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 Representative: Kelley Drye & Warren LLP of New York, New York, United States of America.
Respondent: yoyo.email of Dunsatble, International, GB.
yoyo.email of Dunsatble, International, United Kingdom.
REGISTRIES and REGISTRARS
Registries: Spring Madison, LLC
Registrars: GoDaddy.com, LLC
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflicts in serving as Panelist in this proceeding.
Jeffrey M. Samuels, Piotr Nowaczyk, Darryl C. Wilson (Chair), as Examiners.
Complainant submitted: June 18, 2014
Commencement: June 19, 2014
Response Date: July 3, 2014
Having reviewed the communications records, the Examiners find 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.
Complainant Foot Locker Retail, Inc. (“Foot Locker”) is a retailer of athletic footwear, apparel and related goods and services in the United States. Foot Locker owns all rights, title, and interest in and to the well-known and incontestable FOOT LOCKER marks (U.S. Reg. No. 3810824 and 1126857), registered in the United States Patent and Trademark Office (“USPTO”)(the “Marks”). Complainant currently uses the Marks in commerce throughout the United States. Complainant’s Marks and related goods and services are known throughout the world by virtue of the Marks’ longstanding use and Complainant’s extensive promotion and advertising.
Respondent is yoyo.email of Dunsatble, International, GB and yoyo.email of Dunsatble, International, United Kingdom. Respondent is specifically represented by Giovanni Laporta who indicates he is the CEO filing on behalf of Yoyo.Email Ltd. The respondent states that he is an inventor and established honest businessman who devised a novel email system where the Respondent will act in the role of an email courier. He further asserts that the .email domain was required for a legitimate operational service and the aim of the company is to provide a recorded delivery system to internet users at times when a recorded delivery system is needed.
URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended.
Complainant’s document indicate 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. 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. The Panel rejects Respondent’s argument that the public cannot be confused by the Disputed Domain Name since it is allegedly used only as “internal system technology link”.
Complainant has proven this element.
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use any domain name incorporating the Marks and use of the Disputed Domain Name is likely to result in consumer confusion. Respondent has no rights or legitimate interest in the Disputed Domain Name because it is not a licensee of Complainant and is not otherwise authorized to use Complainant’s Marks.
Respondent argues that the domain name was registered as part of a system to use domain names to create a domain name directory and a method to record the sending and receipt of e-mails. Respondent 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 registered a large number of domain names, including that using Complainant’s marks, in the format <[companyname/mark].email>.
None of Respondent’s assertions address the choice by Respondent to use Complainant’s registered mark without authorization. In fact Respondent acknowledges that some companies may not want to be part of Respondent’s system. 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 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.” Respondent’s representations do not support a conclusion that it has legitimate rights in the disputed domain name. Respondent’s efforts bespeak an attempt to circumvent basic tenets of trademark law, namely that one cannot use another’s mark without authorization for one’s own personal economic gain.
Respondent’s contentions regarding use of Complainant’s trademark in the disputed domain name is not a bona fide offering of services. Respondent’s efforts to take the known names of companies and create a courier service regardless of those companies authorization does not establish any rights or legitimate business interests nor indicate fair use of the type contemplated by trademark law. 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.
Complainant has proven this element.
*Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the domain name,
*Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct,
*Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor,
*By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.
Respondent registered the Disputed Domain name on March 29, 2014 and does not dispute receiving notification that the domain name matched a mark registered with the Trademark Clearinghouse. The Respondent was required to have clicked on the Registrar notice Acknowledgment Claim when presented with the Trademark Claims Notice to complete registration of the name. At the time of registration of the Disputed Domain Name, Respondent was apparently aware of Complainant’s trademarks. The Disputed Domain Name has been registered and is being used in bad faith on the following grounds; ; By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location. Respondent admits that it hopes to intentionally attract users to its courier system and to profit from doing so. Although Respondent claims internet users will be unable or limited in their exposure to seeing Complainant’s mark, the ability of Respondent to be successful will depend on users familiarity with Complainant’s mark at some point in its system and thus will create a likelihood of confusion as to source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location. Respondent cannot be insulated from proofs regarding this element simply because, despite laying out its plans, it does not have its business fully operational at this time.
Complainant has proven this element.
Respondent has not abused the proceedings or engaged in any material falsehoods.
After reviewing the parties’ submissions, the Examiners determine 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 names be SUSPENDED for the duration of the registration.
<footlocker.email>
Darryl C. Wilson, Examiner
Examiner Samuels respectfully dissents based on the views expressed
in Deutsche Lufthansa AG v. yoyo.email. FA 1552833.
Jeffrey M. Samuels, Examiner
Dated: August 19, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page