Generic Top Level Domain Name (gTLD) Decisions

DECISION

Foot Locker Retail, Inc. v. Promo.Net Communications, Inc.

Claim Number: FA0208000118312

PARTIES

Complainant is Foot Locker Retail, Inc., New York, NY, USA (“Complainant”) represented by Melissa Klipp, of Drinker Biddle & Shanley, LLP.  Respondent is Promo.Net Communications, Inc., Montreal, PQ, CANADA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <champssportsbook.com>, registered with VeriSign, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 16, 2002; the Forum received a hard copy of the Complaint on August 16, 2002.

On August 19, 2002, VeriSign, Inc. confirmed by e-mail to the Forum that the domain name <champssportsbook.com> is registered with VeriSign, Inc. and that Respondent is the current registrant of the name.  VeriSign, Inc. has verified that Respondent is bound by the VeriSign, 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 August 22, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 11, 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@champssportsbook.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.

On October 7, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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 Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

1. Respondent’s <champssportsbook.com> domain name is confusingly similar to Complainant’s registered CHAMPS SPORTS mark.

2.  Respondent does not have rights to or legitimate interests in the <champssportsbook.com> domain name.

3. Respondent registered and used the <champssportsbook.com> domain name in bad faith.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant has established itself as a leading retailer in sporting goods, both nationally and internationally. On November 1, 2001, Complainant changed its legal name from Venator Group Retail, Inc. to Foot Locker Retail, Inc.  Venator was the former registered owner of the CHAMPS SPORTS family of trademarks comprised of CHAMPS SPORTS, CHAMPS, and CHAMPSSPORTS.COM marks (CHAMPS SPORTS marks). Complainant, Foot Locker Retail Inc., currently owns all registrations of the CHAMPS SPORTS marks with the United States Patent and Trademark Office (USTPO).  With approximately 600 stores and an international online ordering system, Complainant serves in excess of ten million customers per year. Complainant has utilized the CHAMPS SPORTS marks in connection with advertising and sales of, inter alia, athletic apparel, footwear and equipment.

Respondent registered the disputed domain name on February 7, 2002. Complainant’s inquiry into the status of the website shows it to be inactive. Respondent tried to sell the rights to the domain name to Complainant at an unspecified cost greater than the initial registration fee.

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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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

Respondent’s <champssportsbook.com> domain name is confusingly similar to Complainant’s registered CHAMPS SPORTS marks given that it incorporates Complainant’s entire mark and merely adds the common term “book.”  The addition of the generic term “book” does not create a unique and distinct mark from the CHAMPS SPORTS registered mark.  A domain name does not become distinct from another’s trademark simply by adding a common generic term. Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term);  see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word…nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name”).

Furthermore, the domain name is confusingly similar since Complainant’s entire mark is used within the disputed domain name.  Customers may believe that there is an association between both parties when none exists.  See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s website, think that an affiliation of some sort exists between Complainant and Respondent, when in fact, no such relationship would exist).

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

Rights or Legitimate Interests

Respondent has not submitted a reply to Complainant’s allegations, thereby permitting the Panel to conclude that all reasonable inferences made by Complainant are true and accurate unless there is evidence that is clearly contradictory.  Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true);  Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence). There is no evidence that contradicts the allegations of Complainant.  Complainant has presented evidence that substantiates its claim that Respondent has no legitimate rights or interests in the contested domain name.

Respondent is currently not using the disputed domain name for any purpose.  Registration, coupled with passive holding of a domain name without tangible evidence of intent to use the domain name, supports the inference that Respondent has no legitimate rights or interests in the domain name pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii).  See Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interest can be found when Respondent fails to use disputed domain name in any way);  see also Chanel, Inc. v. Heyward, D2000-1802 (WIPO Feb. 23, 2001) (finding no rights or legitimate interests where “Respondent registered the domain name and did nothing with it”).  Simply registering the domain name is not satisfactory to establish a right to the domain name.  See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”).

There is no evidence before the Panel to establish a viable connection between the domain name <champssportsbook.com> and Respondent’s Promo.net Communications, Inc. business.  On the contrary, Complainant has produced significant evidence to establish itself as primary holder of all legitimate rights and interests in the name CHAMPS SPORTS. Since Respondent is not known by, or associated with the CHAMPS SPORTS or <champssportsbook.com> name, it is reasonable to conclude that Respondent has no rights to the domain name according 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 Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

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

Registration and Use in Bad Faith

Respondent was placed on constructive notice of Complainant’s rights since the CHAMPS SPORTS marks were registered on the Principal Register of the USPTO.  Registering a domain name confusingly similar to Complainant’s mark demonstrates bad faith.  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 and thus Respondent registered the domain name in bad faith).

Complainant has clearly established a worldwide reputation through an affiliation with the CHAMPS SPORTS mark.  Respondent’s action infringe upon Complainant’s rights.   This attempt to confuse consumers amounts to use in bad faith.  See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"). 

There is additional evidence of bad faith use that is of note.  Respondent, when contacted about the disputed domain name, attempted unsuccessfully to sell the rights and interests to Complainant for a price in excess of what Respondent paid.  This behavior on the part of Respondent is regarded as evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i).  See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”);  see also Booz-Allen & Hamilton Inc. v. Servability Ltd, D2001-0243 (WIPO Apr. 5, 2001) (finding bad faith where Respondent, a domain name dealer, rejected Complainant’s nominal offer of the domain in lieu of greater consideration).

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

DECISION

Having established all three elements required under the ICANN Policy, the Panel hereby concludes that the requested relief shall be GRANTED.

Accordingly, it is ordered that the domain name <champssportsbook.com> be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated:  October 18, 2002

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