Foot Locker Retail, Inc. v. Phil Adams
Claim Number: FA0209000124858
PARTIES
Complainant
is Foot Locker Retail, Inc, New
York, NY, USA (“Complainant”) represented by Melissa L. Klipp, of Drinker
Biddle & Shanley LLP.
Respondent is Phil Adams,
Oakville, ON, CANADA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <womensfootlocker.com>,
registered with eNom, 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.
James
A. Crary as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on September 10, 2002; the Forum received a hard copy of the
Complaint on September 10, 2002.
On
September 12, 2002, eNom, Inc. confirmed by e-mail to the Forum that the domain
name <womensfootlocker.com> is
registered with eNom, Inc. and that Respondent is the current registrant of the
name. eNom, Inc. has verified that Respondent is bound by the eNom, 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
September 17, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of October 7, 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@womensfootlocker.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
October 23, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed James A. Crary 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 Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant’s Submission makes the
following assertions:
1. Respondent’s <womensfootlocker.com> domain name is confusingly similar to Complainant’s registered FOOT
LOCKER and LADY FOOT LOCKER family of marks.
2. Respondent does
not have any rights or legitimate interests in the <womensfootlocker.com> domain name.
3. Respondent
registered and used the <womensfootlocker.com> domain name in
bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant has established itself as a
leading retailer in sporting goods, both nationally and internationally, under
its registered FOOT LOCKER and LADY FOOT LOCKER family of marks. On November 1,
2001, Complainant changed its legal name from Venator Group Retail, Inc. to
Foot Locker Retail, Inc. Complainant registered its FOOT LOCKER and LADY FOOT
LOCKER marks with the United States Patent and Trademark Office (“USPTO”) over
two decades ago. Variations of Complainant’s marks have been listed with the
Principal Register of the USPTO, and Complainant has registered its mark in
over thirty countries worldwide.
In addition, Complainant registered the
service marks FOOTLOCKER.COM (U.S. Reg. No. 2554892) and LADYFOOTLOCKER.COM
(U.S. Reg. No. 2554889) with the Principal Register of the USPTO on April 2,
2002, filing for these registrations on April 3, 2000. Along with these two
registered marks and associated domain names, Complainant operates several
other websites, including sites at <foot-locker.com>, <efootlocker.com>,
and <worldfootlocker.com>.
Respondent registered its <womensfootlocker.com> domain
name on May 17, 2002. Currently, Respondent’s domain name resolves to a page
that invites users to search the Web using Overture and has a text box for
users to type in their query. The site also includes a set of twelve categories
of links to choose from that redirect users to websites related to the category
chosen. Categories available include “Travel”, “Socialize”, “Entertainment”,
“The Unknown”, “Free Stuff”, and “Adult”. The “Adult” link specifically points
Internet users to <pornfree.org>, a pornographic website. In addition,
when a user attempts to close the browser window or attempts to leave the
website, a series of new pop-up windows appear, “mousetrapping” the user into
viewing various advertisements. Respondent has no connection or affiliation
with Complainant, and is neither licensed nor authorized to use the FOOT LOCKER
or LADY FOOT LOCKER family of marks for any purpose.
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 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 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 Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has rights; and
(2)
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 the
FOOT LOCKER and LADY FOOT LOCKER family
of marks through registration with the USPTO and subsequent continuous use of
the marks.
A Panel can
find confusing similarity when considering a domain name with characteristics
that consist of mere cosmetic differences between the name and the mark. The
addition of a generic word to a registered trademark, especially if that mark
is well known, is not a substantive alteration and fails to prevent a finding
of confusing similarity. 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 Complainant combined with a generic word or term); see
also 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”)
Respondent’s <womensfootlocker.com> domain name simply adds the generic term “womens” to Complainant’s FOOT
LOCKER and FOOTLOCKER.COM marks. Alternately, the domain name uses a synonym to
replace the word “lady” in Complainant’s LADY FOOT LOCKER and
LADYFOOTLOCKER.COM marks. In either case, the domain name is confusingly
similar to Complainant’s mark. See Space
Imaging LLC v. Brownwell, AF-0298
(eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s
domain name combines Complainant’s mark with a generic term that has an obvious
relationship to Complainant’s business); see also Brown &
Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5,
2001) (finding that the <hoylecasino.net> domain name is confusingly
similar to Complainant’s HOYLE mark, and that the addition of “casino,” a
generic word describing the type of business in which Complainant is engaged,
does not take the disputed domain name out of the realm of confusing similarity).
Furthermore,
as spaces are impermissible in domain name registrations and a generic
top-level domain (such as “.com”) is required for every domain name, neither of
these differences have any effect on whether Respondent’s domain name is
confusingly similar to Complainant’s mark. 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”); see also Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top-level of the domain name
such as “.net” or “.com” does not affect the domain name for the purpose of
determining whether it is identical or confusingly similar). Respondent’s
elimination of the spaces from the FOOT LOCKER mark and the addition of “.com” after its domain name are
inconsequential when ascertaining the existence of confusing similarity.
Moreover, even these slight differences are absent when Respondent’s domain
name is compared to Complainant’s registered FOOTLOCKER.COM and
LADYFOOTLOCKER.COM marks.
Accordingly, the Panel finds that the <womensfootlocker.com> domain name is confusingly similar to
Complainant’s registered mark under Policy ¶ 4(a)(i).
Rights or Legitimate Interests
The burden of proving a lack of rights or
legitimate interests in a domain name rests initially upon Complainant. Under
Policy ¶¶ 4(c)(i-iii), Respondent can rely on an offering of bona fide goods or
services connected with the disputed domain name, the fact that it has been
commonly known by the domain name, or that it is making a legitimate
noncommercial or fair use of the domain name to demonstrate a right or
legitimate interest in a domain name. If Complainant rebuts each of these
elements, it has satisfied its burden by successfully addressing any of the
specified claims Respondent could make under Policy ¶¶ 4(c)(i-iii), therefore
shifting the burden to Respondent. 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).
Complainant shows that Respondent is
using its <womensfootlocker.com> domain name in connection with
neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use, both examples of rights and legitimate interests
under Policy ¶¶ 4(c)(i) and (iii). Respondent’s sole use of its domain name is
to provide a forum for a series of unrelated hyperlinks and gain commercial
advantage via “pop up” advertisements, neither a bona fide offering of goods or
services nor a reflection of a legitimate interest in the domain name. 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 Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9,
2000) (finding no legitimate use when Respondent was diverting consumers to its
own website by using Complainant’s trademarks); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding
that, because Respondent's sole purpose in selecting the domain names was to
cause confusion with Complainant's website and marks, it's use of the names was
not in connection with the offering of goods or services or any other fair
use).
Furthermore, Complainant has not licensed
Respondent to use its mark and can find no data supporting the proposition that
Respondent is commonly known by the domain name. In fact, due to the general
popularity of the FOOT LOCKER and LADY FOOT LOCKER marks, it is doubtful that
any entity could be commonly known by Complainant’s mark. See U-Haul Int’l.,
Inc. v. Steven Freed, FA 103878 (Nat. Arb. Forum Mar. 1, 2002) (as
Complainant has held rights to U-HAUL for nearly forty years, it is difficult
to imagine that another entity could possibly be known by any of the domain
names in dispute other than Complainant); 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). These showings by
Complainant, following the criteria outlined in Policy ¶¶ 4(c)(i-iii),
successfully address any claims Respondent could make under the Policy, thus
adequately meeting its burden of demonstrating Respondent’s lack of rights and
legitimate interest in the domain name.
Once a complainant has successfully
presented its prima facie case illustrating a respondent’s lack of
rights or legitimate interests in its domain name, the burden of demonstrating
rights and legitimate interests in the domain name shifts to the respondent.
Respondent submitted nothing to the Panel
in response to this proceeding. In these circumstances Respondent’s failure to
affirmatively demonstrate any rights or legitimate interests in its domain name
results in a finding for Complainant. See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000)
(finding that Respondent has no rights or legitimate interests in the domain
name because Respondent never submitted a Response nor provided the Panel with
evidence to suggest otherwise); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc.,
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 did not come forward to suggest any right or interest it may have
possessed).
The Panel finds that Respondent does not
have any rights or legitimate interests in the domain name under Policy ¶
4(a)(ii).
Registration and Use in Bad Faith
In determining whether bad faith use and
registration has occurred, the Panel will take many factors into consideration
before coming to a conclusion of bad faith use and registration on the part of
Respondent. 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”).
A registered trademark listed on the
Principal Register of the USPTO operates as constructive notice to the existence
of a mark. It is evidence that a domain has been registered and used in bad
faith when a respondent registers a domain name that is confusingly similar to
a trademark despite actual or constructive notice of the mark. See U-Haul
Int’l., Inc. v. Steven Freed, FA 103878 (Nat. Arb. Forum Mar. 1, 2002)
(because of the fame attained by Complainant’s mark, it can be presumed that
Respondent knew of U-HAUL before registering the disputed domain names); 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).
Similarly, Policy ¶ 4(b)(iv) illustrates
an example of bad faith use and registration when dealing with a popular mark.
The Policy states that when a domain name is used to intentionally attempt to
attract, “for commercial gain, Internet users to [Respondent’s] web site…by
creating a likelihood of confusion with the complainant’s mark as to the
source, sponsorship, affiliation, or endorsement of [Respondent’s] web site” it
is an example of bad faith use and registration. Taken together, Respondent’s
use of a registered mark to divert Internet traffic to a website unrelated to
and unauthorized by the holder of the mark evidences bad faith use and
registration. See State Farm Mut. Auto.
Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding
that Respondent registered the domain name <statefarmnews.com> in bad
faith because Respondent intended to use Complainant’s marks to attract the
public to the website without permission from Complainant); see also eBay, Inc v. Progressive Life Awareness
Network, D2000-0068 (WIPO Mar. 16, 2001) (finding bad faith where
Respondent is taking advantage of the recognition that eBay has created for its
mark and therefore profiting by diverting users seeking the eBay website to
Respondent’s site).
Evidence of bad faith use is even
stronger when Respondent’s diversion includes links to pornographic materials
that could tarnish Complainant’s mark. See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000)
(finding bad faith where Respondent linked the domain name in question to
websites displaying banner advertisements and pornographic material).
In this dispute, Respondent registered
its <womensfootlocker.com> domain name on May 17, 2002, over a
month after Complainant had registered its FOOTLOCKER.COM and
LADYFOOTLOCKER.COM service marks, and decades after the registration of the
FOOT LOCKER and LADY FOOT LOCKER trademarks. Respondent’s use of Complainant’s
registered mark in its domain name is therefore an action that evidences bad
faith registration. Respondent’s use of Complainant’s mark for commercial gain
via “pop up” advertisements and “mousetrapping” users into viewing multiple
advertisements also indicates bad faith. Compounding these examples is the fact
that one of Respondent’s links directs Internet users to pornographic material,
a sign of bad faith use.
The Panel finds that Respondent both
registered and used its domain name in bad faith, and Policy ¶ 4(a)(iii) has
been satisfied.
DECISION
Having established all three elements
under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <womensfootlocker.com>
domain name be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: November 4, 2002
Click Here to
return to the main Domain Decisions Page.
Click
Here to return to our Home Page