Foot Locker, Inc. v. J.L. Stevens [2002] GENDND 1216 (19 July 2002)

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On June 4, 2002, iholdings.com, Inc. confirmed by e-mail to the Forum that the domain name <americanfootlocker.com> is registered with iholdings.com, Inc. and that the Respondent is the current registrant of the name. iholdings.com, Inc. has verified that Respondent is bound by the iholdings.com, Inc. 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 June 6, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 26, 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@americanfootlocker.com by e-mail.

A timely Response was received and determined to be complete on June 25, 2002. Complainant’s Additional Submission was received in a timely manner and determined to be complete on July 1, 2002. Respondent’s Response to Supplemental Statement of Complainant was received timely on July 5, 2002 and was fully considered by Panel.

On July 10, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Richard B. Wickersham, (Ret.), as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. COMPLAINANT

1. This Complaint concerns the Respondent’s bad faith registration and use of a domain name confusingly similar to the Complainant’s registered, famous, and distinctive mark. The Respondent is knowingly damaging Complainant by holding the <americanfootlocker.com> domain name (the “domain name”).

A. Complainant’s Business and Marks:

2. On November 1, 2001, Complainant changed its legal name from Venator Group, Inc. to Foot Locker, Inc. Venator was the former owner of the FOOT LOCKER® trademark. Pursuant to the name change, Complainant Foot Locker is the current owner of the FOOT LOCKER® mark.

3. Since 1976, the distinctive and famous FOOT LOCKER® mark has been used in connection with the sale and advertisement of athletic footwear, equipment, and apparel.

4. The FOOT LOCKER® mark is registered in the United States with the Patent and Trademark Office and has reached “incontestable” status.

5. Foot Locker, Inc. is the world’s leading multi-channel retailer of athletic footwear and apparel. Foot Locker operates approximately 2,000 retail stores worldwide bearing the Foot Locker name including, FOOT LOCKER®, LADY FOOT LOCKER®, and KIDS FOOT LOCKER®.

6. Foot Locker also maintains a significant presence over the Internet. Foot Locker provides international online ordering under the FOOTLOCKER.COM® name. In addition, Foot Locker operates several websites using the FOOT LOCKER® trademark, and variants thereof, including: <footlocker.com>, <foot-locker.com>, <efootlocker.com>, <ladyfootlocker.com> and <worldfootlocker.com>.

In 2001 alone, Foot Locker had over $100 million dollars in Internet-only sales. Through Foot Locker’s longstanding use of the FOOT LOCKER® trademark, the public has come to expect domain names and web addresses incorporating FOOT LOCKER®, or variations thereof, to be owned by Foot Locker. See Venator Group Retail, Inc. v. Ayrton Mercado, FA 100651 (Nat. Arb. Forum) (finding “Complainant has established recognition on the Internet through its footlocker.com, efootlocker.com, and worldfootlocker.com Web sites”).

8. Foot Locker has invested billions of dollars into promoting the FOOT LOCKER® name and marks worldwide, and building Foot Locker’s reputation, goodwill, and brand recognition.

B. Respondent and the Disputed Domain Name:

9. On February 9, 2002, decades after the Complainant’s adoption and first use of the FOOT LOCKER® mark, the Respondent registered the <americanfootlocker.com> domain name.

10. Respondent has no connection or affiliation with the Complainant, and has received no license or consent, express or implied, to use the famous FOOT LOCKER ® trademark in the domain name or in any other manner.

11. Respondent has no rights in the FOOT LOCKER® trademark.

12. At present, the <americanfootlocker.com> domain name resolves to a parked Web page that provides links to various Internet topics, including clothing and shoe stores.

C. The Domain Name is Confusingly Similar to Complainant’s Trademark

13. The <americanfootlocker.com> domain name is confusingly similar to Complainant’s FOOT LOCKER® trademark as required by paragraph 4(a)(i) of the Uniform Policy for Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers and the Uniform Domain Name Dispute Resolution Policy adopted by DotRegistrar.com (the “Policies”).

14. There is no question that the domain name is comprised, almost entirely, of Complainant’s famous FOOT LOCKER® trademark. See e.g., Trump v. Grimaldi, FA 99713 (Nat. Arb. Forum) (finding the domain name is identical to Complainant’s mark since it incorporates Complainant’s mark in its entirety); Magnum Piering, Inc. v. Mudjackers., D2000-1525 (WIPO) (stating that “numerous panels have held that when a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish identical or confusing similarity for purposes of the Policy”).

15. Arbitrators consistently have held that domain names that differ from the relevant mark only by the addition of a top-level domain name are confusingly similar. See Foot Locker, Inc. v. Video Images Prods., FA 103129 (Nat. Arb. Forum) (finding the inclusion of “.com” in the domain name is immaterial to the determination of whether it is confusingly similar to Complainant’s mark); Venator Group Retail, Inc. v. Ayrton Mercado, FA 100651 (Nat. Arb. Forum) (finding <footlocker.tv> to be confusingly similar to the FOOT LOCKER® mark); Trump v. Grimaldi, FA 99713 (Nat. Arb. Forum) (“addition of top-level indicator such as “.com” or “.org” is not enough to defeat a claim of identical or confusing similarity”); Lee v. Aeon Network Servs., FA 95035 (Nat. Arb. Forum) (finding <aeon.net> confusingly similar to Complainant’s <aeon.com> domain); Slep-Tone Entm’t Corp. d/b/a Sound Choice Accompaniment Tracks v. Sound Choice, FA 93631 (Nat. Arb. Forum) (<soundchoice.net> confusingly similar to Complainant’s <soundchoice.com> domain name).

D. Respondent Has No Rights or Interests in Complainant’s Trademark

16. Respondent is not known by and has no rights or legitimate interests in the domain name as required by paragraph 4(a)(ii) of the Policies. See Compangnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO) (finding no rights or legitimate interests where Respondent was not commonly known by the mark or never applied for a license or permission from the Complainant to use the trademarked name); Just Jeans Group Ltd. v. Domain Trade, D2000-1821 (WIPO) (finding the Respondent lacked the right to use the Complainant’s mark in the domain name when the Respondent has never offered goods or services under the mark, or otherwise used the mark).

17. Of course, even if Respondent did have plans to develop some type of business–which apparently she does not–it does not follow that Respondent can present fair use or rights to the <americanfootlocker.com> domain name. Respondent’s actions are in an attempt to interfere with Complainant’s online identity and to prevent Complainant from owning the domain name. (See Ciccone v. Parisi, D2000-0847 (WIPO) (“use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or services. To conclude otherwise would mean that a Respondent could rely on international infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the intent of the Policy”); CHANEL, Inc. v. ESTCO Tech. Group, D2000-0413 (WIPO) (finding the “Respondent may not use Complainant’s famous fashion trademark as a domain name to entice Internet users to its database. This is not fair use but instead infringing use”).

E. Respondent Registered and is Using the Domain Name in Bad Faith

18. Arbitration Panels have found that registration together with inactivity constitutes bad faith. See Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO); Venator Group Retail, Inc. v. Ayrton Mercado, FA 100651 (Nat. Arb. Forum) (finding that registration of an infringing domain name coupled with passive holding is evidence of bad faith); Venator Group Retail Inc. v. ShopStar Network, FA 100575 (Nat. Arb. Forum) (finding that Respondent’s passive holding of <shopfootlocker.com> was evidence of bad faith).

2. RESPONDENT

1. The Respondent is a Lieutenant Colonel in the Army National Guard with over 23 years of Active and National Guard service. The Respondent identified a business opportunity of selling at discount military medals, ribbons and other military uniform paraphernalia to include rank and patches but not to include any type of footwear or sportswear. Respondent also identified an opportunity to establish a website where service members, for a fee, could exchange military rank and used uniforms. For example, an Army Dress uniform can cost several hundred dollars, while the rank worn on the uniform is an additional cost of $35-55 dollars. The Respondent recognized the desire of military personnel to see/trade their old rank and uniforms upon promotion or separation from the military.

6. The Complainant, through its registration and use has established that it has the rights in the FootLocker mark. However, in light of the common use of the word “footlocker” the Respondent fails to see how there is a likelihood of a confusing similarity between the disputed domain name and the mark. The Complainant has to show that the public would be confused between its mark and the addition of the prefix “American.” The fact that the Respondent is dealing with totally unrelated product and services is adequate to refute the conclusory allegations of the Complainant. For cases on point, please see Bank of Am. Corp. v. Fluxxx Inc., FA 103809 (Nat. Arb. Forum Feb. 18, 2002) where it was decided, as a result, of the common use of the terms “nations” and “banking” the Panel failed to see how there was a likelihood of confusion between NATIONSBANK and nationsbanking.com NATIONSBANK pointed to a financial institution and nationsbanking.com pointed to a porn site. Accordingly, it concluded <nationsbanking.com> was not confusingly similar to the trademark NATIONSBANK.

7. The Panel in Coca-Cola Co. v. Svensson, FA 103933 drew a similar conclusion (Nat. Arb. Forum Feb. 27, 2002). The issue in that case dealt with the use of the domain name <sprite.nu>, which Coca-Cola felt violated their SPRITE trademark. The Panel took judicial notice that the term “sprite” in the Encyclopedia Britannica did not refer to the Coca-Cola Company but rather the flashes of light common in a thunderstorm. A similar result is found in referring to a dictionary for the definition of “footlocker”. The Oxford Desk Dictionary and Thesaurus defines “footlocker” as a small trunk usually kept at the foot of a soldier or camper’s bunk. (The exact reasoning of the Respondent in selecting the name). No reference is made to a supplier of shoes or sportwear.

8. To further demonstrate the sites will be dissimilar, the Respondent’s website will include META tags (META tags are “keywords” that search engines use to “find” websites) like “American, U.S., footlocker, military, armed forces, Army, soldiers, Navy, sailors, Air Force, airmen, Marines, Coast Guard, National Guard, Reserves, awards, medals, ribbons, rank, uniforms, swap, exchange, etc.” There will be no reference to “tennis shoes or shoes or sportswear.” If a search engine “pulls” both <AmericanFootlocker.com> and <FootLocker.com>, a potential tennis shoe customer is not likely to be confused or tricked into purchasing from the military site.

9. The Complainant has shown that it holds legal rights in a well-known mark but the domain name in dispute is different, generic and the site content is not likely to confuse the public, either through initial interest confusion or otherwise, that the Complainant is the sponsor of Respondent’s site which offers military items.

[b.] The Respondent (domain-name holder) should be considered as having rights or legitimate interests in respect of the domain name, AmericanFootlocker.com, which is the subject of the complaint. ICANN Rule 3(b)(ix)(2); ICANN Policy ¶ 4(a)(ii).

As concluded in Coca-Cola Co. v. Svensson, Supra:

“It is clear from the evidence that complainant does not hold exclusive rights in SPRITE. It does have exclusive rights in relation to the uses for which it has registered trademarks, but the word “sprite” itself is a generic word. For example, the evidence before me establishes that “sprite” is a generic term in the computer software industry, that it is a scientific term for flashes of light in a thunderstorm.”

11. Accordingly, it should be concluded that the evidence is clear that the Complainant does not hold exclusive rights for use of “footlocker” as held for similar reasons in reference to SPRITE. In that case, the Panel held the word “sprite”, as used by the Respondent in the domain name <sprite.com> was intended as a reference to the scientific term. Similarly, in this case, the term “footlocker” is intended as a reference to its long-standing military interpretation as demonstrated by its definition in dictionaries and falls outside of the protection granted to the Complainant’s trademark.

[c.] The domain name should not be considered as having been registered and being used in bad faith. ICANN Rule 3(b)(ix)(3); ICANN Policy ¶ 4(a)(iii).

12. There are no circumstances indicating that Respondent has registered or has 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 to a competitor of the Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name. Again, the Complainant has relied solely on naked conclusory allegations that have not met their burden of proof. Block Drug Co. v. Targon Domain, Supra. The sole intent of the Respondent is to use <AmericanFootlocker.com> as an e-commerce website to sell and allow of the exchange of military items.

13. In Twentieth Century Fox Film Corp. v. Bernstein, FA 102962 (Nat. Arb. Forum Feb. 27, 2002) the Panel appreciated that without discovery or substantive position taken, it is often difficult for a Complainant to present evidence of registration and/or use in bad faith, but it is still Complainant’s burden to do so under the evidence of registration and/or use in bad faith requirement. As noted in that Opinion:

“The Complainant does... not provide evidence that the domain name is being used in bad faith. In fact, the parties seem to agree that it does not seem to be in “use” in connection with a planned ‘dance studio.’”

14. As in that case, the Complainant has not met its burden to prove by a preponderance of competent, credible and admissible evidence that the domain name at issue has been registered or is being used in bad faith. The Complainant alleged the Respondent secured the domain name foxstudios.com in bad faith to capitalize on the name and had not even placed the site into action to promote the Respondent’s planned dance studio. In spite of the weak response, the Panel concluded the Complainant had failed to prove bad faith on the part of the Respondent. Also in Block Drug Co. v. Targon Domain, Supra, it was held simple reliance on conclusory allegations would not carry the required burden.

15. The Respondent takes issue with the fact that <AmericanFootlocker.com> website is inactive and as such constitutes bad faith. While it is true, the Respondent has yet not published the <AmericanFootlocker.com> website, there are other reasons for inactivity aside from bad faith. The Respondent has not been inactive. As stated above the Respondent had taken aggressive actions in preparation to initiate the website and the planned business but participating in the Master’s Program slowed the process. The Respondent is the sole member of the business and intended to continue the progress after graduation.

16. Neither has the Complainant shown that the Respondent intentionally attempted to attract, for commercial gain, Internet users to their website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement. As noted above, the Respondent was simply using the term “footlocker” solely as a result of military members association of that generic term.

Conclusion

17. The Complainant has not carried their burden of proof. The Respondent has not simply relied on this failure, but has demonstrated with overwhelming evidence the Respondent had secured the domain name for the sole purpose of selling military type objects with no bad faith or intent or damage to the Complainant as demonstrated by the frequent and common usage of the term “footlocker.”

18. Remedy Sought. The Respondent requests <AmericanFootlocker.com> domain name remain registered to the Respondent. The Respondent is willing to provide a disclaimer on the website indicating no affiliation to or sponsorship by the Complainant.

Additional Submissions

Both sides submitted timely additional material and argument which was fully considered by Panel.

FINDINGS

Identical or Confusingly Similar Policy ¶ 4(a)(i).

Complainant owns numerous registrations with the U.S. Patent and Trademark Office (“USPTO”) for its FOOT LOCKER family of marks, more specifically, Reg. No. 1,126,857 issued on November 20, 1979 and listed on the Principal Register.

Since 1976, the distinctive and famous FOOT LOCKER mark has been used in connection with the sale and advertisement of athletic footwear, equipment and apparel. Complainant is the world’s leading multi-channel retailer of athetic footwear and apparel. Complainant operates approximately 2,000 retail stores worldwide bearing the FOOT LOCKER name.

Complainant asserts that Respondent’s <americanfootlocker.com> domain name is confusingly similar to Complainant’s FOOT LOCKER family of marks. Respondent’s domain name incorporates Complainant’s entire FOOT LOCKER mark with the addition of a geographic qualifier, namely, “American.” The addition of a geographic qualifier to a famous mark fails to make the domain name separate or distinct, and in this case, renders it confusingly similar. See Sunkist Growers, Inc. v. S G & Delmonte-Asia.com, D2001-0432 (WIPO May 22, 2001) (finding that the domain names<sunkistgrowers.org>, <sunkistgrowers.net> and <sunkistasia.com> are confusingly similar to Complainant’s registered SUNKIST mark and identical to Complainant’s common law SUNKIST GROWERS mark). We agree.

Furthermore, Respondent’s domain name resolves to a website that provides links to various Internet topics, including clothing and shoe stores. The Panel finds that because Respondent is offering identical services as Complainant, the possibility of confusion among Internet users is further increased. See Slep-Tone Entm’t Corp. v. Sounds Choice Disc Jockeys, Inc., FA 93636 (Nat. Arb. Forum Mar. 13, 2000) (stating that “likelihood of confusion is further increased by the fact that the Respondent and [Complainant] operate within the same industry”).

Rights and Legitimate Interests Policy ¶ 4(a)(ii).

Complainant argues that it has the exclusive right to use the FOOT LOCKER trademark, and that Respondent is neither a licensee nor authorized agent of Complainant. Complainant maintains that Respondent is not commonly known by the “AMERICANFOOTLOCKER” moniker or the <americanfootlocker.com> domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name). We so find.

Complainant also argues that Respondent’s disputed domain name resolves to a “parked domain name.” Respondent’s website states, “This domain is registered at DotRegistrar.com by a customer and parked temporarily until the owner establishes a permanent site.” Complainant argues that any eventual use of the domain name would interfere with Complainant’s online identity while disrupting its business. Complainant asserts that any development of Respondent’s website would represent an opportunistic attempt to trade on the goodwill of Complainant’s FOOT LOCKER family of marks; thus, Respondent’s actions are not in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor do Respondent’s actions represent a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). We agree.

Registration and Use in Bad Faith Policy ¶ 4(a)(iii).

Complainant argues that Respondent’s lack of development or stated purpose in connection with the disputed domain name since its February 9, 2002 registration signifies passive holding and bad faith. Complainant further states that ICANN’s four criteria, as listed in the Policy, are not exhaustive, as the Panel may consider other circumstances that support finding the Respondent acted in bad faith. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”); see also, DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). We so find.

Complainant also argues that Respondent’s registration and use of the disputed domain name represent an opportunistic attempt by Respondent to trade on the fame and goodwill associated with Complainant’s FOOT LOCKER family of marks. Complainant believes Respondent’s actions exhibit bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent will capitalize on the Internet confusion generated by the misuse of Complainant’s FOOT LOCKER family of marks. We so find.

In addition, the Panel finds that because of the notoriety associated with Complainant’s FOOT LOCKER family of marks, Complainant’s prolonged and extensive use of its FOOT LOCKER marks, and Complainant’s listing on the Principal Register of the USPTO, Respondent had constructive notice of Complainant’s rights in its mark. The Panel determines that Respondent’s registration and use of an infringing domain name, despite knowledge of Complainant’s preexisting rights evidences bad faith under Policy ¶ 4(a)(iii).

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain 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;

(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

We find for the reasons stated hereinabove in our Findings that 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,

Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in respect of the domain name; and,

Registration and Use in Bad Faith

The domain name has been registered and is being used in bad faith.

DECISION

The Panel finds in favor of the Complainant and against the Respondent. We hereby direct that the domain name be transferred from Respondent to Complainant.

JUDGE RICHARD B. WICKERSHAM, (Ret. Judge), Panelist

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Dated: July 19, 2002

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Generic Top Level Domain Name (gTLD) Decisions

Foot Locker, Inc. v. J.L. Stevens [2002] GENDND 1216 (19 July 2002)

National Arbitration Forum