Brooks Sports, Inc. v. American Bakers Testing Company / Yuasdn Bloombasd Michaekasdw
Claim Number: FA1906001849699
Complainant is Brooks Sports, Inc. (“Complainant”), represented by Mayura I. Noordyke of Cozen O’Connor, Minnesota, USA. Respondent is American Bakers Testing Company / Yuasdn Bloombasd Michaekasdw (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brooksstore.online>, registered with NameSilo, 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 25, 2019; the Forum received payment on June 25, 2019.
On June 26, 2019, NameSilo, LLC confirmed by e-mail to the Forum that the <brooksstore.online> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 July 1, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 22, 2019 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@brooksstore.online. Also on July 1, 2019, 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 July 23, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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 operates in the athletic clothing and footwear industry. Complainant has rights in the BROOKS trademark based upon its registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,161,034 registered July 14, 1981). Respondent’s <brooksstore.online> domain name is identical or confusingly similar to Complainant’s BROOKS trademark because it wholly incorporates Complainant’s BROOKS trademark, and merely adds the generic term “store” and the “.online” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <brooksstore.online> domain name. Respondent is not authorized to use Complainant’s BROOKS trademark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use because Respondent uses <brooksstore.online> to pass off as Complainant.
Respondent registered and uses the <brooksstore.online> domain name in bad faith. Respondent engages in disruption of Complainant’s business by diverting Internet users away from the Complainant’s legitimate website. Respondent attempts to attract, for commercial gain, users to the disputed domain name where Respondent attempts to pass off as Complainant. Finally, Respondent had actual knowledge of Complainant’s BROOKS mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 5,596,496 BROOKS (fig), registered October 30, 2018 for goods in class 25;
No. 4,631,302 BROOKS (fig), registered November 4, 2014 for goods in class 25;
No. 4,728,097 BROOKS TRANSCEND (word), registered April 28, 2015 for goods in class 25;
No. 2,521,124 BROOKS (fig), registered December 18, 2001 for goods in class 25;
No. 1,683,840 BROOKS (fig), registered April 21, 1992 for goods in class 25; and
No. 1,161,034 BROOKS (word), registered July 14, 1981 for goods in class 25.
Respondent registered the disputed domain name <brooksstore.online>, on June 4, 2019
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 claims to have rights in the BROOKS trademark through its registrations with the USPTO. Registration of a trademark with the USPTO is sufficient to demonstrate rights in a trademark per 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).”) Here, Complainant has provided the Panel with copies of the USPTO registrations for the BROOKS trademark (e.g. Reg. No. 1,161,034, registered July 14, 1981). Therefore, the Panel finds that Complainant has rights in the BROOKS trademark per Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <brooksstore.online> domain name is identical or confusingly similar to Complainant’s BROOKS trademark because it wholly incorporates the BROOKS trademark, and merely adds the generic term “store” and the “.online” gTLD. Use of a domain name that includes a complainant’s trademark along with a generic term and a gTLD generally does not sufficiently distinguish a disputed domain name from a trademark. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)); see also 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).”). Therefore, the Panel agrees with Complainant and finds Respondent’s disputed domain name to be confusingly similar to Complainant’s BROOKS mark per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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”).
Complainant argues that Respondent has no rights or legitimate interests in the <brooksstore.online> domain name as Respondent is not commonly known by the disputed domain name, nor is the Respondent authorized by Complainant to use the BROOKS trademark. WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s trademark may support a finding that the respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. 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 of the at-issue domain name.”). Here, the relevant WHOIS information for Respondent indicates that Respondent is known as “American Bakers Testing Company / Yuasdn Bloombasd Michaekasdw” and no information of the record indicates that Respondent was authorized to use the Complainant’s BROOKS trademark. Therefore, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to use the <brooksstore.online> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use because Respondent uses the disputed domain name to pass off as Complainant. Use of a disputed domain to pass off as a complainant is not evidence of a bona fide offering of goods and services or a legitimate noncommercial or fair use. See 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). Here, Complainant provides screenshots of the disputed domain name where Respondent mimics Complainant’s legitimate website and offers Complainant’s goods for sale. Therefore, the Panel finds that Respondent has failed to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant argues that Respondent registered and uses the disputed domain name <brooksstore.online> in bad faith because Respondent engages in disruption of Complainant’s business by diverting Internet users from the Complainant’s legitimate website. A respondent’s use of a disputed domain name to sell a complainant’s products that are either counterfeit or genuine products resold without authorization is disruptive and can evince bad faith registration and use. See Kipling Apparel Corp. v. Yan Feng Geng, FA 1703296 (Forum Dec. 20, 2016) (finding the respondent registered and used the <kiplingstores.com> domain name in bad faith per Policy ¶ 4(b)(iii) because the respondent used the domain name to sell the complainant’s products that were either counterfeit or genuine products resold without authorization). Here, Complainant contends that Respondent offers unauthorized versions of Complainant’s goods for sale and fraudulently implies that Respondent is affiliated with Complainant. The Panel therefore finds that Respondent has engaged in disruption under Policy ¶ 4(b)(iii).
Next, Complainant argues that Respondent attempts to attract, for commercial gain, users to the disputed domain name where Respondent attempts to pass off as Complainant. 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.”). As noted above, Complainant alleges Respondent attempts to pass of as Complainant by offering Complainant’s goods for sale and imitating Complainant’s legitimate website, and provides evidence of that use. The Panel therefore finds that Respondent has engaged in attraction for commercial gain under Policy ¶ 4(b)(iv).
Finally, Complainant asserts that Respondent had actual and/or constructive knowledge of Complainant’s rights in the BROOKS trademark as the result of Complainant’s extensive use of the trademark predating the date on which respondent registered the <brooksstore.online> domain name and Respondent’s use of the trademark on the resolving webpage. Although panels have generally not regarded constructive notice as sufficient for a finding of bad faith, actual knowledge of Complainant’s trademark prior to registering is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Use of a trademark on a resolving webpage may demonstrate that a respondent had actual knowledge of a complainant’s rights in a mark at the time of registration, thus constituting bad faith. See Finex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Here, Complainant argues that Respondent’s use of the BROOKS trademark to pass of as Complainant is indicative of Respondent’s actual knowledge of Complainant’s rights in the BROOKS trademark. The Panel also notes that the web site Respondent use for the disputed domain name, clearly states that it is “Brooks Official Website”, and also have a link called “Brooks Privacy Notice” which are clear evidence that the Respondent is trying to pass off as the Complainant. Thus, the Panel finds that Respondent had actual notice of Complainant’s rights in the BROOKS trademark under 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 <brooksstore.online> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: August 4, 2019
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