NATIONAL ARBITRATION FORUM
URS DEFAULT DETERMINATION
Foot Locker Retail, Inc. v. WhoisGuard, Inc.
Claim Number: FA1410001583809
DOMAIN NAME
<footaction.link>
<footlocker.link>
PARTIES
| Complainant: Foot Locker Retail, Inc. of New York, NY, United States of America | |
|
Complainant Representative: Kelley Drye & Warren LLP of New York, NY, United States of America
|
| Respondent: WhoisGuard, Inc. WhoisGuard Protected of Panama, Panama, PA | |
REGISTRIES and REGISTRARS
| Registries: Uniregistry, Corp. | |
| Registrars: eNom, Inc. |
EXAMINER
| The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding. | |
| Ms. Natalia Stetsenko, as Examiner |
PROCEDURAL HISTORY
| Complainant Submitted: October 8, 2014 | |
| Commencement: October 10, 2014 | |
| Default Date: October 27, 2014 | |
| 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"). |
RELIEF SOUGHT
| Complainant requests that the domain name be suspended for the life of the registration. |
STANDARD OF REVIEW
| Clear and convincing evidence. |
FINDINGS and DISCUSSION
| Procedural Findings: | ||
| Multiple Respondents: The Disputed Domain Names are privacy-shield-held by WhoisGuard, Inc. (“Respondent”), but Complainant has a good faith belief that they are commonly owned. In the absence of any other record evidencing to the Contrary, the Examiner agrees that the disputed domain names are commonly owned. | ||
| Findings of Fact: [OptionalComment] |
|
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.
[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar
to a word mark: Determined: Finding for Complainant Complainant is the owner of the tradeamrks “FOOT LOCKER”, registered in the US Patent and Trademark Office for retail store and on-line retail store services featuring clothing, footwear, and clothing and footwear accessories”, and “FOOTACTION”, registered for retails store services for footware (U.S. Reg. No. 3810824, 1126857, and 2192188). The use of these marks in commerce is confirmed by Trademark Clearing House records. The disputed Domain Names are identical to the trademarks owned by Complainant as they incorporate both trademarks “FOOT LOCKER” (with the deletion of the space which is not acceptable in a domain name), and “FOOTACTION”. Thus, the Examiner finds that the first element of the policy under URS p. 1.2.6.1 has been satisfied. [URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name. Determined: Finding for Complainant Complainant has made out a prima facie case that it has rights in the “FOOT LOCKER” and “FOOTACTION” trademarks. According to Complainant, the Respondent is not affiliated with them in any way. It has not been authorized by the Complainant to register or use any domain name incorporating the Complainant’s Marks. No license or any other type of authorization was issued to Respondent by Complainant to use the registered marks of Complainant, including in domain names. In the absence of any counter arguments and evidences in support of rights and legitimate interest, the Examiner finds that the second element under URS p. 1.2.6.2 has been satisfied as Respondent does not have rights and legitimate interests in the disputed domain names.
[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
Determined: Finding for Complainant The disputed domain names have been registered by Respondent with the knowledge of Complainant’s trademarks. In view of this, registering a domain name corresponding to a famous reputable trademark with the knowledge of existing registrations, and subsequent passive holding of such a domain, thus preventing the trademark holder from registering such a domain, may be viewed as bad faith. Respondent has not submitted any defense showing an intent of bona fide use of the domain. In the absence of any defense which might have affected the decision on this issue, it is found that the third element of the policy under URS p. 1.2.6.3 has been satisfied. FINDING OF ABUSE or MATERIAL FALSEHOOD The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods. The Examiner finds as follows:
DETERMINATION
After reviewing the parties’ 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(s) be SUSPENDED for
the duration of the registration:
|
Ms. Natalia Stetsenko Examiner
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