Foot Locker, Inc. v. Blezin Widmaer
Claim Number: FA0205000113283
PARTIES
Complainant
is Foot Locker, Inc., New York, NY,
USA (“Complainant”) represented by Melissa
L. Klipp, of Drinker, Biddle &
Shanley LLP. Respondent is Blezin Widmaer, Montreuil, FRANCE
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <footlocker-inc.info>, <footlocker-inc.net>, <footlocker-inc.biz>, <foot-locker.net>, <lady-footlocker.com>, <kids-footlocker.com>, <baby-footlocker.com>, <men-footlocker.com>, <champs-sports.com>, <champs-sports.biz>, <champs-sports.net> and <champs-sports.org> registered with Verisign - Network Solutions, Inc.
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 May 7, 2002; the Forum received a hard copy of the Complaint
on May 8, 2002.
On
May 10, 2002, Verisign - Network Solutions, Inc. confirmed by e-mail to the
Forum that the domain names <footlocker-inc.info>, <footlocker-inc.net>,
<footlocker-inc.biz>, <foot-locker.net>, <lady-footlocker.com>, <kids-footlocker.com>, <baby-footlocker.com>, <men-footlocker.com>, <champs-sports.com>, <champs-sports.biz>, <champs-sports.net> and <champs-sports.org> are registered with Verisign - Network
Solutions, Inc. and that Respondent is the current registrant of the
names. Verisign - Network Solutions,
Inc. has verified that Respondent is bound by the Verisign - Network Solutions,
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
May 13, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 3,
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-inc.info, postmaster@footlocker-inc.net,
postmaster@footlocker-inc.biz, postmaster@foot-locker.net,
postmaster@lady-footlocker.com, postmaster@kids-footlocker.com,
postmaster@baby-footlocker.com, postmaster@men-footlocker.com,
postmaster@champs-sports.com, postmaster@champs-sports.biz,
postmaster@champs-sports.net and postmaster@champs-sports.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.
On
June 13, 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 names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s registered domain names are
confusingly similar to Complainant’s registered family of FOOT LOCKER marks.
2. Respondent has no rights or legitimate
interests in the disputed domain names.
3. Respondent registered and used the
disputed domain names in bad faith.
B. Respondent did not submit a Response.
FINDINGS
Complainant
owns numerous trademark registrations involving its famous FOOT
LOCKER family of trademarks. Complainant owns and
holds rights to the family of FOOT LOCKER marks, including, but not limited to:
FOOT LOCKER Reg. No. 1126857 registered in November 1979, KIDSFOOTLOCKER.COM
Reg. No. 2485367 registered June 2001, LADYFOOTLOCKER.COM Reg. No. 2554889
registered April 2002, and CHAMPS Reg. No. 1407127 registered August 1986.
Complainant has registered the FOOT LOCKER family of marks in over thirty countries
worldwide, including Respondent’s domicile, France. Complainant has used the
FOOT LOCKER family of famous marks in connection with the sale and
advertisement of athletic footwear, equipment and apparel since 1976.
Complainant uses the FOOT LOCKER family of marks in
connection with the operation of approximately 3,600 retail stores worldwide
bearing the FOOT LOCKER name, and approximately 600 retail stores bearing the
CHAMPS mark.
Complainant also maintains a significant presence
over the Internet. Complainant operates several websites using the FOOT LOCKER
family of trademarks, including: <footlocker.com>,
<foot-locker.com>, <ladyfootlocker.com>, and
<worldfootlocker.com>.
Respondent registered the various contested domain
names from November through December 2001. Presently, the domain names are not
used for any purpose and resolve to the “Lycos” default hosting page.
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.
Complainant has established its rights in
the FOOT LOCKER, LADYFOOTLOCKER, KIDSFOOTLOCKER and CHAMPS marks through
numerous registrations with the U.S. Patent and Trademark Office and other
authorized worldwide organizations, and continuous subsequent use since 1976.
Respondent’s <footlocker-inc.info>, <footlocker-inc.net>,
<footlocker-inc.biz>, <foot-locker.net>, <lady-footlocker.com>, <kids-footlocker.com>, <baby-footlocker.com>, <men-footlocker.com>, <champs-sports.com>, <champs-sports.biz>, <champs-sports.net> and <champs-sports.org> domain
names are confusingly similar to Complainant’s family of FOOTLOCKER marks.
The addition of
generic top-level domains is inconsequential when conducting a Policy ¶ 4(a)(i)
analysis. See Pomellato
S.P.A v. Tonetti,
D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to
Complainant’s mark because the generic top-level domain (gTLD) “.com” after the
name POMELLATO is not relevant).
Also, the addition of a generic word,
such as, “men,” “baby,” “lady,” “inc,” “kids,” or “sports,” fails to detract
from the overall impression of the domain names. The addition of generic words
is especially confusing where the generic words bear an obvious relationship to
Complainant’s business. See Arthur
Guinness Son & Co. (Dublin) Ltd. v.
Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity
where the domain name in dispute contains the identical mark of the Complainant
combined with a generic word or term); see also
Space Imaging LLC v. Brownwell, AF-0298
(eResolution Sept. 22, 2000) (finding confusing similarity where the
Respondent’s domain name combines the Complainant’s mark with a generic term
that has an obvious relationship to the Complainant’s business).
The addition
of punctuation, in this instance a hyphen, does not alter the fact that the Respondent’s
disputed domain names are confusingly similar to Complainant’s mark. See
Nintendo Of Am. Inc. v. This Domain Is For Sale, D2000-1197 (WIPO Nov. 1, 2000) (finding
<game-boy.com> identical and confusingly similar the Complainant’s GAME
BOY mark); see also Chernow
Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding
“that the use or absence of punctuation marks, such as hyphens, does not alter
the fact that a name is identical to a mark").
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
Because Respondent has not submitted a
Response in this matter, the Panel may presume it has no rights or legitimate
interests in respect of the disputed domain names. 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).
Given the popularity and notoriety of
Complainant’s family of FOOT LOCKER marks, it seems unlikely that Respondent
could have any rights or interests in domain names incorporating the family of
FOOT LOCKER marks. 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). Furthermore, Complainant has extensively
used its family of FOOT LOCKER marks since at least 1976. See CBS Broadcasting, Inc. v. LA-Twilight-Zone,
D2000-0397 (WIPO June 19, 2000) (finding that Respondent failed to demonstrate
any rights or legitimate interests in the <twilight-zone.net> domain name
since Complainant had been using the TWILIGHT ZONE mark since 1959).
Respondent is not known by its registered
domain names as required by Policy ¶ 4(c)(ii). Respondent is not a licensee or
authorized agent of Complainant. See Victoria’s
Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding
sufficient proof that Respondent was not commonly known by a domain name
confusingly similar to Complainant’s VICTORIA’S SECRET mark because of
Complainant’s well-established use of the mark); see also Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark).
Respondent has yet to develop a purpose
for the disputed domain names despite registering them in November/December
2001. Respondent’s inaction fails to demonstrate its rights to and legitimate
interests in the twelve disputed domain names under Policy ¶¶ 4(c)(i) and
(iii). See Am. 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 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).
The Panel finds that Respondent has no
rights or legitimate interests in respect of the disputed domain names and,
thus, Policy ¶ 4(a)(ii) has been satisfied.
Because of the famous nature of
Complainant’s family of FOOT LOCKER marks and their listing on the Principal
Register of the U.S. Patent and Trademark Office, Respondent is thought to have
been on constructive notice as to the existence of Complainant’s marks. Moreover,
Respondent’s choice of twelve confusingly similar variations of Complainant’s
famous marks supports a finding that Respondent was specifically targeting
Complainant’s products and famous marks, again showing knowledge as to their
existence. Respondent’s registration and use of the infringing domain names
despite constructive knowledge of Complainant’s marks represents bad faith
registration and use under Policy ¶ 4(a)(iii). See Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that
Respondent’s registration and use of an identical and/or confusingly similar
domain name was in bad faith where Complainant’s BEANIE BABIES mark was famous
and Respondent should have been aware of it); 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).
It can be inferred from Respondent’s
behavior that Respondent registered the twelve infringing domain names in order
to eventually commercially benefit from the fame associated with Complainant’s
marks. Respondent’s behavior demonstrates bad faith registration and use within
the meaning of Policy ¶ 4(b)(iv). See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum
Sept. 12, 2000) (finding bad faith where Respondent registered the domain name
<bigtex.net> to infringe on Complainant’s goodwill and attract Internet
users to Respondent’s website); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum
Aug. 21, 2000) (finding bad faith where the Respondent directed Internet users
seeking the Complainant’s site to its own website for commercial gain).
Lastly, Respondent registered twelve domain
names incorporating Complainant’s famous trademarks. Respondent’s registration
of multiple infringing domain names in a short period of time indicates an
intention to prevent the Complainant from using its mark and provides evidence
of bad faith conduct under Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000)
(finding that one instance of registration of several infringing domain names
satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Armstrong Holdings, Inc. v. JAZ Assoc.,
FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated
Policy ¶ 4(b)(ii) by registering multiple domain names which infringe upon
others’ famous and registered trademarks).
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-inc.info>, <footlocker-inc.net>, <footlocker-inc.biz>, <foot-locker.net>, <lady-footlocker.com>, <kids-footlocker.com>, <baby-footlocker.com>, <men-footlocker.com>, <champs-sports.com>, <champs-sports.biz>, <champs-sports.net> and <champs-sports.org> domain names be TRANSFERRED from
Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 17, 2002
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