Foot Locker Retail, Inc. v. yoyo.email et al.
Claim Number: FA1406001565344
Complainant: Foot Locker Retail, Inc. of New York, New York, United States of America; Complainant’s Representative: Kelley Drye & Warren LLP of New York, New York, United States of America.
Respondent: yoyo.email of Dunsatble [sic], International, GB; Respondent’s Representative: yoyo.email of Dunsatble [sic], International, United Kingdom.
REGISTRIES and REGISTRARS
Registries: Spring Madison, LLC
Registrars: GoDaddy.com, LLC
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Examiner in this proceeding.
Terry F. Peppard, as Examiner.
Complainant submitted: June 18, 2014
Commencement: June 19, 2014
Response Date: July 3, 2014
Having reviewed the communications record, the Examiner finds that the Nat-ional Arbitration Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
PRELIMINARY ISSUE: DEFICIENT RESPONSE
The Response filed by Respondent fails to follow the format prescribed by the URS Procedure. It also greatly exceeds the word count permitted by URS Procedure ¶ 5.4. Whether taken singly or together, these deficiencies would justify rejection of the Re-sponse in its entirety and treatment of Respondent as in default. We will nonetheless accept the deficient Response for whatever value it may have.
URS Procedure ¶ 1.2.6. requires Complainant to prove, by clear and convincing evidence, each of the following to obtain an order that a contested domain name should be suspended:
1. The registered domain name is identical or confusingly similar to
a mark for which Complainant holds a valid national or regional registration and that is in current use;
2. Registrant has no right to or legitimate interest in the domain name;
and
3. The same domain name was registered and is being used by Respondent in bad faith.
In its Complaint, Complainant shows that it holds a valid registration for the FOOT LOCKER trademark, Registry No. 1,126,857, registered November 20, 1979, in International Class 025 [athletic wear -- namely warm-up suits, jackets, t-shirts, sweatshirts, football jerseys and tennis outfits]; and for the FOOT LOCKER service mark, Registry No. 3,810,824, registered June 29, 2010, in International Class 035 [retail store and on-line retail store services featuring clothing, footwear, and clothing and footwear accessories], and that each of these marks is in current use. Respondent does not dispute any of this.
Complainant also shows that Respondent registered the <footlocker.email> domain name on March 29, 2014, and, again, Respondent does not deny this.
Identity or Confusing Similarity
There is no dispute that the <footlocker.email> domain name is substantively identical to Complainant’s FOOT LOCKER marks, or that Complainant holds a valid registration for each of the marks and that they are each in current use. Accordingly, we so find.
Registrant’s Rights or interests
Complainant asserts that Respondent is not affiliated with Complainant in any way, that it has not authorized Respondent to register or use a domain name incorporating its FOOT LOCKER marks, and that Respondent’s use of the domain name is likely to lead to consumer confusion. Complainant also insists that, at the time the domain name was registered, Respondent was aware of Complainant’s marks, and that Respondent registered the domain name for the purpose of selling it to Complainant, but primarily for the purpose of unfairly disrupting Complainant’s business.
Respondent argues that the domain name was registered as part of a system to use domain names, and the e-mails that flow from them, to create a domain name directory and a method to record the sending and receipt of e-mails. Re-spondent alleges that e-mails processed through the system will not be readable by Respondent or anyone associated with the system, and that the essence of the system is that Respondent will function as an e-mail courier. Respondent’s intent, it asserts, is to use company names within the system to document the transmission and receipt of e-mail traffic. To this end, Respondent has regis-tered a large number of domain names, including that using Complainant’s marks, in the format <[companyname/mark].email>. As a result, Respondent claims it is now one of the world’s largest <.email> registrants.
According to the Response, where a company whose name or mark has been incorporated into a <.email> domain name does not want to send e-mails through the system, Respondent will nonetheless use the name as a “technical link” to send e-mails to that company and will independently record the transmission and provide a receipt to the sender showing that the message has been sent to the company. And, the Response says, where a company declines to participate in either the sending or receipt of e-mail traffic through the system, Respondent will use the domain name to record the receipt of e-mails addressed to the company by members of the public and then relay the messages to the company with an embedded link requesting confirmation of receipt.
Respondent says that its transmission-receipt confirmation service is free to e-mail senders and recipients. It also says that: “Respondent is a business and like all businesses, needs to make a return on its investment.” It says further that: “naturally there will be some commercialisation of the … [resolving]… website but it will never be directly related to the domain name.”
We conclude from the facts presented that Respondent’s employment of the disputed domain name is not a bona fide offering of services. It is uncontested that Respondent is not affiliated with Complainant in any way, that Complainant has not authorized Respondent to use its FOOT LOCKER marks in the domain name, and that, at the time the domain name was registered, Respondent was aware of Complainant’s marks. Moreover, there is no indication in the record that Respondent has ever been commonly known by the <footlocker.email>
domain name.
Respondent seems to suggest in its Response that its use of the domain name cannot be questioned because no fee is charged to its patrons for use of the system. However, the absence of a user fee does not end the inquiry as to whether the domain name’s use is commercial in nature and whether Respond-ent intends to achieve commercial gain from it. Respondent admits that it is in the business of operating its system. It concedes that it has sunk substantial economic costs into the development of the system and that it intends to recover those costs, by whatever means it may elect, through exploitation of the profit-making potential the system affords. Because the system is built on a foundation that includes Complainant’s domain name, this is enough to establish that the system is commercial in character and that Respondent intends to obtain com-mercial gain from the use of Complainant’s marks in its domain name.
Accordingly, Complainant has adequately shown that Respondent has no rights to or legitimate interests in the disputed domain name.
BAD FAITH
Under the URS Procedure, essentially the same considerations that make it clear that Respondent has no rights to or legitimate interests in the contested domain name are also pertinent to an analysis of whether the domain name has been registered and is being used in bad faith. See URS Procedure ¶ 5.7. Accord-ingly, a finding of bad faith in the registration and use of the domain name follows directly from the above discussion of the absence of any rights or legitimate interests accruing to the benefit of Respondent from the facts presented in the Complaint and Response filed in this proceeding.
We find from a review of the submissions of the parties that the Complaint was not brought in an abuse of this proceeding and that it does not contain any material falsehoods.
We further find that Complainant has proven all three elements of the URS by clear and convincing evidence; and we therefore Order that the domain name <footlocker.email> be SUSPENDED for the duration of its registration.
Terry F. Peppard, Examiner
Dated: July 08, 2014
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