Brooks Sports, Inc. v. Ping Zhang / Chang Jun Guan
Claim Number: FA2102001932361
Complainant is Brooks Sports, Inc. (“Complainant”), represented by Mayura I. Noordyke of Cozen O’Connor, Minnesota, USA. Respondent is Ping Zhang / Chang Jun Guan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue are <snugrunbrooks.top>, <roadbrooks.top>, and <roadbrooks.store>, registered with Chengdu West Dimension Digital 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 17, 2021; the Forum received payment on February 17, 2021.
On February 18, 2021, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the Forum that the <snugrunbrooks.top>, <roadbrooks.top>, and <roadbrooks.store> domain names are registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the names. Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Chengdu West Dimension Digital 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 February 23, 2021, the Forum served the Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of March 15, 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@snugrunbrooks.top, postmaster@roadbrooks.top, postmaster@roadbrooks.store. Also, on February 23, 2021, the Chinese 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 March 18, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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: REQUIRED LANGUAGE OF COMPLAINT
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. Complainant has alleged that because Respondent is conversant and proficient in English, the proceeding should be conducted in English. Complainant argues that Respondent is capable of understanding English because the <snugrunbrooks.top>, <roadbrooks.top>, and <roadbrooks.store> domain names consist of English letters and the websites resolving at the disputed domains display at least some content in English. The Panel here, pursuant to Rule 11, finds the case with the English-language submission of the Complaint will proceed in English. See FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English).
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 although the registrant information for the disputed domain names is not publicly available, the domain names are all controlled by the same entity. Complainant argues that all of the domain names incorporate the BROOKS mark, two of the names use the identical term “road,” the resolving webpages are practically identical, and all three domain names were registered with the same registrar, using a privacy protection service to hide registrant information. The Panel here finds that Complainant has sufficiently presented evidence demonstrating that the listed entities are jointly controlled.
A. Complainant
Complainant, Brooks Sports, Inc., is in the athletic clothing and footwear industry. Complainant has rights in the BROOKS mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,161,034, registered July 14, 1981). Respondent’s <snugrunbrooks.top>, <roadbrooks.top>, and <roadbrooks.store> domain names are confusingly similar to Complainant’s BROOKS mark because they wholly incorporate the mark, simply adding the generic terms “road,” “snug,” and/or “run,” as well as a “.store” or .”top” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the disputed domain names. Respondent is not licensed or authorized to use Complainant’s BROOKS mark and is not commonly known by the disputed domain names. Additionally, Respondent does not use the disputed domains for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domains to pass off as Complainant by redirecting users to webpages that bear Complainant’s marks and offer competing products. Additionally, Respondent uses the domain names in connection with potentially fraudulent activities.
Respondent registered and uses the disputed domain names in bad faith. Respondent attempts to attract Internet users to its websites for commercial gain by offering competing products under Complainant’s mark. Additionally, Respondent had constructive or actual knowledge of Complainant’s rights in the BROOKS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Brooks Sports, Inc. (“Complainant”), of Seattle, WA, USA. Complainant is the owner of domestic and international registrations for its BROOKS mark and variations thereon constituting the family of BROOKS marks. Complainant has continuously used its BROOKS mark since at least as early as 1914 in connection with its provision of athletic clothing and footwear, including high-performance running shoes. Complainant has also owned and used the domain name <brooksrunning.com> since 1999.
Respondent is Ping Zhang / Chang Jun Guan (“Respondent”), of China. Respondent’s registrar’s address is listed as Chengdu, China. The Panel notes that the <snugrunbrooks.top> domain name was registered on or about January 12, 2021, the <roadbrooks.store> domain name was registered on or about January 29, 2021, and the <roadbrooks.top> domain name was registered on or about January 30, 2021.
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 asserts rights in the BROOKS mark based upon the registration with the USPTO (e.g., Reg. No. 1,161,034, registered July 14, 1981). Registration of a mark with the USPTO is generally sufficient to establish rights in the mark under Policy ¶ 4(a)(i). 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 here finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <snugrunbrooks.top>, <roadbrooks.top>, and <roadbrooks.store> domain names are confusingly similar to Complainant’s BROOKS mark because they wholly incorporate the mark, simply adding the generic terms “road,” “snug,” and/or “run,” as well as a “.store” or .”top” gTLD. Addition of a generic or descriptive term and a gTLD to a mark does not negate confusing similarity between a domain name and the mark under Policy ¶ 4(a)(i). See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); see also Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”). The Panel here finds that the disputed domain names are identical or confusingly similar to the BROOKS mark under Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes that 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”). The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant claims that Respondent does not have rights or legitimate interests in the <snugrunbrooks.top>, <roadbrooks.top>, and <roadbrooks.store> domain names because Respondent is not licensed or authorized to use Complainant’s BROOKS mark and is not commonly known by the disputed domain names. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under 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.”). Additionally, lack of authorization to use a mark constitutes further showing that a respondent lacks rights in a mark. See 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). The WHOIS information of record lists “Ping Zhang / Chang Jun Guan” as the registrant of the domain names and no information suggests that Complainant has authorized Respondent to use the BROOKS mark in any way. The Panel here finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant claims that Respondent does not use the disputed domains for any bona fide offering of goods or services or legitimate noncommercial or fair use, but rather passes off as Complainant by redirecting users to webpages that bear Complainant’s marks and offer competing products. Use of a disputed domain name to offer products that compete with a complainant’s business is not a bona fide offering of goods or services or legitimate noncommercial or fair use. See Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Additionally, replication of a complainant’s website to promote confusion is not a bona fide offering of goods or services or legitimate noncommercial or fair use. See Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”). Here, Complainant provides screenshots of Respondent’s websites and notes that the sites repeatedly display Complainant’s mark and copy images and products from Complainant’s legitimate website. The Panel here finds that Respondent is not using the domain name for 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).
Complainant also argues that Respondent uses the domain names in connection with potentially fraudulent activities. Use of a disputed domain name to phish for personal and/or financial information does not indicate rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii). See Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Forum Feb. 26, 2015) (“The Panel agrees that the respondent’s apparent phishing attempt provides further indication that the respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). Complainant claims that Respondent’s websites collect personal information through an embedded form and a prompt for users to create an account. Complainant provides screenshots of Respondent’s allegedly offending websites. The Panel here finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues that Respondent registered and uses the <snugrunbrooks.top>, <roadbrooks.top>, and <roadbrooks.store> domain names in bad faith as Respondent attempts to attract Internet users to its websites for commercial gain by offering competing products under Complainant’s mark. Use of a disputed domain name to pass off as a complainant for commercial gain is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See 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).”). The Panel again notes that Complainant provides screenshots of Respondent’s websites which mimic Complainant’s website and purport to offer products that are identical to Complainant’s products or otherwise in competition with Complainant’s business. The Panel here finds bad faith registration and use under Policy ¶ 4(b)(iv).
Complainant additionally argues that Respondent actually knew about and is fully aware of Complainant’s BROOKS mark as evidenced by the copying and mimicking of content directly from Complainant’s legitimate website. Specifically, Complainant notes the copyright notice at the bottom of the webpages and the use of Complainant’s logo in the web address bar. Complainant provides screenshots of its own website as well as Respondent’s websites. The Panel here finds bad faith registration and use under Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <snugrunbrooks.top>, <roadbrooks.top>, and <roadbrooks.store> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: April 2, 2021
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