Brooks Sports, Inc. v. chen jia jin(143434) / chen jia jin
Claim Number: FA1904001840410
Complainant is Brooks Sports, Inc. (“Complainant”), represented by Mayura I. Noordyke of Cozen O’Connor, Minnesota, USA. Respondent is chen jia jin(143434) / chen jia jin (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brooksos.com>, registered with Xiamen 35.Com Technology 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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 24, 2019; the Forum received payment on April 24, 2019.
On April 26, 2019, Xiamen 35.Com Technology Co., Ltd. confirmed by e-mail to the Forum that the <brooksos.com> domain name is registered with Xiamen 35.Com Technology Co., Ltd. and that Respondent is the current registrant of the name. Xiamen 35.Com Technology Co., Ltd. has verified that Respondent is bound by the Xiamen 35.Com Technology 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 April 30, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 20, 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@brooksos.com. Also on April 30, 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 22, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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 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 decides that the proceeding should be in English.
A. Complainant
Complainant, Brooks Sports, Inc., is a world-leader in athletic clothing and footwear, including high-performance running shoes. Complainant has rights in the BROOKS mark based upon the registration with the United States Patent Office (“USPTO”) (e.g., Reg. No. 1,161,034, registered Jul. 14, 1981). See Compl. Ex. A. Respondent’s <brooksos.com> is confusingly similar to Complainant’s mark as Respondent incorporates the entire BROOKS mark, merely adding the letters “o” and “s” and appends the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <brooksos.com> domain name. Respondent is not licensed or authorized to use Complainant’s BROOKS mark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the <brooksos.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the <brooksos.com> domain name to sell Complainant’s counterfeit products. In addition, Respondent uses the disputed domain name to impersonate Complainant in furtherance of a fraudulent phishing scheme.
Respondent has registered and uses the <brooksos.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the disputed domain name. Finally, Respondent must have had actual and/or constructive knowledge of Complainant’s BROOKS mark prior to registering the <brooksos.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain name was registered on April 16, 2019
The Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark; that Respondent has no rights or legitimate interests in or to the disputed domain name; and that Respondent has engaged in bad faith use and registration of the disputed domain name.
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 finds that the disputed domain name, <brooksos.com>, is confusingly similar to Complainant’s valid and subsisting trademark, BROOKS. Complainant has adequately plead its rights and interests in and to this trademark. Respondent arrives at the disputed domain name by merely adding the generic letters “o” and “s” to Complainant’s trademark and adding the g TLD “.com.” This is insufficient to distinguish the disputed domain name from Complainant’s trademark.
As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.
The Panel also finds that Respondent has no rights or legitimate interests in or to the disputed domain name. Respondent has no right, permission or license to register the disputed domain name. Respondent is not commonly known by the disputed domain name. Further, Respondent does not use the disputed domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent apparently uses the <brooksos.com> domain name to sell Complainant’s counterfeit products. In addition, Respondent uses the disputed domain name to impersonate Complainant in furtherance of a fraudulent phishing scheme.
As such, the Panel finds that Respondent has no rights or legitimate interests in or to the disputed domain name.
The Panel further finds that Respondent has engaged in bad faith use and registration of the disputed domain name. Respondent registered and is using the disputed domain name in bad faith by apparently disrupting Complainant’s business and diverting users to the disputed domain name where counterfeit products are apparently sold. Disrupting a complainant’s business and diverting users to a disputed domain name which sells counterfeit goods is evidence here of bad faith per Policy ¶¶ 4(b)(iii) and (iv). See Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum Dec. 22, 2017) (“Respondent’s primary offering seem to be counterfeits of Complainant’s toy car products. Respondent’s use of the <magictrackscars.com> domain name is thus disruptive to Complainant’s business per Policy ¶ 4(b)(iii)”); 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.). Here, Complainant contends that Respondent is using Complainant’s BROOKS mark on its webpage to sell counterfeit products. Furthermore, by using the disputed domain name along with photographs of counterfeit products, Respondent attempts to profit by creating a likelihood of confusion with the Complainant Brooks' mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site and products offered through the disputed domain name’s resolving website. See Compl. Ex. D.
As such, the Panel finds that Respondent attempted to disrupt Complainant’s business and commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) and/or (iv).
Finally, the Panel finds that Respondent registered the disputed domain name with actual knowledge of Complainant’s prior rights and interests in and to the disputed domain name. Complainant asserts given the global reach of the Internet and the fact that Respondent's website displays the BROOKS mark alongside counterfeit electronic footwear products, Respondent must have been aware of Complainant and its BROOKS mark prior to registering the disputed domain name. See Compl. Ex. D. Given this evidence and the totality of the circumstances, the Panel finds that Respondent had actual knowledge of Complainant’s rights and interests in its trademark.
As such, the Panel finds that Respondent has engaged in bad faith use and registration of 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 <brooksos.com> domain name be TRANSFERRED from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: May 24, 2019
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