DECISION

Foot Locker, Inc v. Video Images Productions

Claim Number: FA0112000103129

PARTIES

Complainant is Foot Locker, Inc., New York, NY (“Complainant”) represented by Melissa L. Klipp, of Drinker, Biddle & Shanley LLP.  Respondent is Video Images Productions, Houston, TX (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <footlockers.com>, registered with IHoldings.com.

PANEL

On January 28, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist.  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.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 17, 2001; the Forum received a hard copy of the Complaint on December 18, 2001.

On December 18, 2001, IHoldings.com confirmed by e-mail to the Forum that the domain name <footlockers.com> is registered with IHoldings.com and that Respondent is the current registrant of the name.  IHoldings.com has verified that Respondent is bound by the IHoldings.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 18, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 7, 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@footlockers.com 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.

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 <footlockers.com> is confusingly similar to a registered mark, FOOT LOCKER, 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 also holds rights in several other marks incorporating the words FOOT LOCKER, such as FOOTLOCKER.COM, LADY FOOT LOCKER, and WORLD FOOT LOCKER.

Complainant asserts that it has invested billions of dollars in the promotion of 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 May 8, 2001.  Complainant sent a “cease and desist” letter to Respondent on July 25, 2001, to which Respondent replied by offering to sell the domain name to Complainant for $350.

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 U.S. Patent and Trademark Office and subsequent continuous use.

The disputed domain name <footlockers.com> is confusing similar to Complainant’s mark; the addition of the letter “s” to the mark does not significantly differentiate the domain name from the mark.  See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that misspelling words and adding letters to words did not create a distinct mark but instead resulted in a domain name that was confusingly similar to the Complainant’s mark); see also Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that “the addition of an ‘s’ to the end of the Complainant’s mark, [CREAM PIE,] does not prevent the likelihood of confusion caused by the use of the remaining identical mark. The domain name <creampies.com> is similar in sound, appearance, and connotation”).

Similarly, the inclusion of “.com” in the domain name is immaterial to the determination of whether it is confusingly similar to Complainant’s mark.  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Interstellar Starship Services Ltd. v. EPIX, Inc., 983 F.Supp. 1331, 1335 (D.Or. 1997) (finding that epix.com “is the same mark” as EPIX).

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

Rights or Legitimate Interests

Complainant has established its rights to and legitimate interests in the FOOT LOCKER mark.  Because Respondent has not provided any evidence or made any claim to suggest it has rights or interests in the disputed domain name, the Panel may presume that no such rights or interests exist.  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); 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, Complainant’s continuous and wide use of the mark for at least twenty-five years in commerce suggests that Respondent was aware of the existence of the mark, and could not have made a legitimate or bona fide use of the domain name without permission or license from Complainant.  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

Respondent has made no apparent use of the disputed domain name, other than to offer it for sale to Complainant.  Such nonuse constitutes passive holding, which is evidence of bad faith registration and use under the Policy.  See Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (failure to use the domain name in any context other than to offer it for sale to Complainant amounts to use of the domain name in bad faith); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).

Further, because of the notoriety and distinctiveness of Complainant’s mark, Respondent should have been aware of its proprietary nature when Respondent registered the disputed domain name.  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 well-known 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 <footlockers.com> domain name be transferred from Respondent to Complainant.

James P. Buchele, Panelist

Dated: February 1, 2002

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