Brooks Brothers Group, Inc. v. HEMANG INFRASRUCTURE PRIVATE LIMITED / HEMANG INFRASRUCTURE PRIVATE LIMITED
Claim Number: FA1303001488754
Complainant is Brooks Brothers Group, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is HEMANG INFRASRUCTURE PRIVATE LIMITED / HEMANG INFRASRUCTURE PRIVATE LIMITED (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brooksbroothers.com>, registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 6, 2013; the National Arbitration Forum received payment on March 6, 2013.
On March 7, 2013, PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <brooksbroothers.com> domain name is registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name. PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM 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 12, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 1, 2013 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@brooksbroothers.com. Also on March 12, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 9, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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.
A. Complainant
i. Complainant owns federal trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the BROOKS BROTHERS trademark (e.g., Reg. No. 667,458 registered Sept. 23, 1958).
ii. Respondent registered the <brooksbroothers.com> domain name on December 18, 2007.
iii. The addition of the generic top-level domain (“gTLD”) is irrelevant to the Policy ¶ 4(a)(i) confusing similarity comparison.
iv. The disputed domain name is identical to Complainant’s mark, with only the insertion of an additional letter “o.”
i. Respondent is not commonly known by the disputed domain name, based on the WHOIS information and Complainant’s lack of authorization to use its mark.
ii. Respondent is using the disputed domain name to redirect unsuspecting internet users to a website featuring generic links to third party websites, some of which directly compete with Complainant’s services.
i. Respondent is using the disputed domain name in connection with a “click through” website, where it likely receives revenue when misdirected Internet users click on the displayed links. The is bad faith under Policy ¶ 4(b)(iv).
ii. Respondent’s pay-per-click links promote products that compete with Complainant, which is disruptive of Complainant’s business and evidence of bad faith under Policy ¶ 4(b)(iii).
iii. Respondent is typosquatting, which is itself evidence of bad faith.
iv. Respondent holds registrations on other domain names that appear to be examples of typosquatting. This represents a pattern of bad faith registration and use under Policy ¶ 4(b)(ii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Brooks Brothers is a leading retailer of high end specialty, business, contemporary, and leisure apparel and accessories. Complainant owns federal trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the BROOKS BROTHERS trademark (e.g., Reg. No. 667,458 registered Sept. 23, 1958).
Respondent, HEMANG INFRASRUCTURE PRIVATE LIMITED / HEMANG INFRASRUCTURE PRIVATE LIMITED, registered the <brooksbroothers.com> domain name on December 18, 2007. Respondent is using the disputed domain name to redirect internet users to a “click through” website featuring generic links to third party websites, some of which directly compete with Complainant’s services. Respondent is typosquatting. Respondent holds registrations on other domain names that appear to be examples of typosquatting.
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant has rights in the BROOKS BROTHERS trademark under Policy ¶ 4(a)(i) based on its registrations of the mark with the USPTO (e.g., Reg. No. 667,458 registered Sept. 23, 1958) for the sale of men’s and boys’ clothing. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). A complainant need not register its mark in the country of a respondent to demonstrate rights in the mark. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant has established rights under Policy ¶ 4(a)(i) in the BROOKS BROTHERS mark.
Complainant claims that Respondent’s <brooksbroothers.com> domain name is confusingly similar to its marks. The Panel addition of a gTLD such as “.com,” as well as the deletion of the space between the words in Complainant’s mark, is irrelevant to a Policy ¶ 4(a)(i) confusing similarity comparison. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). The disputed domain name is nearly identical to Complainant’s mark, with only a slight misspelling. The disputed domain name merely adds an extra letter “o” to the spelling of Complainant’s mark. The addition of a single letter does not create a distinct mark. The Panel finds that the <brooksbroothers.com> domain name is confusingly similar to Complainant’s BROOKS BROTHERS mark for the purposes of Policy ¶ 4(a)(i).
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), 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 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant argues that Respondent has not been commonly known by the disputed domain name and has therefore not demonstrated rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). The WHOIS information identifies “HEMANG INFRASRUCTURE PRIVATE LIMITED / HEMANG INFRASRUCTURE PRIVATE LIMITED” as the registrant. Complainant is not affiliated with Respondent and has not authorized Respondent to use the BROOKS BROTHERS mark. The Panel finds that Respondent is not commonly known by the disputed domain name and has not established rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent is using the disputed domain name to redirect users to a web page featuring generic links to third-party websites, some of which compete with Complainant’s business. The Panel finds that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use, pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Complainant claims Respondent is a serial cybersquatter who has engaged in a pattern of registering confusingly similar names, and that this represents bad faith under Policy ¶ 4(b)(ii). Complainant references three prior adverse UDRP decisions against Respondent. See Match.com, L.LC. v. Hemang Infrasructure Private Limited, FA 1420631 (Nat. Arb. Forum Feb. 13, 2012); McAfee, Inc. v. HEMANG INFRASRUCTURE PRIVATE LIMITED, FA 1439615 (Nat. Arb. Forum May 25, 2012); Vanguard Trademark Holdings USA LLC v. Hemang Infrasructure Private Limited, FA 1404894 (Nat. Arb. Forum Oct. 13, 2011). The Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”).
Respondent has set up a “click through” website, containing links that promote products that compete with Complainant’s business. Accordingly, the Panel finds that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).
Complainant contends that Respondent likely receives revenue when misdirected Internet users click these links and that Respondent is intentionally using a domain name confusingly similar to Complainant’s BROOKS BROTHERS mark in order to attract users to its website. As Respondent is trying to profit by attracting users seeking Complainant’s website, the Panel finds that Respondent has demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
As Respondent is engaging in typosquatting, the Panel finds that Respondent registered and is using the disputed domain name in bad faith, pursuant to Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brooksbroothers.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 23, 2013
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