Venator Group Retail, Inc. v. Ayrton Mercado
Claim Number: FA0110000100651
Complainant is Venator Group Retail, Inc., New York, NY (“Complainant”) represented by Robert M. Leonard, of Drinker Biddle & Shanley LLP. Respondent is Ayrton Mercado, New York, NY (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <footlocker.tv>, registered with Dot.tv.
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.
James A. Carmody, 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 17, 2001, Dot.tv confirmed by e-mail to the Forum that the domain name <footlocker.tv> is registered with Dot.tv and that Respondent is the current registrant of the name. Dot.tv has verified that Respondent is bound by the Dot.tv 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 18, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 7, 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 email@example.com 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 27, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody 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 the Respondent to the Complainant.
The <footlocker.tv> domain name is confusingly similar to Complainant’s FOOT LOCKER mark.
Respondent has no rights or legitimate interests in respect to <footlocker.tv>.
Respondent registered <footlocker.tv> in bad faith.
No Response received.
Complainant has registered the FOOT LOCKER mark. Complainant has used the marks in conjunction with the sale and advertisement of athletic apparel since 1976. Moreover, Complainant has established recognition on the Internet through its <footlocker.com>, <efootlocker.com>, and <worldfootlocker.com> websites.
Respondent registered the <footlocker.tv> domain name on August 22, 2000. Respondent’s website projects a message announcing that “footlocker.tv” has been registered. Complainant’s attorneys issued a Cease and Desist letter to Respondent. Respondent answered the letter by stating that it was not developing the website.
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 <footlocker.tv> domain name is confusingly similar to Complainant’s registered FOOT LOCKER mark. The addition of a top level domain name and a slight variance in punctuation is insufficient to adequately distinguish Respondent’s domain name from Complainant’s registered mark. See Chi-Chi’s Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding that varying punctuation of a trademark makes the domain name confusingly similar); see also World Wrestling Fed'n Entm't., Inc. v. Rapuano, DTV2001-0010 (WIPO May 23, 2001) (finding that “[t]he addition of the country code top level domain (ccTLD) designation “.tv” does not serve to distinguish those names from Complainant’s marks since “.tv” is a common Internet address identifier that is not specifically associated with Respondent”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The first prong of Policy ¶ 4(a) has been satisfied.
Respondent does not have any rights or legitimate interests in the domain name at issue because Respondent did not use the domain name for a bona fide offering of goods. The passive holding of an infringing domain name is not a bona fide offering of goods. See Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interest can be found when Respondent fails to use disputed domain names in any way); see also Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests where Respondent made no use of the infringing domain names); see also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that Respondents have not established any rights or legitimate interests in said domain name).
Respondent does not have any rights or legitimate interests in <footlocker.tv> because it is not commonly known by the name. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).
Moreover, when a mark is as well known as Complainant’s, there is a presumption that no one else has rights or legitimate interests to it. See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark); see also Strojirny v. Rautiainen, D2000-1394 (WIPO Dec. 20, 2000) (finding that Respondent has no rights or legitimate interests in the domain name where Complainant’s ADAST mark is distinct and well-known and Respondent has made no use of the domain name in question).
Respondent does not have any rights or legitimate interests in the domain name at issue because Respondent’s passive holding of the domain name does not constitute a fair use. See State Fair of Texas v. State Fair Guides, FA 95066 (Nat. Arb. Forum July 25, 2000) (finding that Respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name); see also Flor-Jon Films, Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000) (finding that Respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name).
The second prong of Policy 4(a) has been satisfied.
The ICANN Policy provides four circumstances that may be evidence of bad faith, but these four are not exhaustive and Panels are allowed to consider other circumstances that support a finding of bad faith on the part of Respondent. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding that “it is possible, in certain circumstances, for activity not enumerated in 4(b) to be evidence of bad faith).
As a result, registration of an infringing domain name coupled with passive holding is evidence of bad faith. See Mondich & Am. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the Respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith); 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); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the Respondent had made no use of the domain name or website that connects with the domain name, and passive holding of a domain name permits an inference of registration and use in bad faith).
The Complainant’s name is so famous that, knowledge of its mark is presumed, and as a result, to select a domain name that infringes upon the well-known mark is evidence 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 Victoria’s Secret et al v. Hardin, FA 96694 (Nat. Arb. Forum March 31, 2001) (finding that in light of Complainant’s famous name, Respondent has actual or constructive knowledge of BODY BY VICTORIA marks at the time she registered the domain name and as a result, this is evidence of bad faith).
Accordingly, the third prong of Policy 4(a) has been satisfied.
Having established all three required under the ICANN policy, the Panel concludes that the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <footlocker.tv> be transferred from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 3, 2001
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