Brooks Sports, Inc. v. chen jia jin
Claim Number: FA1904001836981
Complainant is Brooks Sports, Inc. (“Complainant”), represented by Mayura I. Noordyke of Cozen O’Connor, Minnesota, USA. Respondent is chen jia jin (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brookesvps.com>, registered with West263 International Limited.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 1, 2019; the Forum received payment on April 1, 2019.
On April 3, 2019, West263 International Limited confirmed by e-mail to the Forum that the <brookesvps.com> domain name is registered with West263 International Limited and that Respondent is the current registrant of the name. West263 International Limited has verified that Respondent is bound by the West263 International Limited 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 10, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 30, 2019 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@brookesvps.com. Also on April 10, 2019, 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 May 1, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant is known as a world-leader in athletic clothing and footwear, including high-performance running shoes.
Complainant has rights in the BROOKS mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <brookesvps.com> domain name is identical or confusingly similar to Complainant’s mark as it misspells Complainant’s mark by adding the letter “e” between the letters “k” and “s” while appending the letters “vps” and the “.com” gTLD.
Respondent has no rights or legitimate interests in the <brookesvps.com> domain name. Respondent is not commonly known by the disputed domain name, and Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. Respondent also does not use the domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to pass off as Complainant and offer for sale Complainant’s goods without authorization.
Further, numerous aspects of the webpages associated with the domain name indicate that the website is illegitimate and fraudulent and merely used to phish for personal information. Additionally, the facts in the present case mirror a similar case in a prior, recent UDRP proceeding where the Panel ordered the transfer of the disputed domain name.
Respondent registered and uses the <brookesvps.com> domain name in bad faith. Respondent uses the domain name to divert Internet users to Respondent’s website where it passes off as Complainant for commercial gain through the unauthorized sale of Complainant’s goods. Further, Respondent had actual and constructive knowledge of Complainant’s BROOKS mark given the following: (1) Respondent used the mark in a domain name to divert visitors to Respondent’s own copycat website; (2) Respondent has registered and is using a domain name that incorporates a well-known trademark; (3) Respondent’s conduct otherwise shows that Respondent actually knew about Complainant’s BROOKS mark; and, (4) the BROOKS mark is well-known.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in the BROOKS mark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the BROOKS trademark.
Respondent uses the domain name to pass off as Complainant and offer Complainant’s goods for sale without authorization as well has to phish for internet users’ private data.
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”).
Preliminary Issue: Language of Proceeding
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel finds that the proceeding should be in English.
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s USPTO trademark registrations for BROOKS are conclusive evidence of Complainant’s rights in the mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Additionally, Respondent’s <brookesvps.com> domain name contains Complainant’s entire BROOKS trademark with the letter “e” inserted between the mark’s “k” and “s.” The misspelled mark is followed by the letters “vps” and the domain concludes with the top level domain name “.com.” The differences between Complainant’s trademark and Respondent’s domain name are insufficient to differentiate the BROOKS trademark from Respondent’s <brookesvps.com> domain name for the purposes of Policy ¶ 4(a)(i). Therefore, Respondent’s domain name is found to be confusingly similar to Complainant’s trademark. See Coachella Music Festival, LLC v. Domain Administrator / China Capital Investment Limited, FA 1734230 (Forum July 17, 2017) (“The addition of letters—particularly of those that create a common misspelling—fails to sufficiently distinguish a domain name from a registered mark.”); see also Bittrex, Inc. v. Sergey Valerievich Kireev / Kireev, FA 1784651 (Forum June 5, 2018) (holding that the domain name consists of the BITTREX mark and adds “the letters ‘btc’ and the gTLD .com which do not distinguish the Domain Name from Complainant’s mark.”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
The WHOIS information for the <brookesvps.com> domain name identifies the domain name’s registrant as “chen jia jin” and the full record before the Panel contains no evidence that tends to prove that Respondent is commonly known by <brookesvps.com>. The Panel therefore concludes that Respondent is not commonly known by the <brookesvps.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (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); see also, Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
Furthermore, Respondent uses the at-issue domain name to pass itself off as Complainant and offer Complainant’s goods for sale without authorization. The website addressed by the at-issue domain name displays “Brooks – Official Website” and by Respondent’s further misappropriation of Complainant’s trade dress is meant to “look and feel” like Complainant’s official website. Indeed, the website although riddled with grammatical errors, displays images of Complainant’s footwear which appear to be offered for sale. Respondent’s use of the at-issue domain to pass itself of as Complainant in furtherance of the unauthorized sale of Complainant’s products is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶4(c)(iii). ). See BALENCIAGA SA v. ling lin, FA 1768542 (Forum Feb. 16, 2018) (“The disputed domain names incorporate Complainant's registered mark, and are being used for websites that prominently display Complainant's mark and logo, along with apparent images of Complainant's products, offering them for sale at discounted prices. The sites do not disclaim any connection with Complainant, and in fact seem to be designed to create an appearance of such a connection. Such use does not give rise to rights or legitimate interests.”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
The at-issue domain name was registered and used in bad faith. Policy ¶ 4(b) bad faith circumstances are present and there is additional non-Policy ¶ 4(b) evidence from which, without limitation, the Panel concludes that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
As mentioned above regarding legitimate rights and interests, Respondent uses the <brookesvps.com> domain name to pass itself off as Complainant for commercial benefit though the unauthorized sale of Complainant’s products on Respondent’s <brookesvps.com> website. Using the domain name in this manner demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”).
Likewise, Respondent’s use of the at-issue domain name to phish for third party private information via a form embedded within the <brookesvps.com> website demonstrates Respondent’s bad faith. The form, which is referred by multiple links on Respondent’s <brookesvps.com> website and is part of the website’s check-out process, requests information such as a mailing address and phone number, and requires would be purchasers to create an account. See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”).
Finally, Respondent had actual knowledge of Complainant’s rights in the BROOKS mark when it registered its <brookesvps.com> domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademark and from the fact that Respondent’s <brookesvps.com> website fraudulently attempts to present itself as an official website of Complainant by using the confusingly similar at-issue domain name and by misappropriating Complainant’s logo, trademark, and trade dress. Registering and using a confusingly similar domain name with knowledge of a complainant’s rights in such domain name indicates bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brookesvps.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 2, 2019
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