Venator Group Retail Inc v. Michele Dinoia d/b/a SZK.com
Claim Number: FA0110000101506
Complainant is Venator Group Retail, Inc., New York, NY (“Complainant”) represented by Melissa L. Klipp, of Drinker, Biddle & Shanley, LLP. Respondent is Michele Dinoia SZK.com, Largo, FL (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwfootlocker.com>, registered with Dotster, Inc.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 26, 2001; the Forum received a hard copy of the Complaint on October 29, 2001.
On October 31, 2001, Dotster, Inc. confirmed by e-mail to the Forum that the domain name <wwwfootlocker.com> is registered with Dotster, Inc. and that Respondent is the current registrant of the name. Dotster, Inc. has verified that Respondent is bound by the Dotster, Inc. 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 31, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 20, 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 December 6, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 disputed domain name is confusingly similar to Complainant’s FOOT LOCKER family of marks.
Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
No Response was received.
Since 1976, Complainant has used its famous FOOT LOCKER mark in connection with the sale of athletic footwear, apparel and equipment. Complainant uses its FOOT LOCKER mark in connection with the operation of approximately 3,600 retail stores worldwide, bearing the “Foot Locker” name. Complainant registered the FOOT LOCKER mark on the Principal Register of the United States Patent and Trademark Office on November 20, 1979, as Registration No. 1,126,857. Furthermore, Complainant maintains a significant presence on the Internet, and has registered various marks on the Principal Register containing its FOOT LOCKER mark, and variations thereof, combined with the “.com” gTLD extension, including FOOTLOCKER.COM.
Respondent registered the <wwwfootlocker.com> domain name on August 8, 2001. Respondent has yet to make any use of the disptued domain name.
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 its registration on the Principal Register. Furthermore, the <wwwfootlocker.com> domain name is confusingly similar to Complainant[‘s FOOT LOCKER mark, as it merely adds the letters “www,” a common top-level designator for domain names, to the beginning of Complainant’s mark. Such registrations have been found to make a disputed domain name confusingly similar. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is confusingly similar to Complainant’s registered trademark “Bank of America” because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has failed to submit a Response in this proceeding. As such, it is well established that a panel may presume that a Respondent has no rights or legitimate interests in respect of a disputed domain name. 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).
Furthermore, there is no evidence that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services, nor is Respondent commonly known by the disputed domain name, or making a noncommercial or legitimate fair use of the domain name. Such a lack of evidence supports a finding that Respondent has no rights or legitimate interests in respect of the <wwwfootlocker.com> domain name. See 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”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied and Respondent has no rights or legitimate interests in respect of the disputed domain name.
Registration and Use in Bad Faith
Respondent’s registration of a domain name which has an obvious connection with Complainant’s famous FOOT LOCKER mark, combined with Respondent’s addition of the common “www” top-level designator is evidence of bad faith registration and use, as the disputed domain name certainly is a deliberate attempt to attract Internet users who intend to reach Complainant’s website, located at <www.footlocker.com>. See KnightRidder.com/Knight Publishing Co. v. Baltic Consultants Ltd., FA 96944 (Nat. Arb. Forum Apr. 30, 2001) (finding that the practice of adding “www” to a mark is an example of typosquatting and supports a finding of bad faith pursuant to the Policy ¶ 4(a)(iii)); see also Bayer Aktiengesellschaft v. Yongho Ko, D2001-0205 (WIPO Apr. 6, 2001) (finding bad faith because the “addition of the letters ‘www’ to the Complainant’s mark must on the balance of probabilities be considered to be a deliberate attempt to exploit user’s typographical mistakes when seeking Complainant’s web site”).
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 <wwwfootlocker.com> domain name be transferred from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: December 10, 2001
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