Brooks Sports, Inc. v. American Bakers Testing / Company Yuasdn
Claim Number: FA1907001850824
Complainant is Brooks Sports, Inc. (“Complainant”), represented by Mayura I. Noordyke of Cozen O’Connor, Minnesota, USA. Respondent is American Bakers Testing / Company Yuasdn (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brooksstoreshop-au.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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on July 2, 2019; the Forum received payment on July 2, 2019.
On July 3, 2019, NameSilo, LLC confirmed by e-mail to the Forum that the <brooksstoreshop-au.online> domain name (the 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 9, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of July 29, 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@brooksstoreshop-au.online. Also on July 9, 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 31, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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 is a world leader in athletic clothing and footwear. Complainant has rights in the BROOKS mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,521,124, registered December 18, 2001). Respondent’s Domain Name is identical or confusingly similar to Complainant’s mark as it incorporates the BROOKS mark in its entirety, merely adding the generic terms “store” and “shop,” the geographic term “auz,” a hyphen, and the “.online” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the Domain Name. Respondent has no relationship with Complainant nor has Complainant authorized Respondent to use is mark in any way, Respondent is not commonly known by the Domain Name, and it is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, the Domain Name resolves to a website which passes off as Complainant by displaying Complainant’s mark and offering for sale products which are represented as being Complainant’s.
Respondent registered and is using the Domain Name in bad faith. Respondent had actual and constructive knowledge of Complainant’s rights in the BROOKS mark when registering the disputed domain name, and it is using the confusingly similar Domain Name to attract Internet users to its web site for commercial gain.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 Complainant to prove each of the following three elements to obtain an order cancelling or transferring the Domain Name:
(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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at ¶ 4.3, 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 BROOKS mark was registered to Complainant with the USPTO (Registration No. 2,521,124) on December 18, 2001 (Complaint Exhibit A). A complainant’s registration of its mark with the USPTO is sufficient to establish its rights in that mark for the purposes of Policy ¶ 4(a)(i). Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
Respondent’s Domain Name is confusingly similar to Complainant’s mark. It incorporates that mark verbatim, merely adding the generic terms “store” and “shop,” the geographic term “au,” a hyphen, and the “.online” gTLD. These changes are not sufficient to distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). 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)), Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) (finding that the <franklincoveykorea.com> domain name is confusingly similar to the FRANKLIN COVEY mark, as “[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i).”), Daniel Handler v. Masanori Toriimoto / PLAN-B Co.,Ltd, FA 1778986 (Forum May 7, 2018) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). The WIPO Overview 3.0 at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within the Domain Name, and this establishes its confusing similarity to Complainant’s mark.
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the BROOKS mark, in which Complainant has substantial and demonstrated rights.
Rights or Legitimate Interests
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to the respondent to come forward with evidence that it has rights or legitimate interests in it. 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”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to Respondent of the dispute, Respondent has used or has made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) Respondent has no relationship, affiliation, connection with or endorsement from Complainant, nor has Complainant authorized Respondent to use its mark in any way, (ii) Respondent is not commonly known by the Domain Name, and (iii) Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use in that it uses the Domain Name for a website which passes off as Complainant by displaying Complainant’s mark and offering for sale products which are represented as being Complainant’s. These allegations are addressed as follows:
Complainant states that Respondent is not affiliated or associated in any way with Complainant, and that Complainant has never licensed or authorized Respondent to use its mark. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), 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.”).
The information furnished to the Forum by the registrar lists the registrant of the Domain Name as “American Bakers Testing / Company Yuasdn.” Neither of these names bears any resemblance to the Domain Name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such or similar evidence, however, UDRP panels have consistently held that a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name), Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). There is no evidence before the Panel to suggest that Respondent has been commonly known by the Domain Name, and the Panel finds that it has not been so known.
Complainant Exhibit D contains a screenshot of the web site resolving from the Domain Name. It displays the BROOKS mark and distinctive, registered, stylized chevron logo (USPTO Registration No. 4,631,302, registered November 4, 2014) (Complaint Exhibit A) in the banner of the home and other pages, and displays images of running shoes which bear Complainant’s chevron logo, are advertised as Complainant’s products, and are offered for sale. The site also offers other items of running apparel, whose brand names or source of manufacture is not given. Beneath the About Us section on several of the pages appears the false copyright notation “Copyright © Brooks Official Website All Rights Reserved.” The web site mimics the content and look of Complainant’s web site located at <brooksrunning.com>, screenshots of which were submitted as Complaint Exhibit C. It is clear that Respondent is using the Domain Name to impersonate and pass off as Complainant or at a minimum an authorized dealer or affiliate of Complainant. Passing off as a complainant does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i) or as a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii). 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), 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).”).
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
(i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the 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.
The evidence of Respondent’s use of the Domain Name set forth above in the rights or legitimate interests analysis also supports a finding of bad faith use and registration of that domain, based upon the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, Respondent is clearly using the Domain Name to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web site. This fits squarely within the circumstances articulated by Policy ¶ 4(b)(iv) and is clear evidence of bad faith registration and use. The facts of this case are similar to those in Charter Communications Holding Company, LLC v. Taha Shaikh / Tskdesigners, FA 1814475 (Forum Nov. 25, 2018), where the panel held, “Respondent appears to use a copycat page to solicit the sale of Complainant’s television, Internet, and voice communications services. It is unclear if the Respondent is actually providing Complainant’s services or is gathering personal information from website visitors while not providing any services. In either scenario, the Panel agrees that Respondent is attempting to commercially benefit from the use of Complainant’s SPECTRUM Marks in bad faith under Policy ¶ 4(b)(iv).”
Second, Respondent is using the Domain Name to pass off as Complainant and offer products that are advertised as Complainant’s, in competition with Complainant. This diverts business from Complainant and disrupts Complainant’s business. It thus fits also within the circumstances articulated by Policy ¶ 4(b)(iii) and is evidence of bad faith registration and use. Capital One Financial Corp. v. Michael Bock, FA1718603 (Forum Mar. 28, 2017) (finding bad faith registration because “…the disputed domain name and resolving website were designed to pass off as a product of Complainant for the purpose of business competition.”), Dell Inc. v. Prashant Chhibber, FA 1785651 (Forum June 1, 2018) (“Respondent offers support services related to Complainant’s products that are in direct competition with the services Complainant offers. The Panel finds that Respondent registered and used the domain names in bad faith per Policy ¶ 4(b)(iii).”).
Finally, it is evident from the notoriety of Complainant’s BROOKS mark, from Respondent’s copying that mark verbatim into the Domain Name, and from Respondent’s web site impersonating Complainant and selling products that are advertised as those of Complainant that Respondent had actual knowledge of Complainant and its mark when it registered the Domain Name in June 2019 (WHOIS report submitted in Complaint Exhibit D shows registration date). Policy ¶ 4(b) recognizes that mischief can assume many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and registering a confusingly similar domain name with actual knowledge of a complainant’s rights in its mark has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). 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).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of 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 <brooksstoreshop-au.online> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
August 2, 2019
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