Brooks Sports, Inc. v. Anne Birren Kirby Design / Affonso Ferreira Affonso / nbfgsd / huang zhongying / fdgjh / Bradley Properties / Alejandra Fissore Alejandra / American Baker Testing Company / Michael Bloom / Kyu / John Rex / bcvnc / 文凯 于 / Arnold M Zack Inc / Alexandre Alves Alexandre / Jia / He bluceli
Claim Number: FA2006001899225
Complainant is Brooks Sports, Inc. (“Complainant”), represented by Mayura I. Noordyke of Cozen O’Connor, Minnesota, USA. Respondents are Anne Birren Kirby Design / Affonso Ferreira Affonso / nbfgsd / huang zhongying / fdgjh / Bradley Properties / Alejandra Fissore Alejandra / American Baker Testing Company / Michael Bloom / Kyu / John Rex / bcvnc / 文凯 于 / Arnold M Zack Inc / Alexandre Alves Alexandre / Jia / He bluceli (“Respondents”), Alabama, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <brooksstock.shop>, <brooksshop.shop>, <brookssale.shop>, <brookonline.shop>, <brooksonlinestore.shop>, <brooksstoremall.shop>, <brookslondon.shop>, <brooksbuy.shop>, <brooksstoreuk.shop>, <brooksstorespecial.shop>, <brooksshoes.club>, <brooksvip.buzz>, <brooks.monster>, <brooksrunning.top>, and <brookssportshoe.top> (the “Disputed Domain Names”), registered with Namesilo, Llc (the “Registrar”).
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 7, 2020; the Forum received payment on June 7, 2020.
On June 9, 2020 and June 15, 2020, the Registrar confirmed by e-mail to the Forum that the <brooksstock.shop>, <brooksshop.shop>, <brookssale.shop>, <brookonline.shop>, <brooksonlinestore.shop>, <brooksstoremall.shop>, <brookslondon.shop>, <brooksbuy.shop>, <brooksstoreuk.shop>, <brooksstorespecial.shop>, <brooksshoes.club>, <brooksvip.buzz>, <brooks.monster>, <brooksrunning.top>, and <brookssportshoe.top> Disputed Domain Names are registered with Namesilo, Llc and that Respondents are the current registrants of the names. The Registrar has verified that Respondents are 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 15, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 4, 2020 by which Respondents could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondents’ registration as technical, administrative, and billing contacts, and to postmaster@brooksstock.shop, postmaster@brooksshop.shop, postmaster@brookssale.shop, postmaster@brookonline.shop, postmaster@brooksonlinestore.shop, postmaster@brooksstoremall.shop, postmaster@brookslondon.shop, postmaster@brooksbuy.shop, postmaster@brooksstoreuk.shop, postmaster@brooksstorespecial.shop, postmaster@brooksshoes.club, postmaster@brooksvip.buzz, postmaster@brooks.monster, postmaster@brooksrunning.top and postmaster@brookssportshoe.top. Also on July 15, 2020, the Written Notice of the Complaint, notifying Respondents of the e-mail addresses served and the deadline for a Response, was transmitted to Respondents via post and fax, to all entities and persons listed on Respondents’ registration as technical, administrative and billing contacts.
Having received no response from Respondents, the Forum transmitted to the parties a Notification of Respondent Default.
On August 5, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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 Respondents" 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 Respondents.
Complainant requests that the Disputed Domain Names be transferred from Respondents to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the Disputed 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.” Complainant contends that the domain names all incorporate Complainant’s mark, resolve to nearly identical webpages, were all registered within a week of each other, and all use the same support email address. Therefore, the Panel agrees with Complainant that the Disputed Domain Names are registered by the same domain holder and are properly brought in this proceeding.
A. Complainant
Complainant is a leader in athletic clothing and footwear, including high-performance running shoes. Complainant has rights in the BROOKS trademark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,161,034, registered July 14, 1981) (the “BROOKS Mark”). Respondent’s <brooksstock.shop>, <brooksshop.shop>, <brookssale.shop>, <brookonline.shop>, <brooksonlinestore.shop>, <brooksstoremall.shop>, <brookslondon.shop>, <brooksbuy.shop>, <brooksstoreuk.shop>, <brooksstorespecial.shop>, <brooksshoes.club>, <brooksvip.buzz>, <brooks.monster>, <brooksrunning.top>, and <brookssportshoe.top> Disputed Domain Names are confusingly similar to Complainant’s BROOKS Mark because they each wholly incorporate the BROOKS Mark, simply adding dictionary terms followed by a generic Top-Level Domain (“gTLD”).
Respondents do not have rights or legitimate interests in the Disputed Domain Names. Respondents are not licensed or authorized to use Complainant’s BROOKS Mark and are not commonly known by the Disputed Domain Names. Further, Respondents do Disputed Domain Names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondents use the Disputed Domain Names to pass off as Complainant by redirecting Internet users to webpages that bear the BROOKS Marks and offer competing products. Respondents also use the Disputed Domain Names in connection with potentially fraudulent activities.
Respondents registered and are using the Disputed Domain Names in bad faith. Respondents attempt to attract Internet users to their websites for commercial gain by offering competing products under Complainant’s BROOKS Mark.
B. Respondents
Respondents failed to submit a Response in this proceeding.
The Panel finds that Complainant holds trademark rights in the BROOKS Mark, that the Disputed Domain Names are confusingly similar to Complainant’s BROOKS Mark, that Respondents lack rights or legitimate interests in the Disputed Domain Names, and that Respondents registered and are using the Disputed Domain Names 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 Disputed Domain Names registered by Respondents are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondents have no rights or legitimate interests in respect of the Disputed Domain Names; and
(3) the Disputed Domain Names have been registered and are being used in bad faith.
In view of Respondents’ 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 Panel concludes that Complainant has rights in the BROOKS Mark based on the registration of the trademark with the USPTO (e.g., Reg. No. 1,161,034, registered July 14, 1981). Registration of a mark with the USPTO confers upon a complainant trademark rights for purposes of the Policy ¶4(a)(i). See 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.”)
The Panel also finds that Respondents’ Disputed Domain Names are confusingly similar to the BROOKS Mark under Policy ¶ 4(a)(i), as the Disputed Domain Names incorporate the trademark in its entirety and are followed by dictionary terms and then followed by a gTLD. Addition of dictionary or descriptive terms 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.”). Complainant notes that each Disputed Domain Name adds one or more dictionary terms such as “stock,” “shop,” “sale,” “shoes,” and “running,” and use a gTLD such as “shop”, “club”, “monster” and “.top. Thus, the Panel Domain Names are identical and/or confusingly similar to the BROOKS Mark under Policy¶ 4(a)(i).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
In order for Complainant to succeed under this element, it must first make a prima facie case that Respondents lack rights and legitimate interests in the Disputed Domain Names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondents to show that they have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). Here, the Panel holds that Complainant has made out a prima facie case.
Respondents have no rights or legitimate interests in the Disputed Domain Name as Respondents have not provided evidence nor proven that they are commonly known by the Disputed Domain Names, nor has Complainant authorized Respondent to use the BROOKS Mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
Further, Respondents fail to use the Disputed Domain Names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondents use the Disputed Domain Names to resolve to websites that copy images and products from Complainant’s legitimate website and offer products that compete with Complainant. 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).”) Similarly, 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).”).
Finally, Respondents use the Disputed Domain Names in connection with a fraudulent phishing scheme. Use of a disputed domain name to phish for personal and/or financial information does not indicate rights or legitimate interests in the disputed 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).”). Respondents’ websites collect personal information through an embedded form which is part of the phishing scheme. One of Complainant’s customers unwittingly attempted to purchase goods through one of the Disputed Domain Names and later found a fraudulent international transaction through his bank.
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
This Panel finds that, based on the record, the Complainant has demonstrated the existence of Respondents’ bad faith registration and use pursuant to paragraph 4(b) of the Policy.
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by 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 <brooksstock.shop>, <brooksshop.shop>, <brookssale.shop>, <brookonline.shop>, <brooksonlinestore.shop>, <brooksstoremall.shop>, <brookslondon.shop>, <brooksbuy.shop>, <brooksstoreuk.shop>, <brooksstorespecial.shop>, <brooksshoes.club>, <brooksvip.buzz>, <brooks.monster>, <brooksrunning.top>, <brookssportshoe.top> Disputed Domain Names be TRANSFERRED from Respondents to Complainant.
Lynda M. Braun, Panelist
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