Brooks Sports, Inc. v. Liuzhao
Claim Number: FA2006001900494
Complainant is Brooks Sports, Inc. ("Complainant"), represented by Mayura I. Noordyke of Cozen O'Connor, Minnesota. Respondent is Liuzhao ("Respondent"), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brooks-runningshoes.com>, registered with Xiamen ChinaSource Internet Service Co., Ltd.
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 June 16, 2020; the Forum received payment on June 16, 2020.
On June 18, 2020, Xiamen ChinaSource Internet Service Co., Ltd confirmed by email to the Forum that the <brooks-runningshoes.com> domain name is registered with Xiamen ChinaSource Internet Service Co., Ltd and that Respondent is the current registrant of the name. Xiamen ChinaSource Internet Service Co., Ltd has verified that Respondent is bound by the Xiamen ChinaSource Internet Service Co., Ltd 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 June 19, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 9, 2020 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@brooks-runningshoes.com. Also on June 19, 2020, 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 July 14, 2020, 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 U.S. 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 <brooks‑runningshoes.com> in May 2020. The domain name is being used for a website that displays Complainant's BROOKS mark and logo, with "Brooks Running Official Online Shop" in the footer. The site contains images of Complainant's products and offers them at discounted prices. Complainant refers to the products as "unauthorized," which the Panel takes to mean that they are likely to be counterfeit. The website also solicits personal information from users through an embedded form. Complainant states that it has no relationship with Respondent and has not authorized Respondent to use the disputed domain name or Complainant's mark in any way.
Complainant contends on the above grounds that the disputed domain name <brooks-runningshoes.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 Panel notes that the Registration Agreement is written in Chinese. Rule 11(a) provides that the language of this administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise. Complainant requests that the proceeding be conducted in English, noting inter alia that the disputed domain name is composed of English-language words and corresponds to the name of a U.S. company, and that it is being used for a website that contains content exclusively in English. (The Panel has confirmed that the website content is in English even when the site is accessed through a proxy located in Hong Kong.) In addition, the Panel notes that the Written Notice of the Complaint was served upon Respondent in both English and Chinese, and Respondent has made no objection to Complainant's request that the proceeding be conducted in English.
Under the circumstances, the Panel finds it likely that Respondent is conversant in the English language, has received adequate notice of this proceeding, and has chosen not to participate. The Panel sees no reason to require Complainant to bear the burden and expense of arranging for a Chinese translation that is likely unnecessary to afford proper notice to Respondent, and that in any event Respondent is likely to ignore. See ALO, LLC v. Chen Jian Shan, FA 1819707 (deciding to conduct proceeding in English in similar circumstances). The Panel decides that English shall be the language of this proceeding.
The disputed domain name <brooks-runningshoes.com> incorporates Complainant's registered BROOKS trademark, adding a hyphen, the generic term "running shoes" (without the space), and the ".com" top-level domain. These alterations do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Brooks Sports, Inc. v. Duyen Do Thi Ngoc, FA 1748654 (Forum Oct. 20, 2017) (finding <brooksrunningsale.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. It is being used for a website designed to mislead users into believing it is associated with or authorized by Complainant. The website offers for sale unauthorized and likely counterfeit versions of Complainant's products, and possibly attempts to collect Internet users' personal and financial information. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Brooks Sports, Inc. v. Zhang Hanying, FA 1839514 (Forum May 17, 2019) (finding lack of rights or interests in similar circumstances); Brooks Sports, Inc. v. Duyen Do Thi Ngoc, 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 obviously intended to mislead Internet users into believing it is associated with Complainant and is using it to exploit this confusion, offering unauthorized and likely counterfeit products for sale and possibly phishing for users' personal and financial information. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Brooks Sports, Inc. v. Zhang Hanying, supra (finding bad faith in similar circumstances); Brooks Sports, Inc. v. Duyen Do Thi Ngoc, supra (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 <brooks-runningshoes.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: July 24, 2020
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