DECISION

Foot Locker Retail, Inc. v. Phil Adams

Claim Number: FA0209000124858

PARTIES

Complainant is Foot Locker Retail, Inc, New York, NY, USA (“Complainant”) represented by Melissa L. Klipp, of Drinker Biddle & Shanley LLP.  Respondent is Phil Adams, Oakville, ON, CANADA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <womensfootlocker.com>, registered with eNom, Inc.

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. Crary as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 10, 2002; the Forum received a hard copy of the Complaint on September 10, 2002.

On September 12, 2002, eNom, Inc. confirmed by e-mail to the Forum that the domain name <womensfootlocker.com> is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 September 17, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 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@womensfootlocker.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 23, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Crary 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’s Submission makes the following assertions:

1. Respondent’s <womensfootlocker.com> domain name is confusingly similar to Complainant’s registered FOOT LOCKER and LADY FOOT LOCKER family of marks.

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

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

B. 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, under its registered FOOT LOCKER and LADY FOOT LOCKER family of marks. On November 1, 2001, Complainant changed its legal name from Venator Group Retail, Inc. to Foot Locker Retail, Inc. Complainant registered its FOOT LOCKER and LADY FOOT LOCKER marks with the United States Patent and Trademark Office (“USPTO”) over two decades ago. Variations of Complainant’s marks have been listed with the Principal Register of the USPTO, and Complainant has registered its mark in over thirty countries worldwide.

In addition, Complainant registered the service marks FOOTLOCKER.COM (U.S. Reg. No. 2554892) and LADYFOOTLOCKER.COM (U.S. Reg. No. 2554889) with the Principal Register of the USPTO on April 2, 2002, filing for these registrations on April 3, 2000. Along with these two registered marks and associated domain names, Complainant operates several other websites, including sites at <foot-locker.com>, <efootlocker.com>, and <worldfootlocker.com>.

Respondent registered its <womensfootlocker.com> domain name on May 17, 2002. Currently, Respondent’s domain name resolves to a page that invites users to search the Web using Overture and has a text box for users to type in their query. The site also includes a set of twelve categories of links to choose from that redirect users to websites related to the category chosen. Categories available include “Travel”, “Socialize”, “Entertainment”, “The Unknown”, “Free Stuff”, and “Adult”. The “Adult” link specifically points Internet users to <pornfree.org>, a pornographic website. In addition, when a user attempts to close the browser window or attempts to leave the website, a series of new pop-up windows appear, “mousetrapping” the user into viewing various advertisements. Respondent has no connection or affiliation with Complainant, and is neither licensed nor authorized to use the FOOT LOCKER or LADY FOOT LOCKER family of marks for any purpose.

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 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 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

Complainant has established rights in the FOOT LOCKER and LADY FOOT LOCKER  family of marks through registration with the USPTO and subsequent continuous use of the marks.

A Panel can find confusing similarity when considering a domain name with characteristics that consist of mere cosmetic differences between the name and the mark. The addition of a generic word to a registered trademark, especially if that mark is well known, is not a substantive alteration and fails to prevent a finding of confusing similarity. See 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 Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy despite the addition of other words to such marks”)

Respondent’s <womensfootlocker.com> domain name simply adds the generic term “womens” to Complainant’s FOOT LOCKER and FOOTLOCKER.COM marks. Alternately, the domain name uses a synonym to replace the word “lady” in Complainant’s LADY FOOT LOCKER and LADYFOOTLOCKER.COM marks. In either case, the domain name is confusingly similar to Complainant’s mark. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).

Furthermore, as spaces are impermissible in domain name registrations and a generic top-level domain (such as “.com”) is required for every domain name, neither of these differences have any effect on whether Respondent’s domain name is confusingly similar to Complainant’s mark. See Hannover Ruckversicherungs-AG v. 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”); see also 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). Respondent’s elimination of the spaces from the FOOT LOCKER mark and the addition of  “.com” after its domain name are inconsequential when ascertaining the existence of confusing similarity. Moreover, even these slight differences are absent when Respondent’s domain name is compared to Complainant’s registered FOOTLOCKER.COM and LADYFOOTLOCKER.COM marks.

Accordingly, the Panel finds that the <womensfootlocker.com> domain name is confusingly similar to Complainant’s registered mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

The burden of proving a lack of rights or legitimate interests in a domain name rests initially upon Complainant. Under Policy ¶¶ 4(c)(i-iii), Respondent can rely on an offering of bona fide goods or services connected with the disputed domain name, the fact that it has been commonly known by the domain name, or that it is making a legitimate noncommercial or fair use of the domain name to demonstrate a right or legitimate interest in a domain name. If Complainant rebuts each of these elements, it has satisfied its burden by successfully addressing any of the specified claims Respondent could make under Policy ¶¶ 4(c)(i-iii), therefore shifting the burden to Respondent. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

Complainant shows that Respondent is using its <womensfootlocker.com> domain name in connection with neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use, both examples of rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii). Respondent’s sole use of its domain name is to provide a forum for a series of unrelated hyperlinks and gain commercial advantage via “pop up” advertisements, neither a bona fide offering of goods or services nor a reflection of a legitimate interest in the domain name. See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, it's use of the names was not in connection with the offering of goods or services or any other fair use).

Furthermore, Complainant has not licensed Respondent to use its mark and can find no data supporting the proposition that Respondent is commonly known by the domain name. In fact, due to the general popularity of the FOOT LOCKER and LADY FOOT LOCKER marks, it is doubtful that any entity could be commonly known by Complainant’s mark. See U-Haul Int’l., Inc. v. Steven Freed, FA 103878 (Nat. Arb. Forum Mar. 1, 2002) (as Complainant has held rights to U-HAUL for nearly forty years, it is difficult to imagine that another entity could possibly be known by any of the domain names in dispute other than Complainant); 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). These showings by Complainant, following the criteria outlined in Policy ¶¶ 4(c)(i-iii), successfully address any claims Respondent could make under the Policy, thus adequately meeting its burden of demonstrating Respondent’s lack of rights and legitimate interest in the domain name.

Once a complainant has successfully presented its prima facie case illustrating a respondent’s lack of rights or legitimate interests in its domain name, the burden of demonstrating rights and legitimate interests in the domain name shifts to the respondent.

Respondent submitted nothing to the Panel in response to this proceeding. In these circumstances Respondent’s failure to affirmatively demonstrate any rights or legitimate interests in its domain name results in a finding for Complainant. See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because Respondent never submitted a Response nor provided the Panel with evidence to suggest otherwise); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

The Panel finds that Respondent does not have any rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

In determining whether bad faith use and registration has occurred, the Panel will take many factors into consideration before coming to a conclusion of bad faith use and registration on the part of Respondent. 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”).

A registered trademark listed on the Principal Register of the USPTO operates as constructive notice to the existence of a mark. It is evidence that a domain has been registered and used in bad faith when a respondent registers a domain name that is confusingly similar to a trademark despite actual or constructive notice of the mark. See U-Haul Int’l., Inc. v. Steven Freed, FA 103878 (Nat. Arb. Forum Mar. 1, 2002) (because of the fame attained by Complainant’s mark, it can be presumed that Respondent knew of U-HAUL before registering the disputed domain names); 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).

Similarly, Policy ¶ 4(b)(iv) illustrates an example of bad faith use and registration when dealing with a popular mark. The Policy states that when a domain name is used to intentionally attempt to attract, “for commercial gain, Internet users to [Respondent’s] web site…by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site” it is an example of bad faith use and registration. Taken together, Respondent’s use of a registered mark to divert Internet traffic to a website unrelated to and unauthorized by the holder of the mark evidences bad faith use and registration. See State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intended to use Complainant’s marks to attract the public to the website without permission from Complainant); see also eBay, Inc v. Progressive Life Awareness Network, D2000-0068 (WIPO Mar. 16, 2001) (finding bad faith where Respondent is taking advantage of the recognition that eBay has created for its mark and therefore profiting by diverting users seeking the eBay website to Respondent’s site).

Evidence of bad faith use is even stronger when Respondent’s diversion includes links to pornographic materials that could tarnish Complainant’s mark. See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where Respondent linked the domain name in question to websites displaying banner advertisements and pornographic material).

In this dispute, Respondent registered its <womensfootlocker.com> domain name on May 17, 2002, over a month after Complainant had registered its FOOTLOCKER.COM and LADYFOOTLOCKER.COM service marks, and decades after the registration of the FOOT LOCKER and LADY FOOT LOCKER trademarks. Respondent’s use of Complainant’s registered mark in its domain name is therefore an action that evidences bad faith registration. Respondent’s use of Complainant’s mark for commercial gain via “pop up” advertisements and “mousetrapping” users into viewing multiple advertisements also indicates bad faith. Compounding these examples is the fact that one of Respondent’s links directs Internet users to pornographic material, a sign of bad faith use.

The Panel finds that Respondent both registered and used its domain name in bad faith, and Policy ¶ 4(a)(iii) has been satisfied.

DECISION

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

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

James A. Crary, Panelist

Dated: November 4, 2002

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