the disputed domain name is in English clearly indicates that the Respondent is familiar with English languages, and, iii) absent a Response, and therefore determines that the remainder of the proceedings may be conducted in English.
The Complainant asserts rights in the BROOKS trademark through its registration of the trademark with the USPTO (e.g. Reg. No. 1,161,034, registered July 14, 1981). Registration of a trademark with the USPTO is sufficient to demonstrate rights in the trademark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has demonstrated rights in the BROOKS trademark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <brooksruns.com> domain name is confusingly similar to Complainant’s BROOKS trademark as it incorporates the trademark in its entirety and add the generic term “runs” and the generic top-level domain “.com.” Adding a generic term and a gTLD to a trademark fails to sufficiently distinguish a disputed domain name from a trademark per Policy ¶ 4(a)(i). See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See 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 interest 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.”).
The Complainant contends that Respondent lacks rights or legitimate interests in the <brooksruns.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the BROOKS trademark or register domain names using Complainant’s trademark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s trademark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Ya Lei Zhu” and Complainant argues there is no other evidence to suggest that Respondent was authorized to use the BROOKS trademark or was commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the <brooksruns.com> name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the disputed domain name to pass off as Complainant and offer to sell Complainant’s products on an unauthorized basis. Passing off as a complainant while offering to sell the complainant’s products on an unauthorized basis is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii).”). Here, Complainant argues that the homepage associated with the disputed domain name displays the BROOKS trademark 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. Additionally, the footer of Respondent’s website includes a copyright notice that contains Complainant’s trademark. Therefore, the Panel clearly finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant also argues that Respondent fails to use the <brooksruns.com> name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent attempts to gather personal information from internet users. Gathering personal information from internet users may show that a respondent lacks legitimate rights or interests in a disputed domain name per Policy ¶ 4(a)(ii). See Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Forum Feb. 26, 2015) (“The Panel agrees that the respondent’s apparent phishing attempt provides further indication that the respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). Here, Complainant has provided screenshots of Respondent’s resolving website that show a prompt for Internet users to input personal information. Therefore, the Panel finds that Respondent lacks rights or legitimate interests in the domain names per Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and uses the <brooksruns.com> domain name in bad faith because Respondent uses <brooksruns.com> to pass off as Complainant and offer to sell Complainant’s products on unauthorized basis. Passing off as a complainant while offering to sell the complainant’s products on an unauthorized basis are evidence bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”). As noted above, the Complainant provides screenshots of Respondent’s resolving webpage, in which Respondent displays the BROOKS trademark in the banner and displays images of Complainant’s products offered for sale, using Complainant’s trademarks, product name, and product images in the listings. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Complainant also contends that Respondent registered the <brooksruns.com> domain name with actual knowledge of Complainant’s rights in the BROOKS trademark based on Respondent’s use of the trademark. Use of a trademark to divert Internet traffic to a disputed domain name can demonstrate actual knowledge of a complainant’s rights in a mark at registration and show bad faith per Policy ¶ 4(a)(iii). 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”). Here, Complainant argues that Respondent’s conduct shows that Respondent actually knew about Complainant and Complainant’s BROOKS trademark as Respondent used the trademark in the Disputed Domain Name to divert visitors to Respondent’s own web site for commercial gain and Respondent has registered and is using domain name that incorporate a well-known trademark. The Panel agrees, and finds that Respondent registered the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brooksruns.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: March 24, 2021
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