DECISION

Foot Locker, Inc. v. Clicky c/o Joe Black

Claim Number: FA0112000102857

PARTIES

Complainant is Foot Locker, Inc., New York, NY (“Complainant”) represented by Melissa L. Klipp, of Drinker, Biddle & Shanley LLP.  Respondent is Clicky c/o Joe Black, Toronto, ON (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <footlocker.net>, registered with Register.com.

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 December 12, 2001; the Forum received a hard copy of the Complaint on December 13, 2001.

On December 13, 2001, Register.com confirmed by e-mail to the Forum that the domain name <footlocker.net> is registered with Register.com and that Respondent is the current registrant of the name.  Register.com has verified that Respondent is bound by the Register.com 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 December 14, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 3, 2002 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@footlocker.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 January 24, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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 name be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The disputed domain name <footlocker.net> is identical to FOOT LOCKER, a registered mark in which Complainant holds rights.

Respondent has no rights or legitimate interests in respect of the disputed domain name.

Respondent registered and used the disputed domain name in bad faith.

B. Respondent

Respondent did not submit a Response in this proceeding.

FINDINGS

Since 1976, Complainant has used its FOOT LOCKER trademark in connection with the sale and advertisement of athletic footwear, equipment, and apparel.  Complainant registered the mark on the Principal Register of the United States Patent and Trademark Office as Registration No. 1,126,857 on November 20, 1979.

Complainant asserts that it has invested billions of dollars in the promotion its FOOT LOCKER marks and in the creation of goodwill and brand recognition.  Complainant further asserts that its FOOT LOCKER mark has achieved incontestable status.

Respondent registered the disputed domain name on November 6, 2001. 

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 and draw such inferences it considers appropriate pursuant to paragraph 14(b) 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; and

(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

Complainant has established its rights in the FOOT LOCKER mark through registration with the United States Patent and Trademark Office and subsequent continuous use of the mark in commerce.

The disputed domain name is identical to Complainant’s mark as it contains the mark in its entirely and the generic top-level domain “.net.”  See Little Six, Inc., v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net> is identical to Complainant’s MYSTIC LAKE marks); see also Hannover Ruckversicherungs-Aktiengesellschaft v. Hyungki Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant has established its rights to and interests in the FOOT LOCKER mark.  Because Respondent has not provided any evidence that it has rights or legitimate interests in the disputed domain name, the Panel may presume that it has no such rights or interests.  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).

There is no evidence the Respondent has used the domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), that Respondent is commonly known as “footlocker” or “footlocker.net” pursuant to Policy ¶ 4(c)(ii), or that Respondent has made a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names, and where no use of the domain names has been established); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. & D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any right or interest it may possess).

Further, the fact that Complaint’s mark is so well known and widely used suggests that, in the absence of evidence to the contrary, Respondent could not possibly have rights or legitimate interests in the identical domain name.  See Venator Group Retail, Inc. v. Ayrton Mercado, FA 100651 (Nat. Arb. Forum Dec. 3, 2001) (noting that, “when a mark is as well known as Complainant’s [FOOT LOCKER mark], there is a presumption that no one else has rights or legitimate interests to it”); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant’s distinct and famous NIKE trademark).

The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied, and that Respondent has no rights or legitimate interests in respect of the disputed domain name.

Registration and Use in Bad Faith

Complainant’s FOOT LOCKER mark is well known and distinctive.  As such, Respondent was aware or should have been aware of the proprietary nature of the mark.  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the world-wide prominence of the mark).

By registering and using a domain name that was identical to Complainant’s mark, Respondent exhibited opportunistic bad faith under the Policy.  See America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the ICQ mark was so obviously connected with Complainant and its products that the use of domain names incorporating the mark, by Respondent, who had no connection with Complainant, suggested opportunistic bad faith); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it was “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).

Accordingly, 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 should be hereby granted.

Accordingly, it is Ordered that the <footlocker.net> domain name be transferred from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated:  January 28, 2002

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