Brooks Sports, Inc. v. Brandon Gibson / Brooks Running Shoes
Claim Number: FA1709001748607
Complainant is Brooks Sports, Inc. ("Complainant"), represented by Jared Barrett of Seed Intellectual Property Law Group PLLC, Washington, USA. Respondent is Brandon Gibson / Brooks Running Shoes ("Respondent"), South Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brooksathletic.com>, registered with Tucows Domains Inc.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 12, 2017; the Forum received payment on September 12, 2017.
On September 12, 2017, Tucows Domains Inc. confirmed by email to the Forum that the <brooksathletic.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 September 13, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 3, 2017 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@brooksathletic.com. Also on September 13, 2017, the Written Notice of the Complaint, notifying Respondent of the email 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 October 5, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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.
A. Complainant
Complainant promotes and sells athletic shoes and apparel under the BROOKS trademark. Complainant owns a U.S. trademark registration for BROOKS as a standard character mark for athletic shoes, issued in 1981 and reflecting a date of first use of 1914.
Respondent registered the disputed domain name <brooksathletic.com> in July 2017. The domain name is being used for a website that offers athletic shoes for sale, displaying Complainant's mark and logo and otherwise mimicking the appearance of Complainant's own <brooksrunning.com> website. Complainant states that it has not licensed or otherwise permitted Respondent to use its mark or incorporate it in a domain name, and that Respondent is not commonly known by the mark or any variation thereof.
Complainant contends on the above grounds that the disputed domain name <brooksathletic.com> is confusingly similar to Complainant's BROOKS mark; that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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 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 (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.").
The disputed domain name <brooksathletic.com> combines Complainant's registered BROOKS mark with the generic term "athletic," which describes Complainant's products, and the ".com" top-level domain. These additions do not diminish the similarity between the domain name and Complainant's mark. See, e.g., Academy, Ltd., d/b/a Academy Sports + Outdoors v. PPA Media Services / Ryan G Foo, FA 1496032 (Forum June 5, 2013) (finding <academysportswear.com> confusingly similar to ACADEMY); Converse Inc. v. Perkins Hosting, D2005-0350 (WIPO May 17, 2005) (finding <conversebasketball.com> confusingly similar to CONVERSE). The Panel therefore considers the <brooksathletic.com> domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name combines Complainant's famous registered mark with a generic term for its products. It was registered without Complainant's authorization. The only apparent use that Respondent has made of the domain name is for a website that promotes competing products in a manner likely to confuse users into believing that the site is associated with Complainant. It is not clear to the Panel whether the products advertised on the site are genuine BROOKS products, but in any event Respondent's use of the mark would not qualify as nominative fair use. See AB Electrolux v. AMR AAMER, FA 1744407 (Forum Sept. 12, 2017).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered and is using a domain name that incorporates Complainant's trademark for a website that promotes competing products, attempting to pass off as being associated with or authorized by Complainant. This behavior is indicative of bad faith registration and use under paragraphs 4(b)(iii) and 4(b)(iv) of the Policy. See, e.g., H-D U.S.A., LLC v. Ridwan Katob, FA 1747798 (Forum Oct. 4, 2017); AB Electrolux v. AMR AAMER, supra. The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brooksathletic.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: October 5, 2017
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