Brooks Sports, Inc. v. Myra Kern / bost company / Mohamed Roubi / Gretchen Aquino
Claim Number: FA2001001878358
Complainant is Brooks Sports, Inc. (“Complainant”), represented by Mayura I. Noordyke of Cozen O’Connor, Minnesota, United States. Respondent is Myra Kern / bost company / Mohamed Roubi / Gretchen Aquino
(“Respondent”), Armenia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue are <brooksbuy.online>, <brookssales.online>, <brookses.online>, and <brookshoes.online> registered with NameCheap, Inc.; NameSilo, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 9, 2020; the Forum received payment on January 9, 2020.
On January 10, 2020, NameCheap, Inc. confirmed by email to the Forum that the <brookshoes.online> domain name is registered with NameCheap, Inc. and that the Respondent is the registrant of the domain name; on January 10, 2020, NameSilo, LLC confirmed by e-mail to the Forum that the <brooksbuy.online>, <brookssales.online>, and <brookses.online> domain names are registered with NameSilo, LLC and that Respondent is the current registrant of the names. NameCheap, Inc. and NameSilo, LLC have verified that Respondent is bound by the NameCheap, Inc. and 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 January 14, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 3, 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@brooksbuy.online, postmaster@brookssales.online, postmaster@brookses.online, postmaster@brookshoes.online. Also on January 14, 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 February 6, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged 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.”
Complainant contends that the respondents noted are all related to or are controlled by the same entity, which operates all of the <brooksbuy.online>, <brookssales.online>, <brookses.online>, and <brookshoes.online> domain names. All four domain names incorporate the BROOKS mark as the dominant portion of the mark. The web pages associated with the disputed domain names are nearly identical. The <brooksbuy.online>, <brookssales.online> and <brookses.online> domain names are all registered with NameSilo, LLC with the same privacy services, PrivacyGuardian.org. They all share the same name servers. Three of the domain names were registered on the same date, November 12, 2019. All four disputed domain names are associated with the same ASN and their hosting history indicates all four disputed domain names have had on change on two unique servers over one year.
The Panel finds all of the disputed domain names are commonly owned/controlled by a single Respondent who is using multiple aliases.
A. Complainant
i) Complainant is a known world-leader in athletic clothing and footwear, including high-performance running shoes. Complainant has rights in the BROOKS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,161,034, registered July 14, 1981). The disputed domain names are confusingly similar to Complainant’s BROOKS mark. Respondent incorporates the BROOKS mark in its entirety and adds the generic terms “buy,” “sales,” and “shoes,” or random letters “ES” in addition to the “.online” generic top-level domain (“gTLD”).
ii) Respondent has no rights or legitimate interests in the disputed domain names as Respondent is not commonly known by the disputed domain names. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain names resolve to a nearly identical webpage to complainant’s site. Respondent displays Complainant’s mark and images of its products in an attempt to pass off as Complainant. Respondent attempts to obtain personal information form Internet users by providing email address to create an account.
iii) Respondent registered and used the disputed domain names in bad faith. Respondent uses the disputed domain names to divert Internet users in an attempt to pass off as Complainant. Respondent had actual knowledge of Complainant’s rights in the BROOKS mark due to Complainant’s USPTO registration of the mark.
B. Respondent
Respondent did not submit a response to this proceeding.
1. The disputed domain name <brookssales.online> was registered on November 7, 2019, and the disputed domain names <brooksbuy.online>, <brookses.online>, and <brookshoes.online> were registered on November 12, 2019.
2. Complainant has established rights in the BROOKS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,161,034, registered July 14, 1981).
3. The disputed domain names resolve to a nearly identical webpage to Complainant’s site that displays Complainant’s mark and images of its products in an attempt to pass off as Complainant.
4. Respondent attempts to obtain personal information from Internet users by requesting email addresses and requiring users to create an account during the checkout process.
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 claims to have rights in the BROOKS mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in a mark per 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.”). Here, Complainant has provided the Panel with a copy of its USPTO registration for the BROOKS mark (e.g. Reg. No. 1,161,034, registered July 14, 1981). Therefore, the Panel finds that Complainant has adequately shown rights in the BROOKS mark per Policy ¶ 4(a)(i).
Complainant argues that the disputed domain names are confusingly similar to Complainant’s BROOKS mark. Registration of a disputed domain name that incorporates a mark in its entirety and adds a generic term or letters along with a gTLD does not distinguish the domain from the mark per Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). Complainant argues that Respondent incorporates its BROOKS mark with the addition of the generic terms “buy,” “sales,” or “shoes,” or random letters “ES” in addition to the “.online” gTLD. Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant’s BROOKS mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name 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”).
Complainant argues Respondent lacks rights or legitimate interest in the disputed domain names as Respondent is not commonly known by the disputed domain names nor has Respondent been given license or consent to use the BROOKS mark or register domain names using Complainant’s mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the 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). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Myra Kern / bost company / mohamed Roubi / Gretchen Aquino” and there is no other evidence to suggest that Respondent was authorized to use the BROOKS mark or was commonly known by the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant further argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain names resolve to a nearly identical webpage to complainant’s site that displays Complainant’s mark and images of its products in an attempt to pass off as Complainant. Use of a disputed domain name in an attempt to pass off as a complainant or confuse Internet users that Respondent is affiliated with Complainant is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Here, Complainant has provided screenshots of the disputed domain names’ resolving web pages which appear to display Complainant’s BROOKS mark and products. Therefore, the Panel finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant further argues that Respondent attempts to obtain personal information from Internet users by requesting email addresses and requiring users to create an account during the checkout process. Use of a disputed domain name to obtain personal information from Internet users is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Google Inc. v. Pritam Singh / Pandaje Technical Services Pvt Ltd., FA 1660771 (Forum Mar. 17, 2016) (agreeing that respondent has not shown any bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii) as the respondent used the complainant’s mark and logo on a resolving website containing offers for technical support and password recovery services, and soliciting Internet users’ personal information). Complainant has provided the Panel with screenshots of Respondent’s disputed domain names where Internet users are required to submit their email address and other personal information to register for an account. Therefore, the Panel agrees and finds that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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 argues that Respondent registered and used the disputed domain names in bad faith as Respondent attempts to pass off as Complainant. Use of a disputed domain name to pass off as a complainant and confuse Internet users that respondent is affiliated with complainant may be evidence of bad faith per Policy ¶¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). Complainant has provided the Panel with screenshots of the disputed domain names resolving web pages that show Complainant’s BROOKS mark and offerings of its products. Therefore, the Panel finds that Respondent registered and used the disputed domain names in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Complainant further argues that Respondent had actual or constructive knowledge of Complainant’s rights in the BROOKS mark prior to the registration of the disputed domain names. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name is adequate to find 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.”). Registration of a domain name that contains a famous mark and displaying said mark may be evidence of actual knowledge per Policy ¶ 4(a)(iii). See NIKE, Inc. v. Elah Blake, FA 1580701 (Forum Nov. 4, 2014) (finding that the respondent’s conduct indicated that respondent had actual notice of the complainant’s famous NIKE mark and finding bad faith where the respondent used the disputed domain name to display the complainant’s content). Complainant has provided screenshots of the disputed domain names’ resolving web pages that show the prominent display of Complainant’s BROOKS mark. Complainant also provides the Panel with a screenshot of its actual webpage that is similar to Respondent’s displayed webpage. Therefore, the Panel infers that Respondent had actual knowledge of Complainant’s rights in the mark prior to the registration of the disputed domain names which constitutes bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brooksbuy.online>, <brookssales.online>, <brookses.online>, and <brookshoes.online> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: February 11, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page