DECISION

 

Foot Locker, Inc. v Tic-Tock

Claim Number: FA0112000103128

 

PARTIES

Complainant is Foot Locker, Inc., New York, NY (“Complainant”) represented by Melissa L. Klipp, of Drinker Biddle & Shanley LLP.  Respondent is Tic-Tock, Los Angeles, CA (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <footlocker.ws>, registered with Global Domains International.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 17, 2001; the Forum received a hard copy of the Complaint on December 18, 2001.

 

On December 18, 2001, Global Domains International confirmed by e-mail to the Forum that the domain name <footlocker.ws> is registered with Global Domains International and that Respondent is the current registrant of the name.  Global Domains International has verified that Respondent is bound by the Global Domains International 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 December 19, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 8, 2002 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 postmaster@footlocker.ws 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 January 28, 2002, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from the Respondent to the Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

The disputed domain name <footlocker.ws> is identical to FOOT LOCKER, a registered mark in which Complainant holds rights.

 

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.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

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.  Complainant also holds rights in several other marks incorporating the words FOOT LOCKER, such as FOOTLOCKER.COM, LADY FOOT LOCKER, and KIDS FOOT LOCKER.

 

Complainant asserts that it has invested billions of dollars in the promotion of its FOOT LOCKER marks and in the creation of goodwill and brand recognition.  Complainant further asserts that its FOOT LOCKER mark has achieved incontestable status.

 

Respondent registered the disputed domain name on March 13, 2000.  There is no record that Respondent has made any use of the domain name.  According to Complainant, Respondent indicated in a telephone conversation that it had no intent to use the disputed domain name and offered to sell it to Complainant for $400.

 

DISCUSSION

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 and draw such inferences it considers appropriate pursuant to paragraph 14(b) 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; and

(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 its rights in the FOOT LOCKER mark through registration with the U.S. Patent and Trademark Office.  The disputed domain name is identical to that mark.  See The Fed’n of Gay Games, Inc. v. Hodgson & Scanlon, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to Complainant's registered trademark GAY GAMES); see also Little Six, Inc., v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net> is identical to Complainant’s MYSTIC LAKE trademark and service mark).  The inclusion of “.ws” in the domain name and omission of the space between FOOT and LOCKER are immaterial when determining whether a mark and domain name are identical.  See Hannover Ruckversicherungs-Aktiengesellschaft v. Hyungki Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).

 

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

Complainant has established its rights to and interests in the FOOT LOCKER mark.  Because the Respondent has not provided any evidence to suggest it has rights or interests in the disputed domain name, the Panel may presume no such rights or interests exist.  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).

 

The disputed domain name was registered nearly two years ago but Respondent has made no use of it in that time.  Such nonuse constitutes passive holding and cannot establish a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See American 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 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).

 

Further, Respondent is only known to this Panel as Tic-Tock; there is no evidence to suggest Respondent is commonly known by “footlocker” or “footlocker.ws” pursuant to Policy ¶ 4(c)(ii).  See Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where Respondent advanced no basis on which the Panel could conclude that it had a right or legitimate interest in the domain names, and where no use of the domain names had been established); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. & D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent had not come forward to suggest any right or interest it may have possessed).

 

The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied, and that Respondent has no rights or legitimate interests in respect of the disputed domain name.

 

Registration and Use in Bad Faith

Complainant’s FOOT LOCKER mark is well known in the United States, and Complainant asserts it has achieved incontestable status.  As such, Respondent was aware or should have been aware of the mark’s existence when it registered the disputed domain name.  See Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants’ famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time it registered the disputed domain name; such knowledge constituted evidence of bad faith); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

 

By registering a mark that was identical to Complainant’s well known mark, Respondent exhibited bad faith within the meaning of the Policy.  See America Online Inc. v. Shenzhen JZT Computer Software Co. Ltd, D2000-0809 (WIPO Sept. 6, 2000) (finding that <gameicq.com> and <gameicq.net> are obviously connected with services provided with the world-wide business of ICQ and that the use of the domain names by someone with no connection to the product suggests opportunistic bad faith); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the world-wide prominence of the mark and thus Respondent registered the domain name in bad faith).

 

Further, Respondent’s offer to sell the disputed domain name in excess of its out-of-pocket expenses demonstrates bad faith under Policy ¶ 4(b)(i).  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); see also Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the Respondent demonstrated bad faith when he requested monetary compensation beyond out of pocket costs in exchange for the registered domain name).

 

Finally, Respondent’s passive holding of the domain name for nearly two years provides additional evidence of bad faith registration and use.  See Alitalia - Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the Respondent made no use of the domain name in question and there were no other indications that the Respondent could have registered and used the domain name in question for a non-infringing purpose); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfied the requirement of ¶ 4(a)(iii) of the Policy).

 

Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied. 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.

 

Accordingly, it is Ordered that the <footlocker.ws> domain name be transferred from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

 

Dated: February 1, 2002