Brooks Sports, Inc. v. Graham Thomas
Claim Number: FA2104001940033
Complainant is Brooks Sports, Inc. (“Complainant”), represented by Kevin M. Gibbs of Cozen O’Connor, Minnesota, USA. Respondent is Graham Thomas (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brooksrunningshoesuk.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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 2, 2021; the Forum received payment on April 2, 2021.
On April 6, 2021, MAT BAO CORPORATION confirmed by e-mail to the Forum that the <brooksrunningshoesuk.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 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 April 12, 2021, the Forum served the Complaint and all Annexes, including a Vietnamese language Written Notice of the Complaint, setting a deadline of May 3, 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@brooksrunningshoesuk.com. Also on April 12, 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.
A timely Response was received and determined to be complete on April 19, 2021.
On April 22, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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.
PRELIMINARY ISSUE: IDENTITY THEFT
Respondent may have been the victim of identity theft. Specifically, on April 19, 2021, the Forum received email correspondence from Respondent stating that it has no knowledge or possession of the disputed domain name. Throughout this Decision, the term “Respondent” will refer to the actual registrant of the domain name <brooksrunningshoesuk.com>.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDINGS
The Panel notes that the Registration Agreement is written in Vietnamese, thereby making the language of the proceedings in Vietnamese. Complainant did not submit a Vietnamese language complaint, but argues that since the incorporated mark, disputed domain name, and resolving website are in English, Respondent should be presumed to speak English. Complainant also argues that proceedings in Vietnamese would unduly prejudice Complainant. The Panel notes that the response from the Respondent listed under the WHOIS information is in English.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Vietnamese language Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
A. Complainant
Complainant manufactures and sells running shoes and related accessories. 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; Reg. 5,596,496, registered Oct. 30, 2018). Respondent’s <brooksrunningshoesuk.com> domain name is confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and adds the descriptive words “running” and “shoes”, along with the geographic term “uk” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <brooksrunningshoesuk.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed 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 attempts to pass off as Complainant to divert internet users to the disputed domain name’s resolving website, where Respondent purports to sell Complainant’s goods without authorization, or counterfeit products, while simultaenously hosting links to unrelated websites.
Respondent registered and uses the <brooksrunningshoesuk.com> domain name in bad faith. Respondent attracts internet users for commercial gain by passing off as Complainant and offering counterfeit products or Complainant’s products without authorization on the disputed domain name’s resolving website. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the BROOKS mark.
B. Respondent
Respondent Graham Thomas submitted a response claiming no knowledge or possession of the disputed domain name. The Panel notes that the <brooksrunningshoesuk.com> domain name was registered on Jan. 9, 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.
Complainant claims rights in the BROOKS mark through its registrations with the USPTO (e.g. Reg. 1,161,034, registered Jul. 14, 1981). Registration with the USPTO is generally sufficient to establish 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).
Complainant argues that the <brooksrunningshoesuk.com> domain name is confusingly similar to Complainant’s BROOKS mark. Under Policy ¶ 4(a)(i), adding the geographic term “uk” and/or descriptive terms related to Complainant’s business is generally insufficient in differentiating a disputed domain name from the mark it incorporates. See YETI Coolers, LLC v. Randall Bearden, FA 16880755 (Forum Aug. 10, 2016) (finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark); see also PAIGE, LLC v. Chris Kimber, FA 1714208 (Forum Mar. 9, 2017) (“Accordingly, the Panel agrees that… “uk” is an irrelevant addition under the Policy, creating confusing similarity under Policy ¶ 4(a)(i).”). The disputed domain name incorporates Complainant’s BROOKS mark, adds the descriptive words “running” and “shoes”, and the geographic term “uk”. Therefore, the Panel finds Respondent’s disputed domain name to be confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent is not commonly known by the <brooksrunningshoesuk.com> domain name, nor has Complainant 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, while a lack of evidence proving otherwise may affirm Complainant’s assertion that it never authorized or licensed Respondent to use its mark. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS of record identifies Respondent as “Graham Thomas”, and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its BROOKS mark in the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the <brooksrunningshoesuk.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), attempting to pass off as Complainant to divert internet users to a website that appears to sell counterfeit products or Complainant’s products without authorization, and may actually try to divert users to unrelated websites or services, is generally 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 Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization); see also U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Forum May 6, 2003) (holding that the respondent’s use of the complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services). Complainant provides screenshots of the disputed domain name’s resolving website, feature Complainant’s mark and purport to sell either counterfeit products or Complainant’s products without authorization. Complainant also alleges that some of the links on the website redirect to websites selling body piercings. Therefore, the Panel finds that 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) or (iii).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <brooksrunningshoesuk.com> domain name for bad faith attraction for commercial gain. Under Policy ¶ 4(b)(iv), using a disputed domain name to pass off as Complainant and divert internet users to its resolving website, where Respondent offers Complainant’s products without authorization, or counterfeit products, may be demonstrative of bad faith attraction for commercial gain. See Hunter Fan Co. v. MSS, FA 98067 (Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain and thus demonstrating bad faith per Policy ¶ 4(b)(iv) by creating confusion as to the complainant’s connection with the website by selling counterfeit products). Complainant’s screenshots of the disputed domain name’s resolving website feature Complainant’s marks and purport to sell either counterfeit products or Complainant’s products without authorization. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant argues that Respondent registered the <brooksrunningshoesuk.com> domain name with bad faith actual knowledge of Complainant’s rights in the BROOKS mark. Under Policy ¶ 4(a)(iii), actual knowledge may be sufficient to establish bad faith, and may be demonstrated by Respondent incorporating a registered mark into a disputed domain name, along with Respondent’s use of the disputed domain name’s resolving website. See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). The disputed domain name incorporates Complainant’s BROOKS mark, while the resolving website features Complainant’s mark and either counterfeit products or Complainant’s products without authorization. Therefore, the Panel finds that Respondent registered the disputed domain name with bad faith actual knowledge of Complainant’s rights in the BROOKS mark under Policy ¶ 4(a)(iii).
Therefore, Complainant has also satisfied 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 <brooksrunningshoesuk.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: May 7, 2021
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