Foot Locker, Inc. v. Dotsan a/k/a R.S. Potdar
Claim Number: FA0208000117864
Complainant is Foot Locker, Inc., New York, NY, USA (“Complainant”) represented by Melissa L. Klipp, of Drinker Biddle & Shanley LLP. Respondent is Dotsan, Mumbai, INDIA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ladysfootlocker.com>, registered with Bulkregister.com, 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 August 2, 2002; the Forum received a hard copy of the Complaint on August 5, 2002.
On August 5, 2002, Bulkregister.com, Inc. confirmed by e-mail to the Forum that the domain name <ladysfootlocker.com> is registered with Bulkregister.com, Inc. and that Respondent is the current registrant of the name. Bulkregister.com, Inc. has verified that Respondent is bound by the Bulkregister.com, 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 August 7, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 27, 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 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 September 16, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant’s Submission makes the following assertions:
1. Respondent’s <ladysfootlocker.com> domain name is confusingly similar to Complainant’s registered LADY FOOT LOCKER and LADYFOOTLOCKER.COM marks.
2. Respondent does not have any rights or legitimate interests in the <ladysfootlocker.com> domain name.
3. Respondent registered and used the <ladysfootlocker.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant holds numerous registrations incorporating variations of its FOOT LOCKER mark. More specifically, Complainant owns Reg. No. 1,376,373 for its LADY FOOT LOCKER mark registered with the U.S. Patent and Trademark Office (“USPTO”) on December 17, 1985. Complainant also registered its LADYFOOTLOCKER.COM mark, as reflected on the Principal Register of the USPTO on April 2, 2002 as Reg. No. 2,554,889.
Since 1982, Complainant’s distinctive and famous LADY FOOT LOCKER mark has been used in connection with the sale and advertisement of athletic footwear, equipment and apparel. Complainant is the world’s leading “multi-channel retailer of athletic footwear and apparel,” and operates approximately 2,000 retail stores internationally bearing the FOOT LOCKER mark. Complainant also uses the LADY FOOT LOCKER mark exclusively in its operation of approximately 600 retail stores worldwide.
Complainant maintains a substantial presence on the Internet. Complainant provides international online ordering for its products offered under the FOOTLOCKER.COM mark. In addition, Complainant operates several websites using the FOOT LOCKER trademark, and variations thereof, including: <footlocker.com>, <foot-locker.com>, <efootlocker.com>, <ladyfootlocker.com> and <worldfootlocker.com>.
Complainant’s 2001 Internet sales were in excess of over $100 million. Complainant has invested billions of dollars into promoting the FOOT LOCKER family of marks, and building its corresponding reputation, goodwill and brand recognition. Because of Complainant’s extensive advertising campaign and significant international presence, the consuming public has come to identify the FOOT LOCKER family of marks with Complainant and its athletic-related accessories.
Respondent registered the <ladysfootlocker.com> domain name on October 24, 2001. Currently, Respondent’s domain name resolves to a pop-up screen that appears on the attached webpage that states, “CONGRATULATIONS! YOU’VE WON A VIRTUAL REALITY CASINO.” Complainant’s investigation indicates that after clicking on the “OK” placed on the screen, a browser is linked and “mousetrapped” to various online casinos, such as, <luckycasino4u.com> and <digforgold.com>. Respondent has no connection or affiliation with Complainant, and is not licensed or authorized to use the LADY FOOT LOCKER mark for any purpose.
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 rights in the LADY FOOT LOCKER and LADYFOOTLOCKER.COM marks through registration with the USPTO and subsequent continuous use of the marks.
Respondent’s <ladysfootlocker.com> domain name is confusingly similar to Complainant’s LADY FOOT LOCKER and LADYFOOTLOCKER.COM marks. Respondent’s domain name is identical to Complainant’s LADYFOOTLOCKER.COM mark but for the inconsequential addition of the letter “s” to Complainant’s LADY portion of its mark. Respondent incorporates Complainant’s entire mark in its domain name. Given the fame of Complainant’s marks and Respondent’s purported use of the domain name, Respondent’s introduction of the letter “s” represents the deliberate insertion of a common typographical error. The mere addition of the letter “s” does not avoid a finding of confusing similarity under Policy ¶ 4(a)(i), especially when the domain name reflects a famous mark. See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Nat’l Geographic Soc. v. Stoneybrook Inv., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to Complainant’s “National Geographic” mark).
Furthermore, Respondent’s domain name deviates from Complainant’s FOOT LOCKER mark in other insubstantial ways. Spaces are impermissible in domain name registrations, and generic top-level domains, such as “.com,” are required. Because both changes represent mandatory policies and limitations on domain name registrants, their presence has no effect on an identical or confusingly similar standard. See Hannover Ruckversicherungs-AG v. 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.
As stated, Respondent failed to submit a Response in this proceeding. Because Complainant’s assertions are uncontested, it is proper for the Panel to accept Complainant’s reasonable contentions as true. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a Response, it is appropriate to accept as true all allegations of the Complaint”); see also Vertical Solutions Mgmt., Inc. v. Webnet-Marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).
Because Complainant submitted a prima facie case, the burden of demonstrating rights and legitimate interests effectively shifts to Respondent. Respondent failed to submit any evidence or information supporting a finding in its favor to the Panel, thereby failing to invoke any circumstance which could demonstrate rights or legitimate interests in the domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interest in the domain name because Respondent never submitted a Response nor provided the Panel with evidence to suggest otherwise).
Complainant has produced unrefuted evidence that indicates Respondent used the subject domain name to redirect unsuspecting Internet users to gambling websites, located at <luckycasino4u.com> and <digforgold.com>. Respondent deliberately registered a domain name that incorporates a famous mark in order to profit from the Internet traffic that unintentionally arrives at its “Casinos, Sex and Sports” websites. However, Complainant’s Submission and accompanying evidence only support the finding that Respondent was linking the <ladysfootlocker.com> domain name to gambling websites, because there is not enough evidence to infer that Respondent was involved in the pornography business or some other nefarious activity. The Panel still finds that Complainant has surpassed the threshold of required proof in showing that Respondent lacks rights in the domain name. Respondent’s tarnishing of Complainant’s LADY FOOT LOCKER mark and intentional diversionary use of the infringing domain name fails to demonstrate rights or legitimate interests in the <ladysfootlocker.com> domain name pursuant to Policy ¶¶ 4(c)(i) and (iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Société des Bains de Mer v. Int’l Lotteries, D2000-1326 (WIPO Jan. 8, 2001) (finding no rights or legitimate interests where Respondent used the <casinomontecarlo.com> and <montecarlocasinos.com> domain names in connection with an online gambling website).
There is no evidence before the Panel that would suggest Respondent is commonly known by the <ladysfootlocker.com> domain name or the “ladysfootlocker” second-level domain pursuant to Policy ¶ 4(c)(ii). On the contrary, Complainant’s uncontested evidence indicates Respondent’s primary enterprise is gambling, an industry with no apparent connection to Complainant’s LADY FOOT LOCKER mark. The fame and reputation that accompanies Complainant’s FOOT LOCKER family of marks creates the presumption that Respondent is not commonly referred to, or legitimately known, by a domain name that is confusingly similar to one of Complainant’s marks. See 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); see also 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).
Accordingly, the Panel finds that Respondent does not have any rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii).
Circumstances indicate that Respondent had previous knowledge of Complainant’s FOOT LOCKER family of marks prior to seeking registration of the <ladysfootlocker.com> domain name. Complainant has conducted extensive advertising campaigns under its LADY FOOT LOCKER mark for nearly two decades, and maintains a significant international presence. Furthermore, Respondent’s use of the domain name has no connection to Complainant’s mark, besides the obvious attempt to deliberately confuse Internet users regarding the sponsorship of the website. Although the Policy lists four circumstances that are considered to be evidence of bad faith registration and use, the list is non-exhaustive, and is meant to be illustrative rather than exclusive. When considering the “totality of circumstances” surrounding the present dispute, it is evident that Respondent registered the disputed domain name despite its knowledge of Complainant’s preexisting rights. Such action constitutes bad faith registration under Policy ¶ 4(a)(iii). See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence); see also Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name).
Respondent’s bad faith use of the domain name is illustrated by Respondent’s intentional tarnishing of the goodwill associated with Complainant’s LADY FOOT LOCKER mark. Complainant’s Submission includes unrefuted evidence that Respondent originally linked the <ladysfootlocker.com> domain name to a gambling website, which utilizes underhanded techniques, such as “mousetrapping,” to maintain or imprison Internet user’s interest. Inevitably, a percentage of Internet users will believe Complainant is involved in the maintenance of Respondent’s website because of the confusingly similar domain name and its perceived connection with Complainant’s product. Thus, Respondent’s exploitation of the LADY FOOT LOCKER mark tarnishes Complainant’s reputation, and represents bad faith use under Policy ¶ 4(b)(iv). See ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where the Respondent linked the domain name to another website <iwin.com>, presumably, Respondent received a portion of the advertising revenue from site by directing Internet traffic to the site, thus using a domain name to attract Internet users, for commercial gain); see also Encyclopedia Britannica Inc. v. Shedon.com, D2000-0753 (WIPO Sept. 6, 2000) (finding that the Respondent violated Policy ¶ 4(b)(iv) by using the domain name <britannnica.com> to hyperlink to a gambling site).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <ladysfootlocker.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: September 19, 2002
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