Venator Group
Retail, Inc. v. c a/k/a martin.green@shsing.com.sg c/o Steve Procter
Claim Number: FA0110000100680
PARTIES
Complainant is Venator Group Retail, Inc., New York, NY (“Complainant”) represented by Robert M. Leonard, of Drinker Biddle & Shanley LLP. Respondent is c a/k/a martin.green@shsing.com.sg c/o Steve Procter, Singapore (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAMES
The domain names at issue are <jivefootlocker.com> and <jivefootlocker.net>, registered with CORE.
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. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 15, 2001; the Forum received a hard copy of the Complaint on October 16, 2001.
On October 23, 2001, CORE confirmed by e-mail to the Forum that the domain names <jivefootlocker.com> and <jivefootlocker.net> are registered with CORE and that Respondent is the current registrant of the name. CORE has verified that Respondent is bound by the CORE 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 October 23, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 12, 2001 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@jivefootlocker.com and postmaster@jivefootlocker.net 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 November 27, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody 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
Complainant owns and holds the rights to numerous marks containing the “FOOT LOCKER” name, which are used in connection with athletic footwear, equipment, and apparel. The FOOT LOCKER® mark has been registered in the United States with the Patent and Trademark Office, and has reached “incontestable” status.
Since 1976, Complainant has used the distinctive “FOOT LOCKER” name and marks in connection with the sale and advertisement of athletic footwear, equipment, and apparel. Complainant also operates retail stores bearing the “FOOT LOCKER” name, including “FOOT LOCKER,” “LADY FOOT LOCKER,” and “KIDS FOOT LOCKER.”
Complainant also maintains a significant presence over the Internet. Complainant operates several websites using the FOOT LOCKER® marks, including: <footlocker.com>, <foot-locker.com>, <efootlocker.com> and <worldfootlocker.com.> Through Complainant’s longstanding use of the FOOT LOCKER® marks, the public has come to expect domain names and web addresses incorporating “FOOT LOCKER,” or variations thereof, to be owned by Complainant.
Complainant
has invested millions of dollars into promoting the “FOOT LOCKER” name and marks, and building Complainant’s reputation and goodwill.
Respondent's <jivefootlocker.com> and <jivefootlocker.net> domain names are confusingly similar to Complainant's FOOT LOCKER® mark.
Respondent has no rights or legitimate interests in the disputed domain names.
Respondent registered the disputed domain names in bad faith.
B. Respondent
No Response was received.
FINDINGS
Complainant’s FOOT LOCKER mark was registered with the Unites States
Patent and Trademark office on November 20, 1979, registration number 1126857.
On March 14, 2000,
Respondent registered the domain names <jivefootlocker.com>
and <jivefootlocker.net>.
Respondent has no connection or affiliation with the Complainant, and has received no license or consent, express or implied, to use the trademark in a domain name or in any other manner.
Upon typing in either of the domain names, the user is directed to the <easily.co.uk> website. The site provides fee-based domain name registration and hosting. The words “FOOT LOCKER” appear nowhere on the website, nor is Respondent known by any name incorporating the term “FOOT LOCKER.”
Respondent has
engaged in a pattern of registering domain names that combine the word “jive” with
other famous trademarks, including <jivenfl.com> and
<jivenfl.net>.
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.
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.
Identical and/or
Confusingly Similar
Respondent's <jivefootlocker.com> and <jivefootlocker.net> domain names are confusingly similar to Complainant's FOOT LOCKER mark because they merely add a generic term to the FOOT LOCKER mark. The addition of the term “jive” does not create a mark capable of defeating a claim of confusing similarity. See Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to Complainant’s BROADCOM mark); see also Quixtar Inv., Inc. v. Smithberger and QUIXTAR-IBO, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety the Complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied
Rights or
Legitimate Interests
Respondent has failed to come forward with a response and therefore it is presumed that Respondent has no rights or legitimate interests in the <jivefootlocker.com> and <jivefootlocker.net> 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).
Furthermore, when Respondent fails to submit a response the Panel is permitted to make all inferences in favor of Complainant. 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”).
There is no evidence on the record, and Respondent has not come forward to establish that it is commonly known by the <jivefootlocker.com> and <jivefootlocker.net> domain names pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent has 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 intentionally diverting Internet users to its website for its own commercial gain and is therefore not making legitimate noncommercial, or fair use of the disputed domain names pursuant to Policy ¶ 4(c)(iii) nor is such use bona fide under Policy ¶ 4(c)(i). See Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark); see also 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and
Use in Bad Faith
The <jivefootlocker.com> and <jivefootlocker.net> domain names are confusingly similar to Complainant's mark and an Internet user would likely believe that there is an affiliation between Respondent and Complainant. Registration of the confusingly similar domain name is evidence of bad faith. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).
Furthermore, because of the famous and distinctive nature of Complainant's FOOT LOCKER mark, Respondent is thought to have been on notice of the existence of Complainant's mark at the time Respondent registered the infringing <jivefootlocker.com> and <jivefootlocker.net> domain names. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration); see also Victoria's Secret et al 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 she registered the disputed domain name and such knowledge constitutes bad faith).
Respondent's use of Complainant's mark is a misappropriation of Complainant's goodwill. See National Rifle Ass'n. v. fredg.com, FA 95837 (Nat. Arb. Forum Nov. 30, 2000) (finding bad faith where Respondent registered the domain names “friendsofnra.com”, “friendsofnra.net”, and “friendsofnra.org” with the intention of using the domain names in connection with individual NRA fundraising, but without permission from Complainant to use the registered marks); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith where the Respondent attracted users to a website sponsored by the Respondent and created confusion with the Complainant’s mark as to the source, sponsorship, or affiliation of that website).
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 shall be hereby granted.
Accordingly, it is Ordered that the domain names <jivefootlocker.com> and <jivefootlocker.net> be transferred from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 3, 2001
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