Brooks Sports, Inc. v. chen jia jin(143434) / chen jia jin
Claim Number: FA2003001886556
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 names at issue are <bokshoes.com>, <brooksoa.com>, <brookxsea.com>, <brsoas.com>, and <bshoesen.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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 2, 2020; the Forum received payment on March 2, 2020.
On March 4, 2020, Xiamen 35.Com Technology Co., Ltd. confirmed by e-mail to the Forum that the <bokshoes.com>, <brooksoa.com>, <brookxsea.com>, <brsoas.com>, and <bshoesen.com> domain names are registered with Xiamen 35.Com Technology Co., Ltd. and that Respondent is the current registrant of the names. 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 March 10, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 30, 2020 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@bokshoes.com, postmaster@brooksoa.com, postmaster@brookxsea.com, postmaster@brsoas.com, postmaster@bshoesen.com. Also on March 10, 2020, 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 April 3, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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 1: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends that all of the disputed domain names are owned and operated by a common entity: (i) all of the disputed domain names incorporate the BROOKS mark or variations thereof; (ii) the websites associated with the disputed domain names are nearly identical, including the webpages associated with each link in each of the disputed domain names, and all offer unauthorized goods of Complainant; (iii) the disputed domain names are all registered with the same registrar; (iv) the <brookxsea.com> and <bokshoes.com> domains share the same name servers, as do the <bshoesen.com> and <brosoas.com> domains; (v) all five disputed domain names are associated with the same IP address and location; (vi) four of the disputed domain names were registered within about a two-week period from March to April 2019; and (vii) all of the disputed domain names are associated with the same ASN.
The Panel finds that all of the disputed domain names are commonly owned/controlled by a single Respondent who is using multiple aliases.
Preliminary Issue 2: Language of the Proceedings
The Panel notes that Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Chinese language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties.
Complainant asserts that the proceedings should to be conducted in English for the reasons: (i) the disputed domain names contain the English word/name “BROOKS” and is targeted at Complainant, which is a company headquartered in the United States; (ii) Respondent’s websites appearing at the disputed domain names are in English, suggesting that Respondent is able to converse in English; (iii) the disputed domain names contain the .com gTLD, which is the largest top- level domain and is often used by international entities for international websites; and (iv) requiring Complainant to proceed in Chinese would impose an undue burden on Complainant.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that 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
i) 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 with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,161,034, registered July 14, 1981). Respondent’s <bokshoes.com>, <brooksoa.com>, <brookxsea.com>, <brsoas.com>, and <bshoesen.com> domain names are confusingly similar to Complainant’s BROOKS mark. Respondent incorporates the BROOKS mark and adds the generic terms or random letters “SHOES,” “OA,” “XSEA,” “OAS,” and “SHOESEN” along with the “.com” generic top-level domain (“gTLD”).
ii) Respondent lacks rights or legitimate interests in the <bokshoes.com>, <brooksoa.com>, <brookxsea.com>, <brsoas.com>, and <bshoesen.com> domain names as Respondent is not commonly known by the disputed domain name nor did Complainant authorize Respondent to use the mark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s disputed domain names resolve to webpages that displays Complainant’s BROOKS mark in an attempt to pass of as Complainant.
iii) Respondent registered and used the <bokshoes.com>, <brooksoa.com>, <brookxsea.com>, <brsoas.com>, and <bshoesen.com> domain names in bad faith. Respondent attempts to pass off as Complainant by displaying its mark and related products. Respondent had actual knowledge of Complainant’s rights in the BROOKS mark through its long-standing use and fame of the mark.
B. Respondent
Respondent did not submit a response to this proceeding.
1. The disputed domain names were registered as follows:
|
<bokshoes.com> |
Registered April 15, 2019 |
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<brooksoa.com> |
Registered April 1, 2019 |
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<brookxsea.com> |
Registered April 2, 2019 |
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<brsoas.com> |
Registered April 14, 2019 |
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<bshoesen.com> |
Registered November 21, 2019 |
2. Complainant has established rights in the BROOKS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,161,034, registered July 14, 1981).
3. Complainant has satisfied Policy ¶ 4(a)(i) for the disputed domain names <brooksoa.com> and <brookxsea.com>.
4. Complainant has failed to establish confusing similarity to Complainant's mark for the disputed domain names <bokshoes.com>, <brsoas.com>, and <bshoesen.com> per Policy ¶ 4(a)(i).
5. Respondent attempts to pass off as Complainant by displaying Complainant's mark and related products on the websites of the disputed domain names <brooksoa.com> and <brookxsea.com>.
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”).
Complainant claims to have rights in the BROOKS mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant has provided the Panel with a copy of its USPTO registration for the BROOKS mark (Reg. No. 1,161,034, registered July 14, 1981). Therefore, the Panel finds that Complainant has adequately shown rights in the BROOKS mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <bokshoes.com>, <brooksoa.com>, <brookxsea.com>, <brsoas.com>, and <bshoesen.com> domain names are confusingly similar to Complainant’s BROOKS mark. Registration of a domain name that incorporates a mark or uses the dominate portion of the mark and adds generic words or random letters along with a gTLD does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)) see also Acme Lift Company, L.L.C. v. VistaPrint Technologies Ltd, FA 1607039 (Forum Apr. 11, 2015) (“Where a respondent has created a domain name in an effort to visually deceive Internet users via a simple misspelling (and when such misspellings are visually similar to the mark), a finding of confusing similarity under Policy ¶ 4(a)(i) is appropriate.”). Complainant argues that Respondent incorporates the BROOKS mark and adds the generic terms or random letters “SHOES,” “OA,” “XSEA,” “OAS,” and “SHOESEN” along with the “.com” gTLD. Therefore, the Panel agrees and finds that Respondent’s two domain names <brooksoa.com> and <brookxsea.com> are confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
However, the Panel finds that Respondent's three other domain names <bokshoes.com>, <brsoas.com>, and <bshoesen.com> are not confusingly similar to Complainant’s BROOKS mark because none of the parts "bok," "brs," and "b" of those domain names eliminating the generic terms or random letters “SHOES,” “OAS,” “SHOESEN,” and the “.com” gTLD is considered as being confusingly similar to Complainant's BROOKS mark in any terms of sound and appearance.
The Panel concludes that (i) Complainant has satisfied Policy ¶ 4(a)(i) for the disputed domain names <brooksoa.com> and <brookxsea.com>; and (ii) it has failed to establish confusing similarity to Complainant's mark for the disputed domain names <bokshoes.com>, <brsoas.com>, and <bshoesen.com> per Policy ¶ 4(a)(i).
As the Panel finds Complainant failed to satisfy Policy ¶ 4(a)(i) (Identical and/or Confusingly Similar) for the disputed domain names <bokshoes.com>, <brsoas.com>, and <bshoesen.com>, the Panel declines to analyze Policy ¶ 4(a)(ii). See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary).As such, the Panel reviews Complainant's contentions regarding the disputed domain names <brooksoa.com> and <brookxsea.com>.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant argues Respondent lacks rights or legitimate interest in the <brooksoa.com> and <brookxsea.com> domain names as Respondent is not commonly known by the disputed domain names. Respondent incorporates the BROOKS mark and adds the generic terms or random letters “OA,” “XSEA,” along with the “.com” nor has Respondent been given license or consent to use the BROOKS mark or register domain names using Complainant’s mark. 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 mark 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 “chen jia jin (143434) /chen jia jin” and there is no other evidence to suggest that Respondent was authorized to use the BROOKS mark or was commonly known by the disputed domain names <brooksoa.com> and <brookxsea.com>. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names <brooksoa.com> and <brookxsea.com> per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s disputed domain names resolve to webpages that displays Complainant’s BROOKS mark in an attempt to pass off as Complainant. Use of a disputed domain to offer a complainant’s goods and services in an attempt to pass off as complainant is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business), see also Russell & Bromley Limited v. Li Wei Wei, FA 1752021 (Forum Nov. 17, 2017) (“The respondent’s use of the disputed domain name to pass itself off as the complainant to advertise and sell unauthorized products of the complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii).”). Complainant has provided screenshots of Respondent’s domain names <brooksoa.com> and <brookxsea.com> resolving webpages that show Complainant’s mark and products. Therefore, the Panel finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names <brooksoa.com> and <brookxsea.com>.
As the Panel finds Complainant failed to satisfy Policy ¶ 4(a)(i) (Identical and/or Confusingly Similar) for the disputed domain names <bokshoes.com>, <brsoas.com>, and <bshoesen.com>, the Panel declines to analyze Policy ¶ 4(a)(iii). As such, the Panel reviews Complainant's contentions regarding the disputed domain names <brooksoa.com> and <brookxsea.com>.
Complainant contends that Respondent registered and used the disputed domain names <brooksoa.com> and <brookxsea.com> in bad faith. Respondent attempts to pass off as Complainant by displaying its mark and related products. Use of a disputed domain name to pass off as a complainant and offer related and/or counterfeit products may be evidence of bad faith per Policy ¶ 4(b)(iii) and (iv). See Russell & Bromley Limited v. Li Wei Wei, FA 1752021 (Forum Nov. 17, 2017) (finding the respondent registered and used the at-issue domain name in bad faith because it used the name to pass off as the complainant and offer for sale competitive, counterfeit goods), see also 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.”). Complainant has provided screenshots of Respondent’s domain names resolving webpages that show Complainant’s mark and products. Therefore, the Panel agrees and finds that Respondent registered and used the disputed domain names <brooksoa.com> and <brookxsea.com> in bad faith per Policy ¶ 4(b)(iii) and (iv).
1. For the disputed domain names <bokshoes.com>, <brsoas.com>, and <bshoesen.com>
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <bokshoes.com>, <brsoas.com>, and <bshoesen.com> domain names REMAIN WITH Respondent.
2. For the disputed domain names <brooksoa.com> and <brookxsea.com>
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brooksoa.com> and <brookxsea.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: April 13, 2020
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