Brooks Sports, Inc. v. Mandy Gaertner / Dennis Austerlitz / Klaudia Lang / Manuela Meyer / Marco Engel
Claim Number: FA2101001929884
Complainant is Brooks Sports, Inc. (“Complainant”), represented by Mayura I. Noordyke of Cozen O’Connor, Minnesota, USA. Respondent is Mandy Gaertner / Dennis Austerlitz / Klaudia Lang / Manuela Meyer / Marco Engel (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <brooks-canada.com>, <brooksrunningaustralia.com>, <brooksphilippines.com>, <brooksireland.com>, and <brooksrunningshoesindia.com> (collectively “Domain Names”), registered with NameSilo, LLC and 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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 27, 2021; the Forum received payment on January 27, 2021. The Complaint was received in English.
On January 27, 2021 and February 1, 2021, NameSilo, LLC and MAT BAO CORPORATION confirmed by e-mail to the Forum that the <brooks-canada.com>, <brooksrunningaustralia.com>, <brooksphilippines.com>, <brooksireland.com>, and <brooksrunningshoesindia.com> domain names are registered with NameSilo, LLC and MAT BAO CORPORATION respectively and that Respondent is the current registrant of the names. NameSilo, LLC and MAT BAO CORPORATION have verified that Respondent is bound by the NameSilo, LLC and MAT BAO CORPORATION registration agreements 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 February 3, 2021, the Forum served the English language Complaint and all Annexes, including a Vietnamese and English language Written Notice of the Complaint, setting a deadline of February 23, 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@brooks-canada.com, postmaster@brooksrunningaustralia.com, postmaster@brooksphilippines.com, postmaster@brooksireland.com, postmaster@brooksrunningshoesindia.com. Also on February 3, 2021, the Vietnamese and English 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On February 25, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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 Names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: 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 registrants for the Domain Names are related because: 1) the Domain Names are all similar variants of Complainant’s BROOKS mark, containing the BROOKS mark and a geographical term (and in some cases the words “running/running shoes”) 2) the Domain Names were registered within a day of each other 3) each of the Respondent’s Websites feature similar content on an identical template and indeed the Respondent’s Websites share common photographs and 4) four of the five Domain Names are registered to the same Registrar and each of the Domain Names are registered to entities that use an e-mail address in a similar form (an e-mail address consisting of letters and numbers and the e-mail account @yeah.net). This evidence, in the Panel’s opinion, strongly suggests that the Domain Names are owned/controlled by a single Respondent; were the named Respondents unrelated, it would be unlikely that five unconnected entities would register very similar domain names on the same day, (four of them with the same registrar) and point them to websites created with identical templates operating an identical business model.
In light of these contentions, which none of the identified Respondents deny, the Panel concludes that, on the balance of probabilities, the Domain Names are commonly owned/controlled by a single Respondent who is using multiple aliases. Hereafter the single Respondent will be referred to as “Respondent” for this Decision.
Preliminary Issue: Language of Proceeding
The language of the Registration Agreement in for the <brooks-canada.com> domain name is Vietnamese (the language of the Registration Agreement for the remaining Domain Names is in English). The Complaint has been provided in English.
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. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent’s understanding of the language requested by Complainant. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the Vietnamese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”) and Zappos.com, Inc. v. Zufu aka Huahaotrade, Case No. D2008-1191 (WIPO October 15, 2008) (holding that proceedings could be conducted in English even though the registration agreement was in Chinese where “the disputed domain resolves to a website [that] is exclusively in English, from which can be reasonably presumed that the Respondent has the ability to communicate in English in order to conduct his business over the website in English”)
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. The Panel has already found that the registrant of <brooks-canada.com> is the same registrant of the other Domain Names (each of which was registered through an English-language agreement). Furthermore each of the Respondent’s Websites is in the English language, and the website at <brooks-canada.com> purports to be operated from an entity located in Canada. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
A. Complainant
Complainant is a world-leader in athletic clothing and footwear. Complainant has rights in the BROOKS mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,161,034, registered July 14, 1981). Respondent’s <brooksrunningaustralia.com>, <brooksphilippines.com>, <brooksireland.com>, <brooksrunningshoesindia.com> and <brooks-canada.com> domain names are confusingly similar to Complainant’s mark because they consist of the BROOKS mark, the “.com” generic top-level domain (“gTLD”), a geographic term, and generic terms “running” and/or “shoes.”
Respondent does not have rights or legitimate interests in the <brooks-canada.com>, <brooksrunningaustralia.com>, <brooksphilippines.com>, <brooksireland.com>, and <brooksrunningshoesindia.com> domain names. Respondent is not commonly known by the Domain Names, nor is Respondent affiliated with Complainant, and Complainant has not authorized Respondent to use the BROOKS mark. Additionally, Respondent does not use the Domain Names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the Domain Names to divert Internet traffic to Respondent’s websites where it passes itself off as Complainant and offers unauthorized versions of Complainant’s goods for sale.
Respondent registered and uses the <brooks-canada.com>, <brooksrunningaustralia.com>, <brooksphilippines.com>, <brooksireland.com>, and <brooksrunningshoesindia.com> domain names in bad faith. Respondent offers competing unauthorized goods for sale. Furthermore, Respondent has actual knowledge of Complainant’s rights in the BROOKS mark as shown by Respondent’s attempts to pass off as Complainant and offer competing goods.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the BROOKS mark. Each of the Domain Names is confusingly similar to Complainant’s BROOKS mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Names and that Respondent registered and has used the Domain Names 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 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 has rights in the BROOKS mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (e.g. Reg. No. 1,161,034, registered July 14, 1981). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
The Panel finds that each of the Domain Names is confusingly similar to the BROOKS mark as they each incorporate the entire BROOKS mark while adding generic and/or geographic terms (“philippines” and “running” for example) and the “.com” gTLD. Such changes are insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i) analysis. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain); see also General Motors LLC v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1656166 (Forum Feb. 12, 2016) (finding respondent’s <gm-uzbekistan.com> domain name confusingly similar to complainant’s GM mark as the addition of the geographic term “uzbekistan” is inconsequential to a Policy ¶ 4(a)(i) analysis); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (finding top-level domains are irrelevant for purposes of Policy ¶ 4(a)(i) analysis).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the BROOKS mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS information of record lists “Mandy Gaertner / Dennis Austerlitz / Klaudia Lang / Manuela Meyer / Marco Engel” as the registrants of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Names in accordance with Policy ¶ 4(c)(ii).
Each of the Domain Names resolves or, as is clear from the uncontradicted evidence in the Complaint, has resolved to essentially identical websites (“Respondent’s Websites”). These websites, through the reproduction of the Brooks Mark, Complainant’s logo and reference to Complainant’s products, each pass themself off as an official website of the Complainant for the purpose of selling unauthorized versions of Complainant’s goods, in direct competition with Complainant’s merchandise. The use of a confusingly similar domain name to resolve to a webpage that directly offers unauthorized versions of a complainant’s goods or goods or services that directly compete with a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use; indeed it provides a false impression that the Respondent is affiliated with or authorized by Complainant. 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.”); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Names, between (December 16-17 2020), Respondent had actual knowledge of Complainant’s BROOKS mark since each of the Respondent’s Websites pass themself off as an official website of the Complainant and as such reproduce material from Complainant and make repeated references to Complainant and its products. Furthermore, there is no obvious explanation, nor has one been provided, for an entity to register five domain names that contain the BROOKS mark and use them to redirect visitors to five websites selling goods in direct competition with the Complainant under the BROOKS mark other than to take advantage of Complainant’s reputation in the BROOKS mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Names in bad faith to create confusion with Complainant’s BROOKS Mark for commercial gain by using the confusingly similar Domain Names to resolve to websites mimicking Complainant’s websites and offering unauthorized versions of Complainant’s products in direct competition with the Complainant’s products. Using a confusingly similar domain name to trade upon the goodwill of a complainant can evince bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”); see also 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.”).
The Panel finds Complainant has 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 <brooks-canada.com>, <brooksrunningaustralia.com>, <brooksphilippines.com>, <brooksireland.com>, and <brooksrunningshoesindia.com> domain names be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: February 26, 2021
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