Venator Group Retail, Inc. v ShopStarNetwork
Claim Number: FA0110000100575
Complainant is Venator Group Retail, Inc., New York, NY (“Complainant”) represented by Melissa L. Klipp, of Drinker, Biddle & Shanley, LLP. Respondent is ShopStarNetwork, Baltimore, MD (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shopfootlocker.com>, registered with Network Solutions, Inc.
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.
Sandra Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 15, 2001; the Forum received a hard copy of the Complaint on October 16, 2001.
On October 16, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <shopfootlocker.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 17, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 6, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On November 29, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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.” 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 name be transferred from Respondent to Complainant.
1. Complainant owns and holds the rights to numerous marks containing the “FOOT LOCKER” name, which are used in connection with athletic footwear, equipment, and apparel. The FOOT LOCKER® mark has been registered in the United States with the Patent and Trademark Office, and has reached “incontestable” status.
2. Since 1976, Complainant has used the distinctive “FOOT LOCKER” name and marks in connection with the sale and advertisement of athletic footwear, equipment, and apparel. Complainant also operates retail stores bearing the “FOOT LOCKER” name, including “FOOT LOCKER,” “LADY FOOT LOCKER,” and “KIDS FOOT LOCKER.”
3. Complainant also maintains a significant presence over the Internet. Complainant operates several websites using the FOOT LOCKER® marks, including: <footlocker.com>, <foot-locker.com>, <efootlocker.com>, and <worldfootlocker.com>. Through Complainant’s longstanding use of the FOOT LOCKER® marks, the public has come to expect domain names and web addresses incorporating “FOOT LOCKER,” or variations thereof, to be owned by Complainant.
4. Complainant has invested millions of dollars into promoting the “FOOT LOCKER” name and marks, and building Complainant’s reputation and goodwill.
5. Respondent's <shopfootlocker.com> domain name is confusingly similar to Complainant's FOOT LOCKER® mark.
6. Respondent has no rights or legitimate interests in the disputed domain name.
7. Respondent registered the disputed domain name in bad faith.
No Response was received.
1. Complainant’s FOOT LOCKER mark was registered with the Unites States Patent and Trademark office on November 20, 1979, registration number 1126857.
2. On January 1, 2000, Respondent registered the domain name <shopfootlocker.com>.
3. Respondent has no connection or affiliation with the Complainant, and has received no license or consent, express or implied, to use the trademark in a domain name or in any other manner.
4. Respondent has engaged in a pattern of registering domain names that combine the word “shop” with famous trademarks, including <shopnike.com>, <shopstaples.com>, <shophilfiger.com>, <shopwarnerbrothers.com>, and <shoptoysrus.com>.
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.”
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Identical and/or Confusingly Similar
Respondent's <shopfootlocker.com> domain name is confusingly similar to Complainant's FOOT LOCKER mark because it merely adds a generic term to the FOOT LOCKER mark. The addition of the term “shop” does not create a mark capable of defeating a claim of confusing similarity. See L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the Complainant’s registered mark “llbean” does not circumvent the Complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy); see also Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to Complainant’s BROADCOM mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied
Rights or Legitimate Interests
Respondent has failed to come forward to demonstrate any rights or legitimate interests in the <shopfootlocker.com> domain name. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (stating that “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that absent any evidence of preparation to use the domain name for any legitimate purpose, the burden of proof lies with the Respondent to demonstrate that he has rights or legitimate interests). Furthermore, there is a presumption that Respondent has no rights or legitimate interests with respect to the domain name in dispute where Respondent fails to submit a response. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that “Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the Domain Names”).
Respondent’s registration and passive holding of the <shopfootlocker.com> domain name fails to demonstrate any use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See Am. Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (“…merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”).
There is no evidence in the record, and Respondent has not come forward to establish that it is commonly known by the <shopfootlocker.com> domain name, pursuant to Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).
Furthermore, there is no evidence that demonstrates Respondent is making a legitimate noncommercial or fair use of the <shopfootlocker.com> domain name pursuant to Policy ¶ 4(c)(iii), when Respondent is engaged in passive holding of the domain name. See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
The Panel therefore concludes that Respondent does not have any rights or legitimate interests in the <shopfootlocker.com> domain name and that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent’s registration of the <shopfootlocker.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(ii) because Respondent’s registration of the disputed domain name prevents Complainant from reflecting its mark in a corresponding domain name, to which Complainant has established a pattern of such behavior by the Respondent. See Armstrong Holdings, Inc. v. JAZ Associates, FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names which infringe upon others’ famous and registered trademarks); see also Pep Boys Manny, Moe, and Jack v. E-Commerce Today, Ltd., AF-0145 (eResolution May 3, 2000) (finding that where the Respondent registered many domain names, held them hostage, and prevented the owners from using them constituted bad faith).
Respondent’s passive holding of the disputed domain name further establishes Respondent’s bad faith. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
Furthermore, bad faith is evidenced by the obvious connection the <shopfootlocker.com> domain name has with the Complainant’s enterprise, as it incorporates Complainant’s famous FOOT LOCKER mark in its entirety. Based on the totality of the circumstances, Respondent’s registration and passive holding of the disputed domain name supports a finding of bad faith. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”); see also Kraft Foods (Norway) v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (finding that the fact “that the Respondent chose to register a well known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <shopfootlocker.com> be transferred from Respondent to Complainant.
Sandra Franklin, Panelist
Dated: December 10, 2001
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