DECISION

Foot Locker, Inc. v. Harold Brown III

Claim Number: FA0112000103131

PARTIES

Complainant is Foot Locker, Inc., New York, NY (“Complainant”) represented by Melissa L. Klipp, of Drinker, Biddle & Shanley, LLP.  Respondent is Harold  Brown, Hermosa Beach, CA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <urn2ladyfootlocker.org>,  <urn2ladyfootlocker.net>, <urn2footlocker.net>, <urn2footlocker.org>, <urn2ladiesfootlocker.net> and <urn2ladiesfootlocker.org>, all of which are registered with Network Solutions.

PANEL

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

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 19, 2001, Network Solutions confirmed by e-mail to the Forum that the domain names <urn2ladyfootlocker.org>, <urn2ladyfootlocker.net>, <urn2footlocker.net>, <urn2footlocker.org>, <urn2ladiesfootlocker.net> and <urn2ladiesfootlocker.org> are registered with Network Solutions and that Respondent is the current registrant of the names.  Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 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 19, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 8, 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@<urn2ladyfootlocker.org>, postmaster@<urn2ladyfootlocker.net>, postmaster@<urn2footlocker.net>, postmaster@<urn2footlocker.org>, postmaster@<urn2ladiesfootlocker.net>, postmaster@<urn2ladiesfootlocker.org> 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 29, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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 names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant makes the following allegations:

Complainant has established legal rights in the marks contained in their entirety in these disputed domain names.  The disputed domain names incorporate Complainant’s federally registered trademarks and therefore, are confusingly similar.

Respondent has not lawfully used Complainant’s marks in connection with bona fide goods and services.  Second, Respondent has not been commonly known by the mark contained within the domain names in dispute.  Further, Respondent has not made a legitimate noncommercial or fair use of the disputed domain names.  Therefore, Respondent has not established that it has a legitimate interest in respect to the domain names in dispute.  Further, Respondent has engaged in a pattern of similar conduct and by registering the domain names in dispute, Respondent has prevented Complainant from reflecting its trademark in corresponding domain names. This is evidence of bad faith.  Respondent’s registration of multiple variations of Complainant’s mark is also evidence of bad faith under Policy ¶ 4 (a)(iii).

B. Respondent did not file a Response in this proceeding.

FINDINGS

Since 1976, the distinctive FOOT LOCKER name and trademark has been used in connection with the sale and advertisement of athletic footwear, equipment and apparel.  Complainant changed its corporate name from Venator Group Retail, Inc. to Foot Locker, Inc. (Hereinafter “Foot Locker”) on November 1, 2001.  Before the corporate name change, Venator was the owner of the FOOT LOCKER family of marks.  FOOT LOCKER was registered on November 20, 1979, Registration Number 1,126,857.  LADY FOOT LOCKER was registered on December 17, 1985, Registration Number 1,376,373.  Foot Locker operates retail stores, FOOT LOCKER and LADY FOOT LOCKER.  Foot Locker operates several websites with the FOOT LOCKER marks, including: <footlocker.com>, <ladyfootlocker.com>, and <kidsfootlocker.com>.  Footlocker has spent billions of dollars promoting the FOOTLOCKER family of marks.

Respondent registered <urn2ladiesfootlocker.org>, <urn2ladiesfootlocker.net>, <urn2ladyfootlocker.org>, and <urn2ladyfootlocker.net> on or about April 24, 2001.  Respondent registered <urn2footlocker.net> and <urn2footlocker.org> on or about April 25, 2001.  However, it does not appear that the domain names are in operation and no evidence was presented that they have ever been in operation.

Respondent has a history of registering domain names that combine a famous trademark with the generic prefix “urn2” including: <urn2adidas.com>, <urn2americaonline.com>, <urn2uhaul.com>, <urn2bloomberg.com>, <urn2victoriassecret.com> and <urn2Xerox.com>.

Complainant sent a cease and desist letter to Respondent regarding the domain names in dispute on October 22, 2001, using certified and electronic mail.  Respondent did not reply.

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 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 to and/or Confusingly Similar

Complainant has established through use and federal registration that it has established legal rights in the marks FOOT LOCKER and LADY FOOT LOCKER.

Further, the domain names in dispute are confusingly similar with the marks FOOT LOCKER and LADY FOOT LOCKER.  The domain names incorporate the entire mark and use the generic prefix “urn2” to differentiate the domain names from the famous trademarks: This does not reduce the level of confusing similarity that is necessary to satisfy Policy ¶ 4 (a)(i).  See Perot Systems Corporation v. Harold Brown III, FA 97303 (Nat. Arb. Forum June 25, 2001) (finding that “urn2” is a non-distinctive prefix attached to a famous trademark and does nothing to reduce the confusing similarity with the famous trademark); see also U-Haul International, Inc. v Harold R. Brown II a/k/a Ted Waitt a/k/a Harold Brown III, FA 99482 (Nat. Arb. Forum Oct. 4, 2001) (finding <urn2uhaul.com>, <urn2uhaul.net>, and <urn2uhaul.org> confusingly similar to Complainant’s trademark U-HAUL); see also Express Services, Inc. v. Harold Brown/Ted Waitt, FA 97725 (Nat. Arb. Forum July 25, 2001) (finding <urn2expresspersonnel.com>, <urn2expresspersonnel.net>, and <urn2expresspersonnel.org> are confusingly similar to Complainant’s EXPRESS family of marks); see also Bloomberg L.P. v Harold R. Brown II/Ted Waitt, FA 97657 (Nat. Arb. Forum July 25, 2001) (finding <urn2bloomberg.com>, <urn2bloomberg.net>, and <urn2bloomberg.org> not distinctive enough to avoid confusing similarity with Complainant’s trademark BLOOMBERG); see also Victoria's Secret et al v Harold R. Brown II/Ted Waitt, FA 96561 (Nat. Arb. Forum March 19, 2001) (finding <urn2victoriassecret.com> and <urn2victoriassecrets.com> confusingly similar to Complainant’s trademark VICTORIA’S SECRET).

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

Rights to or Legitimate Interests

Complainant has established in this proceeding that it has legal rights to the marks contained within the domain names in issue.  Respondent did not respond to the Complaint.  As a result, the Panel may presume that Respondent has no rights or legitimate interests in the disputed domain name.  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).

Respondent presented no evidence that Respondent has used the disputed domain names in connection with a bona fide offering or that Respondent has made a legitimate noncommercial or fair use of the disputed domain names.  Therefore, the Panel can conclude that Respondent cannot satisfy Policy ¶¶ 4 (c)(i), (iii).  See U-Haul International, Inc. v Harold R. Brown II a/k/a Ted Waitt a/k/a Harold Brown III, FA 99482 (Nat. Arb. Forum Oct. 4, 2001) (finding that since Respondent had not put forward any evidence that would lead to the contrary, Respondent has never used or does not plan to use the disputed domain names in connection with any commercial or noncommercial goods or services).

Respondent does not offer evidence that it has been commonly known by any of the six domain names in dispute. Complainant, through use and federal registration, holds the exclusive rights to FOOT LOCKER and LADY FOOT LOCKER.  Therefore, Respondent fails to satisfy Policy ¶ 4 (c)(ii).  See 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); see also 

Victoria’s Secret et al v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well established use of 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 been satisfied.

Registration and Use in Bad Faith

Complainant alleges that Respondent acted in bad faith in registering the domain names in issue.  Respondent has a history of registering distinctive domain names that contain well-known marks of others and holding them passively.  This registration prevents those who have rights to and legitimate interests in the marks from reflecting their mark in a corresponding domain name. Respondent’s conduct constitutes a pattern that violates Policy ¶ 4 (b)(ii).  See Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (WIPO Sept. 6, 2000) (finding bad faith where the Respondent engaged in the practice of registering domain names containing the trademarks of others); see also Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent registered numerous domain names that infringe upon Complainants’ marks and in addition, Respondent registered domain names that infringe upon other entities’ marks). 

Because of the fame associated with Complainant’s trademarks, Respondent’s multiple uses of Complainant’s trademarks permits the Panel to find that Respondent knew of both FOOT LOCKER and LADY FOOT LOCKER and Complainant’s interest and right to the use of them before Respondent registered these domain names.  Furthermore, Respondent could not reasonably use Complainant’s marks without intentionally attempting to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s marks as to the source of the website.  Respondent’s conduct therefore constitutes opportunistic bad faith and violates Policy ¶ 4 (b)(iv).  See U-Haul International, Inc. v Harold R. Brown II a/k/a Ted Waitt a/k/a Harold Brown III, FA 99482 (Nat. Arb. Forum Oct. 4, 2001) (finding that Respondent was aware of Complainant’s trademark U-HAUL and that registering <urn2uhaul.com>, <urn2uhaul.net>, and <urn2uhaul.org> constitutes opportunistic bad faith); see also Bloomberg L.P. v Harold R. Brown II/Ted Waitt, FA 97657 (Nat. Arb. Forum July 25, 2001) (finding that when Respondent registered <urn2bloomberg.com>, <urn2bloomberg.net>, and <urn2bloomberg.org>, Respondent knew or should have known Complainant’s rights to the BLOOMBERG mark); see also Singapore Airlines Ltd v. P & P Servicios de Communicacion S.L., D2000-0643 (WIPO Aug. 29, 2000) (“The domain name <singaporeairlines.com> is so obviously connected with a well-known airline that its very registration and use by someone with no connection to the airline suggests opportunistic bad faith.  Indeed, it is hard to imagine a more blatant exercise in ‘cybersquatting.’”).

Therefore, 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 be hereby granted.

Accordingly, it is Ordered that the domain names:  <urn2ladyfootlocker.org>, <urn2ladyfootlocker.net>, <urn2footlocker.net>, <urn2footlocker.org>, <urn2ladiesfootlocker.net> and <urn2ladiesfootlocker.org> be transferred from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

       Dated: February 11, 2002

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