Venator Group Retail Inc v. Syed Hussain dba MIC
Claim Number: FA0110000100706
Complainant is Venator Group Retail, Inc., New York, NY (“Complainant”) represented by Melissa L. Klipp, of Drinker, Biddle & Shanley, LLP. Respondent is Syed Hussain MIC, Closter, NJ (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <footlockerinc.com>, registered with BulkRegister.com.
On November 27, 2001 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist. 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.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 18, 2001; the Forum received a hard copy of the Complaint on October 22, 2001.
On October 19, 2001, BulkRegister.com confirmed by e-mail to the Forum that the domain name <footlockerinc.com> is registered with BulkRegister.com and that Respondent is the current registrant of the name. BulkRegister.com has verified that Respondent is bound by the BulkRegister.com 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 22, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 12, 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.
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 disputed domain name is confusingly similar to Complainant’s U.S. registered mark, FOOT LOCKER.
Respondent has no rights or legitimate interests in respect to the disputed domain name.
Respondent registered and is using the disputed domain name in bad faith.
No response was received.
Since 1976, Complainant has used its FOOT LOCKER trademark in connection with the sale and advertisement of athletic footwear, equipment, and apparel. Complainant registered the mark on the Principal Register of the United States Patent and Trademark Office as Registration No. 1,126,857 on November 20, 1979.
Respondent registered the disputed domain name on August 21, 2001. Respondent has made no use of the domain except to try to sell it to Complainant for $1,250 on October 17, 2001. Respondent has a history of “warehousing” domain names of well-known businesses.
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
Complainant has established rights in its FOOT LOCKER mark through registration in the United States, where the Respondent is domiciled. The addition of “INC” to Complainant’s FOOT LOCKER mark does not distinguish the disputed domain name from Complainant’s mark. See Magnum Piering, Inc. v. The Mudjackers & Garwood S. Wilson, Sr., D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity). Further, the addition of “.com” to a registered mark is insignificant to its confusing similarity. See Visit Am., Inc. v. Visit Am., FA 95093 (Nat. Arb. Forum Aug. 14, 2000) (finding that the “.com” is part of the Internet address and does not add source identity significance).
The Panel finds that ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has failed to submit a Response in this proceeding. The Panel may presume that a Respondent has no rights or legitimate interests in a disputed domain name where the 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); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by the Complainant that the Respondent has no right or legitimate interest is sufficient to shift the burden of proof to the Respondent to demonstrate that such a right or legitimate interest does exist).
There is no evidence that Respondent is commonly known by the disputed domain name, or using the domain name in connection with a legitimate noncommercial or fair use. 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); see also Body Shop Int’l PLC v. CPIC NET & Hussain, D2000-1214 (WIPO Nov. 26, 2000) (finding “that on the evidence provided by the Complainant and in the absence of any submissions from the Respondents, that the Complainant has established that (i) the Respondents are not using and have not used, or are not demonstrating and have not demonstrated, an intent to use the said domain name in connection with a bona fide offering of goods or services; (ii) the Respondents are not and have not been commonly known by the said domain name; and (iii) the Respondents are not making legitimate noncommercial or fair use of the said domain name, without intending to mislead and divert consumers or to tarnish Complainant’s <THE BODY SHOP> trademark and service mark”).
Furthermore, the Panel may find that Respondent has no rights or legitimate interests in the disputed domain name where Respondent made no use of the domain name other than to offer it for sale. See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit); see also Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “…merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied, and Respondent has no rights or legitimate interests in respect to the disputed domain names.
Registration and Use in Bad Faith
Respondent’s offer to sell the disputed domain name supports a finding of bad faith. See Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell the domain name at issue to Complainant was evidence of bad faith).
Further, Respondent’s history of “warehousing” domain names of famous marks is evidence of bad faith. See Logica plc & Logica UK Ltd. v. CPIC Net, D2000-1566 (WIPO Jan. 17, 2001) (noting that Syed Hussain, d/b/a CPIC Net registered over fifty domain names including well-known business names); see also Australian Stock Exch. v. Cmty. Internet (Australia), D2000-1384 (WIPO Nov. 30, 2000) (finding bad faith under Policy paragraph 4(b)(ii) where Respondent registered multiple infringing domain names containing the trademarks or service marks of other widely known Australian businesses).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three of the required elements under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.
Accordingly, it is Ordered that the <footlockerinc.com> domain name be transferred from Respondent to Complainant.
James P. Buchele, Panelist
Dated : December 7, 2001
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