Foot Locker Retail, Inc. v. Chen Wei et al.
Claim Number: FA1412001595701
Complainant: Foot Locker Retail, Inc. of New York, New York, United States of America.
Complainant Representative:
Complainant Representative: Kelley Drye & Warren LLP of New York, New York, United States of America.
Respondent: Chen Wei of QuanZhou, FuJian, International, CN.
Respondent Representative: «cFirstName» «cMiddle» «cLastName»
REGISTRIES and REGISTRARS
Registries: Jiangsu Bangning Science & Technology Co.,Ltd.
Registrars: Shanghai Meicheng Technology Information Development Co., Ltd.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Examiner in this proceeding.
Fernando Triana, Esq., as Examiner.
Complainant submitted: December 17, 2014
Commencement: December 18, 2014
Default Date: January 5, 2015
Having reviewed the communications records, the Examiner finds that the National 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.
As per Paragraph 9 (c) of the URS Rules, English is the language of the Determination given the absence of a Response.
Pursuant to Paragraphs 6.1 and 6.3 of the URS Procedure, the Complaint proceeded to Default since Respondent did not submit a response to the Complaint. Thus, the Examiner will review the case on the merits of the claim.
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended:
1. That the registered domain name is identical or confusingly similar to a word mark;
2. that the Registrant has no legitimate right or interest to the domain name; and
3. that the domain was registered and is being used in bad faith.
1. Identical and/or Confusingly Similar
Paragraph 1.2.6.1. of the URS Procedure requires the disputed domain name to be identical or confusingly similar to a word mark:
(i) for which Complainant holds a valid national or regional registration and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
Use of said trademark could be shown by:
(i) Demonstrating evidence of use – which can be a declaration and one specimen of current use in commerce – was submitted to, and validated by, the Trademark Clearinghouse.
(ii) Providing a sample of use submitted directly with the URS Complaint”.
a) Existence of a trademark in which the Complainant has rights and is in current use.
Complainant proved its rights on the trademark FOOT LOCKER in the United States of America since at least 1979, when the USPTO granted its registration in the international class 25. Also, Complainant proved its rights on the trademark FOOT LOCKER in the United States of America to identify services included in the international class 35.
This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the cited trademark and of the exclusive right to use it in connection with the corresponding goods and services. The registration of a trademark is prima facie evidence of validity, which creates a rebuttable presumption that the trademark is inherently distinctive[1].
Furthermore, Complainant filed evidence of the trademark FOOT LOCKER’s use by means of a SMD (Signed Mark Data) file of the Trademark Clearinghouse[2]. The Examiner deems such SMD file as valid evidence of the trademark FOOT LOCKER’s use as it was previously validated by the Trademark Clearinghouse to achieve the objectives for which it was created.
Therefore, the Examiner concludes that Complainant has demonstrated to be the owner of a valid trademark registration which is currently in use for purposes of Paragraph 1.2.6.1. of the URS Procedure.
b) Identity or confusing similarity between the disputed domain name and the Complainant’s trademark.
The Examiner considers that the trademark FOOT LOCKER, as Complainant asserts, is completely comprised and reproduced in the disputed domain name <footlocker.top>. Said domain name was registered on December 13, 2014, according to the WhoIs information of the disputed domain name submitted by Complainant as per Paragraph 1.2.4 of the URS Procedure.
The Examiner also notes that the disputed domain name <footlocker.top> is exclusively made up of the trademark FOOT LOCKER, since it does not include any other word or number. These facts lead to the obvious conclusion that the disputed domain <footlocker.top>name is identical to the trademark FOOT LOCKER.
Thus, by registering the disputed domain name, Respondent created a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the disputed domain name.
As per this reasoning, the Examiner finds that the disputed domain name <footlocker.top> is identical to Complainant’s trademark FOOT LOCKER, and thus the requirement set forth in Paragraph 1.2.6.1. of the URS Procedure is duly complied with.
Paragraph 1.2.6.3. of the URS Procedure includes a non-exclusive list of circumstances that demonstrate bad faith registration and use by Respondent, as follows:
a. Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the disputed domain name; or
b. Respondent has registered the disputed domain name in order to prevent the trademark holder or service mark from reflecting the trademark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
c. Respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
d. By using the disputed domain name Respondent has intentionally attempted to attract for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on that web site or location.
Complainant asserts that Respondent was aware of its trademark FOOT LOCKER at the time of the disputed domain name’s registration. Respondent received a notification that the disputed domain name <footlocker.top> matched a trademark registered with the Trademark Clearinghouse, when he was registering said domain name. Despite of this notification, Respondent moved forward with the registration proceeding by clicking on the Register notice Acknowledgement Claim to complete it. In addition, the trademark FOOT LOCKER has a strong reputation and is well-known in the United States of America. Thus, Respondent registered the disputed domain name for the purpose of selling, transferring or renting it to Complainant as the owner of the trademark FOOT LOCKER.
In addition and according to Complainant’s submissions, the disputed domain name reverts to a website that Respondent seems to be preparing to be an online shoe store.
The Examiner concurs with Complainant’s assertions. If Respondent was not aware of the trademark FOOT LOCKER’s existence and use before the registration of the disputed domain name, he became aware of it at the time of its registration because of the Trademark notification provided by the Registry Operator[3]. Thus, in the Examiner’s view, Respondent deliberately took someone else’s trademark to register a domain name and to create a business around it. The Examiner deems that the mere fact of knowingly using a third-party’s trademark in a domain name is registration in bad faith[4].
In addition, the Examiner believes that Respondent is also using the disputed domain name in bad faith. Respondent seems to be preparing a website intended to be an online footwear store, that is, to directly compete with Complainant in the footwear retail business. Thus, Respondent is clearly trying to profit from the trademark FOOT LOCKER’s positioning and recognition, by creating a likelihood of confusion with Complainant as to the source of his website, as well as by attracting mislead consumers to his website while they were looking for Complainant’s website.
As per this reasoning, the Examiner finds that the disputed domain name <footlocker.top> was registered and is being used in bad faith; thus the requirement set forth in Paragraph 1.2.6.3., of the URS Procedure is duly complied with.
In Paragraph 8.3, the URS Procedure clarifies Complainant’s burden of proof regarding the second element established in its Paragraph 1.2.6 (i.e. Registrant has no legitimate right or interest to the disputed domain name).
In a URS procedure, Complainant’s burden of proof regarding Registrant’s lack of rights or legitimate interest in the disputed domain name is met when Complainant presents adequate evidence to substantiate its trademark rights in the disputed domain name, e.g. evidence of a trademark registration and evidence of the disputed domain name’s registration and use in bad faith.
Complainant has met its burden of proof in this case regarding Registrant’s lack of rights or legitimate interest in the disputed domain name. As concluded above, Complainant has successfully shown evidence to substantiate its trademark rights, i.e. printouts from the USPTO trademark’s database proving that Complainant owns the registrations Nos. 1126857 and 3810824 in the United States of America for the trademark FOOT LOCKER in international classes 25 and 35, respectively. In addition, Complainant has demonstrated that the disputed domain name was registered and is being used in bad faith.
Consequently, the Examiner finds that in the present case, Respondent has no legitimate right or interest to the disputed domain name; thus the requirement set forth in Paragraph 1.2.6.2., of the URS Procedure is duly complied with.
After reviewing the Complainant’s submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name be SUSPENDED for the duration of the registration.
<footlocker.top>
Fernando Triana, Esq., Examiner
Dated: January 7, 2015
[1] See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO May 5, 2002).
[2] According to the information about the Trademark Clearinghouse provided by the ICANN website (available at http://newgtlds.icann.org/en/about/trademark-clearinghouse/faqs), trademark owners had to submit before the Trademark Clearinghouse evidence of the use of the trademark in order to participate in registry Sunrise periods. Such evidence had to be: (i) A declaration stating that the trademark is indeed being used as the trademark owner says it is, and (ii) a sample, such as an advertisement, a branded product, or some other example showing the mark in use. In addition, an also according to the ICANN’s website, the SMD file “is a token demonstrating that minimum eligibility requirements for Sunrise have been verified by the Clearinghouse”.
[3] According to the information provided in the TRADEMARK CLEARINGHOUSE website (available at http://trademark-clearinghouse.com/content/trademark-claims-services) about the Trademark Claims Services,”it is a notification service –mandated by ICANN for all new gTLDs - to warn both domain name registrants as well as trademark holders of possible infringements. The service works as follows: (i) A potential domain name registrant gets a warning notice when attempting to register a domain name that matches a trademark term in the TMCH. (ii) If, after receiving and accepting the notice, the domain name registrant does continue to register the domain name, the trademark holder with a corresponding mark in the Clearinghouse receives a notification of the domain name registration, so they can take any appropriate action if they would like to”.
[4] See Aktiebolaget Electrolux v. Jorgeariel Figueroa Rodríguez, WIPO Case No. D2011-1311, where the panel held: “The selection of this word is certainly not a random decision: the Panel finds that it is a consequence of Respondent’s prior knowledge of the mark. This fact, by itself, is registration in bad faith in the Panel’s opinion”.
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