Brooks Sports, Inc. v. Kyu / John Rex / xcfhsfd sdf / 俊豪 陈 / nbfgsd
Claim Number: FA2006001898717
Complainant is Brooks Sports, Inc. (“Complainant”), represented by Mayura I. Noordyke of Cozen O’Connor, United States. Respondent is Kyu / John Rex / xcfhsfd sdf / 俊豪 陈 / nbfgsd (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <brooksbigsale.shop>, <brooksonline.buzz>, <brooksshoes.top>, and <brooksstore.shop>, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 2, 2020; the Forum received payment on June 2, 2020.
On June 03, 2020, NameSilo, LLC confirmed by e-mail to the Forum that the <brooksbigsale.shop>, <brooksonline.buzz>, <brooksshoes.top>, and <brooksstore.shop> domain names are registered with NameSilo, LLC and that Respondent is the current registrant of the names. 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 June 8, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 29, 2020 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@brooksbigsale.shop, postmaster@brooksonline.buzz, postmaster@brooksshoes.top, postmaster@brooksstore.shop. Also on June 8, 2020, 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 1, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant, Brooks Sports, Inc., is in the athletic clothing and footwear industry. Complainant has rights in the BROOKS mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,161,034, registered July 14, 1981). See Compl. Ex. A. Respondent’s <brooksbigsale.shop>, <brooksonline.buzz>, <brooksshoes.top>, and <brooksstore.shop> domain names are confusingly similar to Complainant’s BROOKS mark because they wholly incorporate the mark, simply adding the generic terms “sale,” “online,” “shoes,” and “store” as well as a “.shop,” “.buzz,” or .”top” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the disputed domain names. Respondent is not licensed or authorized to use Complainant’s BROOKS mark and is not commonly known by the disputed domain names. Additionally, Respondent does not use the disputed domains for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domains to pass off as Complainant by redirecting users to webpages that bear Complainant’s marks and offer competing products. Additionally, Respondent uses the domain names in connection with potentially fraudulent activities.
Respondent registered and uses the disputed domain names in bad faith. Respondent attempts to attract Internet users to its websites for commercial gain by offering competing products under Complainant’s mark. Additionally, Respondent had constructive or actual knowledge of Complainant’s rights in the BROOKS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has submitted that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
In support of that submission, Complainant also submits as follows : “There are numerous pieces of evidence indicating that all of the Disputed Domain Names are owned and operated by a common entity. First, all four domain names incorporate the BROOKS Mark as the dominant portion of the domain name. See Red Wing Shoe Company, Inc. v. wei zhang / Magdalena Jennifer / Mu Yan / Carolina Rodregues / Fundacion Comercio Electronico, Case No. FA1911001873163 (Forum Jan. 3, 2020) (finding that the disputed domain names were registered to the same person or entity where each of the domain names used the complainant’s trademark as the dominant element). In addition, the websites associated with the Disputed Domain Names and are identical and all offer unauthorized goods of Complainant. See Exhibit B for a true and correct copy of the WHOIS records for the Disputed Domain Names and printouts of the webpages appearing at the Disputed Domain Names. See Google LLC v. vijay kumar / ADV Software, Case No. FA1903001835628 (Forum Apr. 28, 2019) (finding that the disputed domain names were commonly owned/controlled by a single respondent using multiple aliases where the content of the websites was nearly identical, including identical language and identical grammar errors).
Furthermore, all of the Disputed Domain Names are registered with NameSilo, LLC and were all registered within a couple of days of each other; with the domain names BROOKSBIGSALE.SHOP and BROOKSONLINE.BUZZ registered on May 31, 2020 and BROOKSSHOES.TOP and BROOKSSTORE.SHOP registered on June 2, 2020. These domain names also all have the same name servers. Finally, all four domain names are associated with the email address “support@oxborder.com” listed on the “Contact Us” webpage for all of the Disputed Domain Names.
As such, Complainant respectfully submits that it is clear that the Disputed Domain Names are owned and/or controlled by the same person or entity and that the Respondents are the same or are controlled by a single entity (hereinafter referred to as “Respondent”).”
Having regard to all of those considerations and the whole of the evidence, the Panel finds the disputed domain names are commonly owned/controlled by a single Respondent who is using multiple aliases. The proceeding may therefore go forward on that basis. For reasons of convenience, the Respondents will hereafter be referred to as “Respondent”.
1. Complainant is a United States company engaged in the athletic clothing and footwear industry.
2. Complainant has established is trademark rights in the BROOKS mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,161,034, registered July 14, 1981).
3. Respondent registered the <brooksbigsale.shop> and <brooksonline.buzz> domain names were on June 1, 2020 and the <brooksshoes.top> and <brooksstore.shop> domain names on June 2, 2020.
4. Respondent uses the domain names to pass itself off as Complainant by redirecting users to webpages that bear Complainant’s marks and by offering competing products and uses the domain names in connection with potentially fraudulent activities.
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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the BROOKS mark based upon the registration of the mark with the USPTO (e.g., Reg. No. 1,161,034, registered July 14, 1981). See Compl. Ex. A. Registration of a mark with the USPTO is generally sufficient to establish rights in the mark. 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).”). Since Complainant provides evidence of registration of the BROOKS mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s BROOKS mark. Complainant argues that Respondent’s<brooksbigsale.shop>, <brooksonline.buzz>, <brooksshoes.top>, and <brooksstore.shop> domain names are confusingly similar to Complainant’s BROOKS mark because they wholly incorporate the mark, simply adding the generic terms “sale,” “online,” “shoes,” and “store” as well as a “.shop,” “.buzz,” or .”top” gTLD. Addition of a generic or descriptive term and a gTLD does not negate confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); see also Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.”). Thus, the Panel finds that the disputed domain names are identical or confusingly similar to the BROOKS mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s BROOKS trademark and to use it in its domain names, adding the generic terms “sale,” “online,” “shoes,” and “store” which do not negate the confusing similarity between the domain names and the trademark;
(b) Respondent registered the <brooksbigsale.shop> and <brooksonline.buzz> domain names on June 1, 2020 and the <brooksshoes.top> and <brooksstore.shop> domain names on June 2, 2020;
(c) Respondent uses the domain names to pass itself off as Complainant by redirecting users to webpages that bear Complainant’s marks and by offering competing products and it also uses the domain names in connection with potentially fraudulent activities;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant submits that Respondent does not have rights or legitimate interests in the <brooksbigsale.shop>, <brooksonline.buzz>, <brooksshoes.top>, and <brooksstore.shop> domain names since Respondent is not licensed or authorized to use Complainant’s BROOKS mark and is not commonly known by the disputed domain names. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Additionally, lack of authorization to use a mark constitutes further showing that a respondent lacks rights in a mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record lists “Kyu / John Rek” as the registrant of the domain names and no information suggests that Complainant has authorized Respondent to use the BROOKS mark in any way. See Compl. Ex. B. Thus, the Panel finds that Respondent is not commonly known by the domain names under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use and instead uses the domain names to pass itself off as Complainant by redirecting users to webpages that bear Complainant’s marks and offer competing products. Use of a disputed domain name to offer products that compete with a complainant’s business is not a bona fide offering of goods or services or legitimate noncommercial or fair use. See Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”) Additionally, replication of a complainant’s website to promote confusion is not a bona fide offering of goods or services or legitimate noncommercial or fair use. See 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).”). Here, Complainant provides screenshots of Respondent’s websites and submits that the sites repeatedly display Complainant’s mark and copy images and products from Complainant’s legitimate website. See Compl. Ex. B. Thus, the Panel agrees with Complainant and finds that Respondent is not using the domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii);
(g) Complainant argues that Respondent uses the domain names in connection with potentially fraudulent activities. Use of a disputed domain name to phish for personal and/or financial information does not indicate rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii). See Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Forum Feb. 26, 2015) (“The Panel agrees that the respondent’s apparent phishing attempt provides further indication that the respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). Complainant claims that Respondent’s websites collect personal information through an embedded form. Complainant also notes that it received a complaint from a customer who attempted to purchase goods through one of the disputed domain names and later found a fraudulent international transaction through his bank. Complainant provides screenshots of Respondent’s websites as well as the email from Complainant’s customer. See Compl. Exs. B & D. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <brooksbigsale.shop>, <brooksonline.buzz>, <brooksshoes.top>, and <brooksstore.shop> domain names in bad faith since Respondent attempts to attract Internet users to its website commercial gain by offering competing products under Complainant’s mark. Use of a disputed domain name to pass off as a complainant for commercial gain is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Hewlett-Packard Co. v. Ali, FA 353151 (Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). The Panel notes that Complainant provides screenshots of Respondent’s websites which mimic Complainant’s website and purport to offer products that are identical to Complainant’s products or otherwise in competition with Complainant’s business. See Compl. Ex. B. Therefore, the Panel finds bad faith registration and use under Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent had constructive or actual knowledge of Complainant’s rights in the BROOKS mark. While constructive notice is insufficient to support a finding of bad faith, actual knowledge of a complainant’s rights in a mark evidences 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.”); see also Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). Complainant argues that Respondent actually knew about and is fully aware of Complainant’s BROOKS mark as evidenced by the copying and mimicking of content directly from Complainant’s legitimate website. Complainant provides screenshots of its own website as well as Respondent’s websites. See Compl. Exs. C & D. As the Panel agrees with Complainant, the Panel finds bad faith registration and use under Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using BROOKS mark and in view of the conduct that Respondent has engaged in when using the disputed domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brooksbigsale.shop>, <brooksonline.buzz>, <brooksshoes.top>, and <brooksstore.shop> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: July 2, 2020
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