The Complainant is Brother International Corporation, United States of America, represented by Moeller IP, Argentina.
The Respondent is Jiafen Wu, Brother Business Machine Co., Ltd., Taiwan Province of China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in Spanish with the WIPO Arbitration and Mediation Center (the “Center”) on February 9, 2021. The following day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 11, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 3, 2021 providing the registrant and contact information disclosed by the Registrar. On the same day, the Center sent an email communication to the Parties regarding the language of the proceeding. Later the same day, the Complainant filed an amended Complaint in English. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 20, 2021. The Center appointed Matthew Kennedy as the sole panelist in this matter on April 26, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant is a subsidiary of Brother Industries Ltd of Japan. Through its subsidiaries, Brother Industries Ltd operates in more than 40 countries around the world. Its products include laser printers. Brother Industries Ltd holds trademark registrations for BROTHER in a fancy script in multiple jurisdictions, specifying goods in multiple classes, including Argentine trademark registration number 2597018, registered on September 30, 2013, specifying goods in class 9. That trademark registration remains current. The Complainant has registered “brother” as a domain name in multiple Latin American country code Top-Level Domains (“ccTLDs”) and Secondary-Level Domains (“SLDs”), such as The Respondent is an individual and company. The disputed domain name was registered on April 26, 2019. It formerly resolved to a website in Chinese, written in traditional characters. The website was titled “兄弟24探購網”, which may be translated as “Brother 24 Discovery Shopping Network”. The website displayed the Complainant’s BROTHER trademark in the same fancy script in which that mark is registered, together with images of the Complainant’s products. The website offered for sale the Complainant’s products, including toner, laser printers and label makers. The website also offered for sale a paper shredder of another brand. On the service tab, the Respondent claimed that its company was an authorized BROTHER repair center. Prices were displayed in Taiwanese dollars. However, at the time of this Decision, access to the website is forbidden. The Registrar confirmed that the language of the Registration Agreement is English. 5. Parties’ Contentions A. Complainant The disputed domain name fully reproduces the Complainant’s BROTHER trademark, the only difference being the ccTLD of Colombia. It is very likely that consumers will associate the disputed domain name with the Complainant, especially when the Respondent introduces itself on the associated website as an authorized distributor, which is not the case. All the products offered on the website are manufactured by the Complainant under the BROTHER trademark, clearly for commercial use. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent owns no relevant trademark registration. The Respondent’s name bears no relation to the word “brother”. There is no reason to have a website in Chinese with the TLD of Colombia, where the first language is Spanish. The Complainant's trademarks and domain names were requested and granted well before the date of application for the disputed domain name. The disputed domain name resolves to a website where all the products offered are products manufactured by the Complainant bearing its BROTHER trademark, an indisputable fact showing that it has always been known by the Respondent, with the explicit intention of misleading consumers or tarnishing the good name of the Complainant’s trademark for profit. The Respondent selected the disputed domain name precisely because it was identical to the BROTHER mark, carrying an implicit risk of confusion by association, intentionally trying to attract Internet users to its website for profit, creating the possibility of confusion with the Complainant’s mark with respect to its products and even more to its prestige. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar Based on the evidence presented, the Panel finds that Brother Industries Ltd has rights in the BROTHER trademark. Brother Industries Ltd is the parent company of the Complainant. The Panel is satisfied that the Complainant has rights in the BROTHER trademark for the purposes of the standing requirement in the first element of paragraph 4(a) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.4.1. The disputed domain name wholly incorporates the BROTHER trademark. The only additional element is the SLD extension “.com.co”. As a technical requirement of registration, the Panel does not consider that this element prevents a finding of confusing similarity between the disputed domain name and the BROTHER trademark. See, for example, BET365 Group Limited v. Mingcheng Zhou,WIPO Case No. DCO2020-0052. Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy: (i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or (ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or (iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. As regards the first and third circumstances above, the disputed domain name formerly resolved to a website displaying the Complainant’s BROTHER trademark and offering the Complainant’s BROTHER products for sale. The website claimed on the service tab that the Respondent was an authorized repair center for the Complainant’s products. While the Complainant does not specifically address that claim, it does submit that the Respondent is not an authorized distributor of the Complainant’s products. In any case, the website did not include a prominent disclaimer clarifying the Respondent’s status as an unauthorized distributor of the Complainant’s products. Further, the Panel observes that the products offered for sale on the website were not exclusively those of the Complainant and included at least one product of another brand. Cf. Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. The Panel also notes that the disputed domain name consists solely of the Complainant’s BROTHER trademark combined only with an SLD extension, which carries an implied risk of affiliation. Moreover, access to the website associated with the disputed domain name is now forbidden. Accordingly, the Panel does not consider either use of the disputed domain name to be in connection with a bona fide offering of goods or services. Nor is either use a legitimate noncommercial or fair use of the disputed domain name for the purposes of the Policy. As regards the second circumstance set out above, the Panel notes that the Respondent’s corporate name is listed in the Registrar’s WhoIs database as “Brother Business Machine Co., Ltd”, which includes the word “Brother”. The title of the website associated with the disputed domain name began with “兄弟”, which means “Brother”. Nevertheless, there is no evidence from any other source that the Respondent is known by that name. Accordingly, the Panel is unable to conclude that the Respondent is commonly known by the disputed domain name. In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that case because it did not respond to the Complainant’s contentions. Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows: “(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.” As regards registration, the disputed domain name was registered in 2019, years after the Complainant obtained registrations of the BROTHER trademark. The disputed domain name incorporates the BROTHER trademark as its operational element, combining it only with an SLD extension. Although the Complainant provides no evidence of trademark registrations outside Latin America, there can be little doubt that the Respondent knew of that trademark at the time of registration of the disputed domain name because the associated website displayed the Complainant’s BROTHER trademark and offered for sale the Complainant’s office equipment. Accordingly, the Panel finds that the Respondent targeted the Complainant’s trademark at the time of registration of the disputed domain name. As regards use, the disputed domain name resolved to a website displaying the Complainant’s BROTHER trademark and offering for sale the Complainant’s office equipment, as well as that of another brand. Given these facts and the findings in section 6.B above, the Panel finds that the Respondent, by using the disputed domain name, has intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or the products offered for sale on it, as contemplated by paragraph 4(b)(iv) of the Policy. The Panel takes note that the use of the disputed domain name has recently changed and that access to the associated website is now forbidden. This does not alter the Panel’s conclusion but, rather, may constitute a further indication of bad faith. Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name Matthew Kennedy
Sole Panelist
Date: May 1, 2021
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