Brooks Sports, Inc. v. 00147 samuel
Claim Number: FA2102001931612
Complainant is Brooks Sports, Inc. (“Complainant”), represented by Mayura I. Noordyke of Cozen O’Connor, Minnesota, USA. Respondent is 00147 samuel (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <brooksmov.com>, <osalebrooks.com>, <ysalebrooks.com>, and <bbrooksshoesstore.com>, registered with Dynadot, LLC.
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 February 10, 2021; the Forum received payment on February 10, 2021.
On February 11, 2021, Dynadot, LLC confirmed by e-mail to the Forum that the <brooksmov.com>, <osalebrooks.com>, <ysalebrooks.com>, and <bbrooksshoesstore.com> domain names are registered with Dynadot, LLC and that Respondent is the current registrant of the names. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC 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 February 11, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 3, 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@brooksmov.com, postmaster@osalebrooks.com, postmaster@ysalebrooks.com, postmaster@bbrooksshoesstore.com. Also on February 11, 2021, 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 March 6, 2021, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, Brooks Sports, Inc., is world-leader in athletic clothing and footwear, including high-performance running shoes and has done so since 1914.
Complainant has rights in the BROOKS mark through it registration with the United States Patent and Trademark Office (USPTO).
Respondent’s <brooksmov.com>, <osalebrooks.com>, <ysalebrooks.com>, and <bbrooksshoesstore.com> domain names are confusingly similar to Complainant’s mark because they incorporate Complainant mark and add generic letters or terms, and the “.com” generic top-level domain (“gTLD”) to the mark.
Respondent has no rights or legitimate interests in the at-issue domain names because Respondent is not commonly known by the domain names nor known by Complainant’s mark. Respondent is also not using the domain names for a legitimate noncommercial or fair use nor is it using it for a bona fide offering of goods or services through its efforts to divert customers away from Complainant’s business and capitalize on the use of Complainant’s mark.
Respondent registered and is using the at-issue domain names in bad faith. Respondent is using the domain names to commercially benefit from the use of Complainant’s BROOKS mark by diverting customers away from Complainant’s business. Additionally, Respondent had actual knowledge of Complainant’s rights in the BROOKS mark at the times the at-issue domain names were registered.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has 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 names after Complainant acquired rights in the BROOKS trademark.
Respondent uses the <brooksmov.com>, <osalebrooks.com>, <ysalebrooks.com>, and <bbrooksshoesstore.com> domain names to pass itself off as being sponsored by Complainant. The <brooksmov.com>, <osalebrooks.com>, <ysalebrooks.com>, and <bbrooksshoesstore.com> websites are used to attempt to sell Complainant’s products online without Complainant’s authorization.
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 names registered by Respondent are 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 names; and
(3) the domain names have been registered and are 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 at-issue domain is confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has a USPTO registration for its BROOKS trademark. Such registration is sufficient to demonstrate Complainant’s rights in the BROOKS mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
Respondent’s <brooksmov.com>, <osalebrooks.com>, <ysalebrooks.com>, and <bbrooksshoesstore.com> domain names each contains Complainant’s BROOKS trademark and include various suggestive terms and/or single letters, namely “shoes”, “store”, “mov”, “sale”, “o”, “b”, and “y”, with all followed by the top-level domain name “.com”. The differences between each of Respondent’s domain names and Complainant’s trademark are insufficient to distinguish any domain name from the BROOKS trademark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <brooksmov.com>, <osalebrooks.com>, <ysalebrooks.com>, and <bbrooksshoesstore.com> domain names are each confusingly similar to Complainant’s BROOKS trademark. See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”); see also Google, Inc. v. DktBot.org, FA 286993 (Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”).
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 names. 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 any of the at‑issue domain names. 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 at-issue domain names ultimately identifies the domain names’ registrant as “00147 samuel” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by any of the at-issue domain names. The Panel therefore concludes that Respondent is not commonly known by any of the at-issue domain names for the purposes of Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”); see also Tenza Trading Ltd. v. WhoisProtectService.net / PROTECTSERVICE, LTD., FA1506001624077 (Forum July 31, 2015) (“The WHOIS information lists ‘WhoisProtectService.net’ as the registrant of record for the disputed domain names. Accordingly, in the absence of a Response, there is no evidence to indicate that Respondent might be known by any of the domain names.”).
Additionally, Respondent uses its <brooksmov.com>, <osalebrooks.com>, <ysalebrooks.com>, and <bbrooksshoesstore.com> domain names to pass itself off as Complainant. The domain names’ websites offer Complainant’s products for sale without Complainant’s authorization while displaying Complainant’s trademark. Respondent is thus intent on tricking internet users into believing there is an affiliation between Complainant and the subject websites when there is no affiliation. Respondent’s use of the at-issue domain names in this manner indicates 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 Fadal Engineering, LLC v. DANIEL STRIZICH,INDEPENDENT TECHNOLOGY SERVICE INC, FA 1581942 (Forum Nov. 13, 2014) (finding that Respondent’s use of the at-issue domain to sell products related to Complainant without authorization “does not amount to a bona fide offering of goods or services under policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also, 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). Furthermore, the domain names and their relevant websites may be used for collecting personal information via a website embedded form. Respondent’s use of the at-issue domain names to perpetrate fraud and phish for private information indicates 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).
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 under Policy ¶ 4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below without limitation, there is sufficient evidence from which the Panel may conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
As mentioned above regarding rights and interests, Respondent uses the at-issue confusingly similar domain names to address website(s) displaying Complainant’s trademark and other references to Complainant while offering Complainant’s products for sale without Complainant’s authorization to do so. Respondent’s use of its confusingly similar <brooksmov.com>, <osalebrooks.com>, <ysalebrooks.com>, and <bbrooksshoesstore.com> domain names in this manner Complainant is disruptive to Complainant’s business and demonstrates bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also, Hewlett-Packard Co. v. Ali, FA 353151 (Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). Moreover, Respondent’s inclusion of Complainant’s well-known trademark in each of the at-issue confusingly similar domain names point out a form of opportunistic bad faith. See Scania CV AB (Publ) v. Unaci, Inc., D2005-0585 (WIPO July 29, 2005) (holding that use of famous mark by someone with no connection to mark owner “suggests opportunistic bad faith”); see also, Veuve Clicquot Ponsardin v. The Polygenix Group Co., Case No. D2000-0163 (WIPO May 1, 2000) (holding that “blatant appropriation of a universally recognized trademark is of itself sufficient to constitute bad faith”).
Finally, Respondent had actual knowledge of Complainant’s rights in the BROOKS mark when it registered <brooksmov.com>, <osalebrooks.com>, <ysalebrooks.com>, and <bbrooksshoesstore.com> as domain names. Respondent’s actual knowledge is evident from Respondent’s incorporation of Complainant’s well-known trademark into each at-issue domain name, from Respondent’s unauthorized offering of Complainant’s products on websites addressed by such domain names, and from Respondent’s display of Complainant’s trademark and other references to Complainant on such websites. Respondent’s registration and use of the confusingly similar domain names with knowledge of Complainant’s rights in each such domain name shows Respondent’s bad faith as to each domain name 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); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION 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 <brooksmov.com>, <osalebrooks.com>, <ysalebrooks.com>, and <bbrooksshoesstore.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 8, 2021
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