Brooks Sports, Inc. v. Mohamed Roubi
Claim Number: FA1911001872188
Complainant is Brooks Sports, Inc. (“Complainant”), represented by Mayura I. Noordyke of Cozen O’Connor, United States. Respondent is Mohamed Roubi (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brooksscarpe.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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 20, 2019; the Forum received payment on November 20, 2019.
On November 20, 2019, NameSilo, LLC confirmed by e-mail to the Forum that the <brooksscarpe.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 November 22, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 12, 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@brooksscarpe.online. Also on November 22, 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 December 16, 2019 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 claims rights in the BROOKS trademark established through its ownership of the portfolio of registered trademarks below and the reputation it has established through long standing and continuous use of the BROOKS trademark on a variety of goods for over 100 years.
Complainant submits that the disputed domain name is confusingly similar to Complainant’s BROOKS trademark. Complainant argues that panels established under the Policy have found that, where, as in this case, a domain name incorporates a distinctive mark in its entirety, it creates sufficient similarity between the mark and the domain name to render it confusingly similar. See Lowen Corp. v. Henry Chan, Case No. D2004-4030 (WIPO Aug. 5, 2004) (finding that the domain name lowensigns.com is confusingly similar to LOWEN).
Complainant further submits that in the disputed domain name <brooksscarpe.online> consists of Complainant’s BROOKS mark and the generic term “scarpe,” which translates as “shoes” in Italian and argues that the additional term does not negate the confusing similarity between the disputed domain name and the BROOKS mark under Policy ¶ 4(a)(i). Forum panels have found that adding a generic term or abbreviation or random letters fails to distinguish the resulting domain name from the incorporated trademark. See State Farm Mutual Automobile Insurance Company v. Online Resource / Online Resource Management Ltd., Case No. FA1505001618294 (Forum June 13, 2015) (finding that the disputed domain name was confusingly similar to the complainant’s trademark where the domain name consisted of the complainant’s trademark with the addition of the generic word “my” and the random letters “sfestat”).
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name, arguing that Respondent has no relationship, affiliation, connection, endorsement or association with Complainant; that Respondent has never requested or received any authorization, permission or license from Complainant to use the disputed domain name <brooksscarpe.online> or the BROOKS mark in any way and that Respondent has never been commonly known by either the domain name <brooksscarpe.online> or by the BROOKS mark and has never acquired any trademark rights therein.
Complainant adds that Respondent is not making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers. The disputed domain name resolves to a website that is similar to Complainant’s own website at <www.brooksrunning.com>. Notably, the homepage associated with the disputed domain name displays the BROOKS mark in the banner; displays images of Complainant’s products; and uses a color scheme and layout that mimics the color scheme and layout of Complainant’s authentic website. Complainant argues that because of the nature of the activities associated with the disputed domain name, Respondent’s use of the disputed domain name cannot be characterized as being in good faith and in connection with a bona fide offering of goods or services. See Western Union Holdings, Inc. v. XYZ a/k/a Chahat Topiwala, Case No. D2005-0945 (WIPO Oct. 20, 2005) (finding bad faith where the respondent used the disputed domain name to masquerade as the complainant as part of a scam to solicit monetary deposits).
Complainant submits that the disputed domain name was registered and is being used in bad faith.
Complainant argues that Respondent had knowledge of Complainant and Complainant’s trademark rights in its BROOKS mark yet proceeded to register and use the disputed domain name in bad faith.
Complainant submits that the disputed domain name, which includes Complainant’s trademark is being used to divert visitors to Respondent’s own web site for commercial gain; that Respondent’s conduct shows that Respondent actually knew about Complainant and Complainant’s BROOKS mark; and that Respondent registered and is using the disputed domain name in bad faith for commercial gain and to profit from the resulting consumer confusion that the disputed domain name is somehow connected with Complainant.
Complainant argues that such registration and use of the disputed domain name are evidence of opportunistic bad faith on the part of Respondent. See, e.g., Scania CV AB (Publ) v. Unaci, Inc., Case No. D2005-0585 (WIPO July 29, 2005) (holding that use of famous mark by someone with no connection to mark owner “suggests opportunistic bad faith”).
Complainant argues that any use by Respondent of the BROOKS mark even as a domain name, is an infringement of Complainant’s long-held rights under trademark law, and the links at the bottom of Respondent’s home page lead to webpages that appear to be translations of the corresponding webpages associated with the disputed domain name. Translating the webpages shows many of the same grammatical and other language errors.
The website associated with the disputed domain name <brooksscarpe.online> appears to be identical (albeit in Italian) to the website that is the subject of a UDRP recently filed by Complainant for the disputed domain name, and Complainant anticipates that the respondents in both instances are the same or related.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a producer of athletic clothing and footwear, including high-performance running shoes and is the owner of the following U.S. registered trademarks:
• U.S. registered trademark BROOKS Design, registration number 1161034, registered on July 14,1981 for “footwear” in International Class 25;
• U.S. registered trademark BROOKS Design, registration number 5596496, registered on October 20, 2018 for “footwear” in International Class 25;
• U.S. registered trademark BROOKS Design, registration number 4631302, registered on November 4, 2014 for the following goods in International Class 25: Footwear; shoes; athletic clothing, namely, gloves, mittens, hats, headbands, jackets, jogging suits, pants, shirts, shorts, socks, t-shirts, tank tops, tights, track suits, visors, warm up suits, waterproof jackets and pants, wind resistant jackets”;
• U.S. registered trademark BROOKS Design, registration number 1683840, registered on April 21, 1992 for the following goods in International Class 25:” Athletic clothing, namely, shirts, pants, jackets, hats, caps, shorts, tights and hosiery, and athletic footwear”;
• U.S. registered trademark BROOKS TRANSCEND, registration number 478097, registered on April 28, 2015 in International Class 25 for “footwear”.
Complainant has an established Internet presence and prominently displays BROOKS mark on its website at <www.brooksrunning.com> on which it offers sports footwear and apparel for sale.
The disputed domain name <brooksscarpe.online> was registered on November 12, 2019 and resolves to a website with text in the English and Italian languages which displays Complainant’s BROOKS mark and also offers sports apparel and footwear for sale.
There is no information available about Respondent except that which has been provided in the Complaint, the Registrar’s WhoIs, and the Registrar’s response to the Forum’s request verification of the registration details of the disputed domain name in the course of this proceeding. The Respondent conceals his identity on the published WHOIS by use of a privacy service.
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 has proven to the satisfaction of this Panel that it has rights in the BROOKS mark established through its ownership of the portfolio of registered trademarks below and the goodwill it has acquired in the use of the BROOKS mark in its sports apparel and footwear business including on its retail website.
Having compared both, this Panel finds that the disputed domain name is confusingly similar to Complainant’s BROOKS trademark. The disputed domain name incorporates Complainant’s mark in its entirety and the word BROOKS is the initial, dominant and only distinctive element in the disputed domain name. In the circumstances of this case the gTLD extension <.online> may be ignored for the purposes of comparison. The addition of the Italian language generic term “scarpe”, meaning shoes, does not negate the confusingly similar character of the disputed domain name as the word is generic and in any event Complainant has an established international reputation for the production and sale of sports footwear.
Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, arguing that Respondent has no relationship, affiliation, connection, endorsement or association with Complainant; that Respondent has never requested or received any authorization, permission or license from Complainant to use the disputed domain name <brooksscarpe.online> or the BROOKS mark in any way; that Respondent has never been commonly known by either the disputed domain name or by the BROOKS mark and has never acquired any trademark rights therein; that there is no evidence in the WHOIS information to suggest that Respondent is known by the disputed domain name; and that Respondent is not making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers.
In such circumstances the burden of production shifts to Respondent to prove that he has rights or legitimate interests in the disputed domain name. No Response has been filed and Respondent has failed to discharge the burden of production.
This Panel finds therefore that on the balance of probabilities, Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Given that the disputed domain name is composed of Complainant’s BROOKS mark in combination with the Italian word “scarpe” meaning shoes, on the balance of probabilities the disputed domain name was registered in bad faith with Complainant’s name, mark, brand and reputation in mind. This conclusion is supported by the fact that the Respondent is using the disputed domain name to resolve to a website that is dedicated to offering sports footwear for sale under Complainant’s mark.
This Panel accepts Complainant’s submission that on the balance of probabilities, the disputed domain name, which includes Complainant’s trademark is being used to divert visitors away from Complainant’s website to Respondent’s web site for commercial gain; that Respondent’s conduct shows that Respondent actually knew about Complainant and Complainant’s BROOKS mark; and that Respondent registered and is using the disputed domain name in bad faith for commercial gain and to profit from the resulting consumer confusion that the disputed domain name is somehow connected with Complainant.
Complainant has adduced in evidence a screen-shot of the website to which the disputed domain name resolves. There is nothing on the website that indicates that there is no relationship between Respondent and Complainant. Furthermore, the impression is intentionally created, by the unauthorized use of Complainant’s mark on Respondent’s website that Respondent’s website is owned by or authorized by Complainant.
This Panel finds that Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Complainant’s web site and the product’s offered for sale on his website.
In the circumstances, this Panel finds that the disputed domain name was registered and is being used in bad faith.
Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is entitled to the reliefs sought.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brooksscarpe.online> domain name be TRANSFERRED from Respondent to Complainant.
______________________________________
James Bridgeman SC
Panelist
Dated: 17 December 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page