Brooks Sports, Inc. v. Redacted for Privacy
Claim Number: FA2101001929564
Complainant is Brooks Sports, Inc. (“Complainant”), represented by Mayura I. Noordyke of Cozen O’Connor, Minnesota, USA. Respondent is Redacted for Privacy (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <brooksbrooksrunning.online>, <brooksbrooksrunning.site>, <xsalebrooks.com>, <brooksports.club>, <brooksbrooksrunning.xyz>, <brooksbrooksrunning.top>, <brooksbrooksrunning.club>, and <brooksbrooksrunning.best>, registered with Dynadot, 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 January 25, 2021; the Forum received payment on January 25, 2021.
On January 29, 2021, Dynadot, LLC confirmed by e-mail to the Forum that the <brooksbrooksrunning.online>, <brooksbrooksrunning.site>, ,<xsalebrooks.com>, <brooksports.club>, <brooksbrooksrunning.xyz>, ,<brooksbrooksrunning.top>, <brooksbrooksrunning.club>, and <brooksbrooksrunning.best> domain names are registered with Dynadot, LLC and that Respondent is the current registrant of the names. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 February 2, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 2021 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@brooksbrooksrunning.online, postmaster@brooksbrooksrunning.site, postmaster@xsalebrooks.com, postmaster@brooksports.club, postmaster@brooksbrooksrunning.xyz, postmaster@brooksbrooksrunning.top, postmaster@brooksbrooksrunning.club, postmaster@brooksbrooksrunning.best. Also on February 2, 2021, 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.
A timely Response was received and determined to be complete on February 10, 2021.
On February 10, 2021, 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.
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 <brooksbrooksrunning.online>, <brooksbrooksrunning.site>, <xsalebrooks.com>, <brooksports.club>, <brooksbrooksrunning.xyz>, <brooksbrooksrunning.top>, <brooksbrooksrunning.club>, and <brooksbrooksrunning.best> domain names are confusingly similar to Complainant’s BROOKS mark because they each wholly incorporate the mark, simply adding the generic terms “running,” “sports,” and “sale,” with minor misspellings and random letters as well as a “.com,” “.online,” “.site,” “.club,” “.xyz,” “.top,” or “.best” 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 domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain names to pass off as Complainant by redirecting users to webpages that bear Complainant’s marks and offer unauthorized products.
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 unauthorized products under Complainant’s mark. Additionally, Respondent had knowledge of Complainant’s rights in the BROOKS mark.
B. Respondent
Respondent expressed its Response in an email received by the Forum on February 5, 2021 which, formal parts omitted, stated as follows.
I received a Written Notice of Complaint regarding Brooks Sport, Inc. v. ( Redacted for privacy) (FA2101001929564).
The referenced case corresponds with websites brooksbrooksrunning.online, brooksbrooksrunning.site, xsalesbrooks.com, brooksbrooksrunning.xyz, brooksbrooksrunnning.top, brooksbrooksrunning.club, and brooksbrooksrunning.best, I do not own and have never owned these domain sites. The corresponding email addresses lead me to believe this is a scam.
I am concerned about potential identity theft, and would like this resolved as quickly as possible. Please feel free to contact me at (Redacted) for questions or concerns.”
In its Additional Submission, Complainant submitted that the Response showed that Respondent did not have rights or legitimate interests in the disputed domain name and that the disputed domain name has been registered and is being used in bad faith, potentially in connection with identity theft and other fraudulent activities.
2. Complainant has established its trademark rights in the BROOKS mark through its registrations with the United States Patent and Trademark Office (“USPTO”). (e.g. Reg. 1,161,034, registered Jul. 14, 1981).
3. Respondent registered the <brooksbrooksrunning.online>, <brooksbrooksrunning.site>, <brooksbrooksrunning.xyz>, <brooksbrooksrunning.top>, <brooksbrooksrunning.club>, and <brooksbrooksrunning.best> domain names on December 19, 2020, the <brooksports.club> domain name was registered on December 20, 2020, and the <xsalebrooks.com> domain name was registered on December 22, 2020.
4. Respondent passes itself off as Complainant on the disputed domain names’ resolving websites, where it offers Complainant’s products for sale without authorization and possibly collects internet user data.
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.
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant has rights in the BROOKS mark based upon the registration 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 <brooksbrooksrunning.online>, <brooksbrooksrunning.site>, <xsalebrooks.com>, <brooksports.club>, <brooksbrooksrunning.xyz>, <brooksbrooksrunning.top>, <brooksbrooksrunning.club>, and <brooksbrooksrunning.best> domain names are confusingly similar to Complainant’s BROOKS mark because they each wholly incorporate the mark, simply adding generic terms, random letters, and/or a 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.”). Complainant notes that each of the domain names adds one or more of the generic terms “running,” “sports,” and “sale,” with minor misspellings and random letters as well as a “.com,” “.online,” “.site,” “.club,” “.xyz,” “.top,” or “.best” gTLD. 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 in its entirety, adding only one or more of the generic terms “running,” “sports,” and “sale,” with minor misspellings and random letters which do not negate the confusing similarity that is present;
(b) Respondent registered the <brooksbrooksrunning.online>, <brooksbrooksrunning.site>, <brooksbrooksrunning.xyz>, <brooksbrooksrunning.top>, <brooksbrooksrunning.club>, and <brooksbrooksrunning.best> domain names on December 19, 2020, the <brooksports.club> domain name was registered on December 20, 2020, and the <xsalebrooks.com> domain name was registered on December 22, 2020;
(c) Respondent passes itself off as Complainant on the disputed domain names’ resolving websites, where it offers Complainant’s products for sale without authorization and possibly collects internet user data;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have rights or legitimate interests in the <brooksbrooksrunning.online>, <brooksbrooksrunning.site>, <xsalebrooks.com>, <brooksports.club>, <brooksbrooksrunning.xyz>, <brooksbrooksrunning.top>, <brooksbrooksrunning.club>, and <brooksbrooksrunning.best> domain names because Respondent is not licensed or authorized to use Complainant’s BROOKS mark and is not commonly known by the disputed domain names. WHOIS information may be used to determine whether a respondent is has rights or legitimate interest in a disputed domain name under Policy ¶ 4(c)(ii). 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). Where a respondent appears to be commonly known by a disputed domain name, the Panel may still find the respondent lacks rights or legitimate interest in the disputed domain name if the respondent lacks authorization to use the complainant’s mark and the respondent fails to provide affirmative evidence in support of this identity. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding that, although the respondent listed itself as “Jessie McKoy / Ripple Reserve Fund” in the WHOIS contact information, it did not provide any affirmative evidence to support this identity; combined with the fact that the complainant claimed it did not authorize the respondent to use the mark, the respondent is not commonly known by the domain name). The WHOIS information for the disputed domain names identifies the registrant as [ REDACTED] but Respondent provides no affirmative evidence in support of this identity and further claims that this is a case of identity theft. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii);
(f) Complainant also argues that Respondent does not use the disputed domains 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 unauthorized 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 under Policy ¶¶ 4(c)(i) and (iii). 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 notes that the sites repeatedly display Complainant’s mark and copy images and products from Complainant’s legitimate website. See Compl. Ex. C. 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).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not sought in the Response to rebut the prima facie case established by Complainant, 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 <brooksbrooksrunning.online>, <brooksbrooksrunning.site>, <xsalebrooks.com>, <brooksports.club>, <brooksbrooksrunning.xyz>, <brooksbrooksrunning.top>, <brooksbrooksrunning.club>, and <brooksbrooksrunning.best> domain names in bad faith because Respondent attempts to attract Internet users to its websites for commercial gain by offering unauthorized products under Complainant’s mark. Use of a disputed domain name to pass off as a complainant and offer unauthorized goods 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 recalls 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 knowledge of Complainant’s rights in the BROOKS mark. Actual knowledge of a complainant’s rights in a mark evidences bad faith under Policy ¶ 4(a)(iii) and may be shown by the use the respondent makes of the domain name. See iFinex 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”); 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. B & C. As the Panel agrees that actual knowledge is evident, 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 the BROOKS mark and in view of the conduct of Respondent with respect to 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.
PANEL NOTE: REDACTION OF RESPONDENT’S IDENTITY
Before announcing its Decision, the Panel wishes to raise another matter. In this proceeding, Respondent contended in effect that it did not own and has never owned this domain names and that it believes the registration and use of the domain names amount to a scam. It goes on to say that it is concerned about potential identity theft and would like the matter resolved as quickly as possible.
The evidence has made it clear in the opinion of the Panel that a fraud was perpetrated in the registration and use of the domain names and that the Respondent’s name was used without its knowledge or consent. Thus, although the named Respondent is the domain name holder and the proper Respondent in this proceeding, the real name and contact details of the person who wrongly effected the registrations are unknown. It is also clear that this is the reason why Respondent very properly has made the foregoing submission.
This gives rise to the question whether there should be a redaction from the decision to protect the privacy of the Respondent. Neither party has requested itself any redaction. However, the Panel has formed the view that it may well be unfair to the Respondent to continue to have its name associated with the proceeding, and where the impression may be given to internet users that Respondent has responsibility for some of the events, whereas in fact Respondent does not have any such responsibility, being an innocent party.
The Panel has therefore decided to consider on its own initiative whether it should exercise the power to determine whether there should be a redaction from the decision to protect Respondent’s privacy. In considering the issue, the Panel refers to and incorporates the views it expressed when it considered this issue in OSilas Foundation v. Redacted for Privacy, Forum, FA2004001892126 (May 6, 2020) and it has taken that decision and the following rules and decisions into account.
Under Policy ¶ 4(j) the Panel has power to determine that portions of its decision may be redacted. The practical result of the exercise of this power is that the provider, in this case the Forum, will not publish on the internet the full decision, but will redact the portion determined by the Panel to be redacted. It is clear that the language of the Policy in that regard is wide enough to redact from a decision the case caption and any other reference to the named Respondent.
According to Policy ¶ 4(j), “[a]ll decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision.” In Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellzfargo.com>, FA 362108 (Forum Dec. 30, 2004) and Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellsfargossl>, FA 453727 (Forum May 19, 2005), the panels omitted the respondents’ personal information from the decisions, pursuant to Policy ¶ 4(j), to protect the respondents who claimed to be victims of identity theft from becoming aligned with acts the actual registrants appeared to have sought to impute to the respondents.
The Panel notes here that the power given to it by Policy ¶ 4(j) is a discretionary one that must be exercised judicially. In that regard the Panel would have to be satisfied that the case was an “exceptional” one and that it was appropriate to be made in all the circumstances.
ICANN Rule 16(b) also makes practical provision for the publication of the full decision except if the Panel determines otherwise under Policy ¶ 4(j).
It is true that Forum Supplemental Rule 15(b) provides “All requests pursuant to Policy paragraph 4(j) and Rule 16(b) to have a portion of the decision redacted, must be made in the Complaint, the Response, or an Additional Submission that is submitted before the Panel’s decision is published.” But in those cases where there is no request, such as the present case, the Panel has a discretion although, as has just been noted, the discretion must be exercised judicially.
The Panel notes that previous decisions have held that the registrar-confirmed registrant of a disputed domain name (per the WHOIS at commencement of the proceeding) is the proper respondent, notwithstanding the possibility that said respondent’s identity was stolen. See, e.g., Banco Bradesco S/A v. Gisele Moura Leite, D2014-0414 (WIPO Apr. 30, 2014). Despite this, the power to redact a portion of a decision is expressly conferred by Policy ¶ 4(j) and may be implemented by ICANN Rule 16 (b).
Thus, in the present case the named registrant is the proper Respondent.
The role of the Panel is then to determine whether the circumstances of the present case including the apparent theft of Respondent’s identity warrant the redaction of Respondent’s name and any other identifying information from the Panel’s decision.
The Panel has considered this matter carefully. It is clear that whoever was responsible for registering the domain names in the name of Respondent has stolen its identity and been responsible for the scam and potential identity theft raised by named Respondent. Thus, in the opinion of the Panel, the identity of the Respondent should be protected by redaction.
The Panel has therefore decided that in all the circumstances this is an exceptional case and that it is appropriate to redact Respondent’s name and information from the Panel’s decision. The Panel therefore determines for the purposes of Policy ¶ 4(j) and ICANN Rule 16(b) that this will be done.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brooksbrooksrunning.online>, <brooksbrooksrunning.site>, <xsalebrooks.com>, <brooksports.club>, <brooksbrooksrunning.xyz>, <brooksbrooksrunning.top>, <brooksbrooksrunning.club>, and <brooksbrooksrunning.best> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: February 15, 2021
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