Star Management Services,
LLC v. Foot Focus Specialities
Claim Number: FA0708001055130
PARTIES
Complainant is Star Management Services, LLC (“Complainant”), represented by Mitchell
M. Musial, II, of Mitchell M. Musial II, PLLC, 6960
Abbott Terrace, West Bloomfield, MI 48323. Respondent is Foot Focus Specialities (“Respondent”), Siona,Shop No.1,Vivekanand Nagar,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <footfocus.com>, registered with Lead
Networks Domains Pvt. Ltd.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On
On September 5, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of September 25, 2007 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@footfocus.com by
e-mail.
A timely Response was received on
Complainant submitted an Additional Submission, after the deadline for
submissions, which was deemed deficient and not considered by the Panel.
On
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following assertions:
1. Respondent’s <footfocus.com> domain name are identical to Complainant’s FOOT FOCUS mark.
2. Respondent does not have any rights or legitimate interests in the <footfocus.com> domain name.
3. Respondent registered and used the <footfocus.com> domain name in bad faith.
B. Respondent makes the following assertions:
1.
Complainant
does not control the mark FOOT FOCUS in all classes and all countries.
2.
Respondent
intended to do business under the <footfocus.com>
domain name.
3.
Respondent filed a Trademark application for
FOOT FOCUS before Complainant filed this UDRP Complaint.
FINDINGS
Complainant holds a Trademark registered with
the U. S. Patent and Trademark Office on
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
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.
Complainant
asserts rights in the FOOT FOCUS mark by virtue of its trademark registration
with the United States Patent and Trademark Office (“USPTO”) for the mark (Reg.
No. 2,911,728 issued
Complainant’s rights in the FOOT FOCUS mark dates
back to the application filing date for Complainant’s trademark application,
which is
The
<footfocus.com> domain
name is identical to Complainant’s FOOT FOCUS mark under Policy ¶ 4(a)(i). The disputed domain name incorporates
Complainant’s mark in its entirety, adding only a generic top-level domain
(“gTLD”) to the end of the mark. This
modification is insufficient to distinguish the dispute domain name from
Complainant’s mark. See W. Union Holdings, Inc. v.
Topiwala, D2005-0945 (WIPO Oct. 20, 2005) (finding <wuib.com>
identical to the complainant’s mark because the generic top-level domain (gTLD)
“.com” after the name WUIB is part of the Internet address and does not add
source-identifying significance); see
also
Respondent
contends that Complainant’s rights in the FOOT FOCUS mark are applicable in the
The
Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); 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).
Complainant contends that the <footfocus.com> domain name has been used to display hyperlinks to various unrelated third-party websites, for which Respondent presumably owned click-through fees. The Panels find that such use is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel also finds
that Respondent is not commonly known by the disputed domain name under Policy
¶ 4(c)(ii), despite Respondent’s WHOIS information as “Foot Focus Specialities.”
Complainant contends that Respondent was not listed as “Foot Focus
Specialities” until after the filing of the orginial Complaint in this case,
and there is no other evidence to indicate that Respondent is or has actually
conducted business under “Foot Focus Specialties” or under the <footfocus.com> domain name. Respondent asserted that it has made
“demonstrable preparations to use the domain name”, but submitted no evidence
to that effect. Complainant also states
that Respondent is not authorized to use its FOOT FOCUS mark in any way. See Yoga Works, Inc. v. Arpita, FA
155461 (Nat. Arb. Forum June 17, 2003) (finding
that the respondent was not “commonly known by” the <shantiyogaworks.com>
domain name despite listing its name as “Shanti Yoga Works” in its WHOIS
contact information because there was “no
affirmative evidence before the Panel that the respondent was ever ‘commonly
known by’ the disputed domain name prior to its registration of the disputed
domain name”); see also Starwood
Hotels & Resorts Worldwide, Inc. v. SRW Hotels Worldwide, FA 214416
(Nat. Arb. Forum Jan. 12, 2004) (“Though Respondent’s WHOIS information lists
Respondent as ‘SRW Hotels Worldwide,’ part of which constitutes the disputed
domain name, there is no evidence before the Panel that Respondent was actually
commonly known by that name.”).
Additionally, Complainant asserts that Respondent has attempted to sell the <footfocus.com> domain name through the use of the <sedo.com> website. Such use is also indicative of a lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
The
Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
This Panel is not persuaded by
Respondent’s argument that it registered the <footfocus.com> domain
name and its trademark application in
Complainant
contends that Respondent has attempted to sell the <footfocus.com> domain name through the <sedo.com>
website for $2,325, an amount in excess of Respondent’s out-of-pocket
costs. Though the Respondent denies
this, the Panel finds it likely to be true since the <footfocus.com> has never been used legitimately by Respondent,
and since it is parked with Sedo.com, which offers domain sales services. This is evidence of bad faith registration
and use under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum
Respondent’s
previous use of the disputed domain name to operate a website to display
hyperlinks to various third-party websites was for Respondent’s own commercial
benefit through the accrual of click-through fees. The Panel finds that the <footfocus.com> domain name is
capable of creating confusion as to Complainant’s source, sponsorship,
affiliation or endorsement with the disputed domain name and corresponding
website, and therefore finds bad faith registration and use under Policy ¶
4(b)(iv). See AOL
LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21,
2006) (finding that the respondent took advantage of the confusing similarity
between the <theotheraol.com> and <theotheraol.net> domain names
and the complainant’s AOL mark, which indicates bad faith registration and use
pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat.
Arb. Forum
The above factors, combined with Respondent’s current passive holding and evidence of false contact information submitted by Respondent, cause the Panel to find that Complainant has satisfied Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <footfocus.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 15, 2007
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