Brooks Sports, Inc. v. Nan Zhang / Chang Jun Guan / Jun Wu Wei / Shuai Li / Dan Li
Claim Number: FA2102001931179
Complainant is Brooks Sports, Inc. (“Complainant”), represented by Mayura I. Noordyke of Cozen O’Connor, Minnesota, USA. Respondents are Nan Zhang / Chang Jun Guan / Jun Wu Wei / Shuai Li / Dan Li (“Respondents”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <usbrooksruners.top>, <getbrookes.top>, <superbrooks.shop>, <superbrooks.top>, <newbrooks.top>, <usbrksrun.online>, <usbrooks.top>, <runingbrooks.store>, <sportsbrooks.store>, <allbroks.top>, <nickbrookes.shop>, and <smailbrks.store> (the “disputed domain names”), registered with Chengdu West Dimension Digital Technology Co., Ltd. (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 February 5, 2021; the Forum received payment on February 5, 2021.
On February 7, 2021, the Registrar confirmed by e-mail to the Forum that the <usbrooksruners.top>, <getbrookes.top>, <superbrooks.shop>, <superbrooks.top>, <newbrooks.top>, <usbrksrun.online>, <usbrooks.top>, <runingbrooks.store>, <sportsbrooks.store>, <allbroks.top>, <nickbrookes.shop>, <smailbrks.store> disputed domain names are registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondents are the current registrants of the disputed domain names. The Registrar has verified that Respondents are bound by the Chengdu West Dimension Digital Technology Co., Ltd. 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 15, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 8, 2021 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@usbrooksruners.top, postmaster@getbrookes.top, postmaster@superbrooks.shop, postmaster@superbrooks.top, postmaster@newbrooks.top, postmaster@usbrksrun.online, postmaster@usbrooks.top, postmaster@runingbrooks.store, postmaster@sportsbrooks.store, postmaster@allbroks.top, postmaster@nickbrookes.shop, postmaster@smailbrks.store. Also on February 15, 2021, 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 Respondents’ Default.
On March 10, 2021, 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.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondents are conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
Complainant has alleged and the Panel agrees that the entities which control the disputed domain names are effectively controlled by the same person and/or entity and 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.”
Therefore, the Panel concludes that the disputed domain names are all controlled or owned by the same person or entity for the reasons set forth below.
All of the disputed domain names incorporate Complainant’s BROOKS trademark as the disputed domain names’ dominant portion, the webpages associated with the disputed domain names are essentially identical for all twelve disputed domain names, and all the disputed domain names are registered with the same Registrar and use a privacy protection service to hide registrant information. In addition, the disputed domain names were registered in close proximity to each other between December 2020 and January 2021.
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”). Complainant contends that Respondents’ disputed domain names are confusingly similar to Complainant’s BROOKS Mark because they each wholly incorporate the BROOKS Mark or a misspelling of the BROOKS Mark, simply adding dictionary terms such as “run,” “new,” “super,” or geographic terms, along with various generic Top-Level Domains (“gTLD”).
Complainant further claims that 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 not use the 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 resolve to webpages that offer the unauthorized sale of Complainant’s goods. Additionally, Respondents attempt to gather personal information from users on those webpages.
Finally, Complainant contends that Respondents registered and are using the disputed domain names in bad faith. Respondents’ disputed domain names resolve to webpages that offer unauthorized versions of Complainant’s products for sale. Respondents had actual knowledge of Complainant’s rights in the BROOKS Mark prior to the registration of the disputed domain names due to the fame of the mark. Respondents attempt to attract Internet users to their websites for commercial gain.
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 the disputed domain names 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, or a misspelling of the trademark, are followed or preceded by the dictionary terms “run”, “new”, “super”, or geographic terms, and then followed by various gTLDs. The addition of a dictionary, descriptive, or geographic term and a gTLD does not negate confusing similarity between a disputed domain name and a trademark 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.”); Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (the addition of a generic term and a gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)); see also Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sept. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy ¶ 4(a)(i) analysis.”). Thus, the Panel finds that the disputed 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 interests 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.
The Panel finds that Respondents have no rights or legitimate interests in the disputed domain names as Respondents have not provided evidence nor proven that they are commonly known by the disputed domain names, nor has Complainant authorized Respondents to use the BROOKS Mark. Respondents have no relationship, affiliation, connection, endorsement or association with Complainant.
Moreover, the Panel finds that Respondents fail to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondents’ disputed domain names resolve to webpages that offer the unauthorized sale of Complainant’s goods. The use of disputed domain names to offer unauthorized versions of a complainant’s product for sale is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(a)(i). See Russell & Bromley Limited v. Li Wei Wei, FA 1752021 (Forum Nov. 17, 2017) (“The respondent’s use of the disputed domain name to pass itself off as the complainant to advertise and sell unauthorized products of the complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii).”). As Complainant provided screenshots of Respondents’ disputed domain names that showed webpages displaying Complainant’s products for sale, the Panel finds that Respondents have failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
Additionally, the Panel finds that Respondents’ attempt to gather personal information from users on the webpages to which the disputed domain names resolve does not demonstrate rights or legitimate interests in the disputed domain names per Policy ¶ 4(a)(ii). See Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (finding the respondent lacked rights and legitimate interests in the domain name because it used the name to resolve to a website virtually identical to the Complainant’s to prompt users to enter their login information so that the Respondent could access that customer’s account). In this proceeding, Complainant provided screenshots of the webpages to which the disputed domain names resolved that showed forms that were to be completed by Internet users with their personal information.
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
Registration and Use in Bad Faith
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.
The Panel finds that Respondents registered and are using the disputed domain names in bad faith since the disputed domain names resolve to webpages that offer unauthorized versions of Complainant’s products for sale. See Kipling Apparel Corp. v. Yan Feng Geng, FA 1703296 (Forum Dec. 20, 2016) (finding the respondent registered and used the <kiplingstores.com> domain name in bad faith per Policy ¶ 4(b)(iii) because the respondent used the domain name to sell the complainant’s products that were either counterfeit or genuine products but resold without authorization).
Moreover, the Panel finds that Respondents had actual knowledge of Complainant’s BROOKS Mark when registering the disputed domain names because they repeatedly used the BROOKS Mark on their respective websites that displayed unauthorized versions of Complainant’s products for sale. Respondents have actual knowledge of Complainant’s BROOKS Mark where, as here, those Respondents used Complainant’s well-known trademark in a way that directed consumers away from Complainant’s official website. 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”).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
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 <usbrooksruners.top>, <getbrookes.top>, <superbrooks.shop>, <superbrooks.top>, <newbrooks.top>, <usbrksrun.online>, <usbrooks.top>, <runingbrooks.store>, <sportsbrooks.store>, <allbroks.top>, <nickbrookes.shop>, and <smailbrks.store> disputed domain names be TRANSFERRED from Respondents to Complainant.
Lynda M. Braun, Panelist
Dated: March 16, 2021
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