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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
Foot Locker Retail, Inc. v. Bruce Gibson
Claim Number:
FA0212000139693
PARTIES
Complainant is Foot Locker Retail,
Inc., New York, NY
(“Complainant”) represented by Melissa L. Klipp, of Drinker Biddle & Shanley LLP.
Respondent is Bruce Gibson, Corona,
NY (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <footlockersportinggoodsinternational.com>,
<babyfootlocker-clothing-shoes-supplies.com>,
<footlockersportinggoodstechnical-shoes-apparel-equipment.com>,
<footlockersportingtechnicalinformation-marathontrainingtips.com>
and <ladyfootlockersportinggoodsshoes-apparel.com>,
registered with NameSecure.com.
The undersigned certifies that he or she has
acted independently and impartially and to the best of his or her knowledge has
no known
conflict in serving as Panelist in this proceeding.
Sandra Franklin as Panelist.
Complainant submitted a Complaint to the
National Arbitration Forum (the "Forum") electronically on December
31, 2002; the
Forum received a hard copy of the Complaint on December 31, 2002.
On January 7, 2003, NameSecure.com confirmed by
e-mail to the Forum that the domain names <footlockersportinggoodsinternational.com>,
<babyfootlocker-clothing-shoes-supplies.com>,
<footlockersportinggoodstechnical-shoes-apparel-equipment.com>,
<footlockersportingtechnicalinformation-marathontrainingtips.com>
and <ladyfootlockersportinggoodsshoes-apparel.com>
are registered with NameSecure.com and that Respondent is the current
registrant of the names. NameSecure.com has verified that Respondent
is bound
by the NameSecure.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 January 7, 2003, a Notification of Complaint
and Commencement of Administrative Proceeding (the "Commencement
Notification"),
setting a deadline of January 27, 2003 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@footlockersportinggoodsinternational.com,
postmaster@babyfootlocker-clothing-shoes-supplies.com,
postmaster@footlockersportinggoodstechnical-shoes-apparel-equipment.com,
postmaster@footlockersportingtechnicalinformation-marathontrainingtips.com and postmaster@ladyfootlockersportinggoodsshoes-apparel.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 January 30, 2003, 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.
Complainant requests that the domain names be
transferred from Respondent to Complainant.
A.
Complainant makes the following assertions:
1.
Respondent’s <footlockersportinggoodsinternational.com>,
<babyfootlocker-clothing-shoes-supplies.com>,
<footlockersportinggoodstechnical-shoes-apparel-equipment.com>,
<footlockersportingtechnicalinformation-marathontrainingtips.com>
and <ladyfootlockersportinggoodsshoes-apparel.com>
domain names are all confusingly similar to Complainant’s registered FOOT
LOCKER and LADY FOOT LOCKER marks.
2.
Respondent does
not have any rights or legitimate interests in the <footlockersportinggoodsinternational.com>, <babyfootlocker-clothing-shoes-supplies.com>,
<footlockersportinggoodstechnical-shoes-apparel-equipment.com>,
<footlockersportingtechnicalinformation-marathontrainingtips.com>
and <ladyfootlockersportinggoodsshoes-apparel.com>
domain names.
3.
Respondent
registered and used the <footlockersportinggoodsinternational.com>,
<babyfootlocker-clothing-shoes-supplies.com>,
<footlockersportinggoodstechnical-shoes-apparel-equipment.com>,
<footlockersportingtechnicalinformation-marathontrainingtips.com>
and <ladyfootlockersportinggoodsshoes-apparel.com>
domain names in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
Complainant, Foot Locker Retail, Inc., holds rights in the registered and
incontestable FOOT LOCKER mark (e.g. U.S.
Reg. No. 1,061,754, registered on March 22, 1977 with the Principal Register of
the United States Patent and Trademark Office).
Complainant has registered
several variations of its FOOT LOCKER mark, including LADY FOOT LOCKER (e.g. U.S. Reg. No. 1,376,373), LADY FOOT
LOCKER SPORT (U.S. Reg. No. 2,257,615) and KIDS FOOT LOCKER (e.g. U.S. Reg. Nos. 1,562,804), each of
which predate Respondent’s registration of the disputed domain names. In
addition, Complainant
has registered each of the above marks in a format
resembling a domain name, such as it’s registered FOOTLOCKER.COM mark. (U.S.
Reg.
No. 2,554,892). Each of Complainant’s registered “.COM” variations on its
FOOT LOCKER mark also predate Respondent’s registration
of the disputed domain
names.
For over two decades, Complainant has used its FOOT LOCKER family of marks
in connetion with the sale and advertisement of athletic
footwear, equipment,
and apparel. Pursuant to its business, Complainant operates over 2,000 retail
stores worldwide. Since its first
use of the marks, Complainant has invested
billions of dollars into promoting its FOOT LOCKER family of marks.
Complainant maintains an online retail presence at websites such as
<footlocker.com>, <ladyfootlocker.com>, and
<kidsfootlocker.com>.
In 2001, Complainant generated over $100 million
dollars in Internet sales from its domain names. As noted, supra, Complainant was able to register several trademarks
reflecting its reputable domain names with the Principal Register of the United
States Patent and Trademark Office.
Prior to this dispute, Complainant had previous dealings with Respondent
Bruce Gibson. On May 23, 2000, Complainant sent Respondent
a cease-and-desist
letter regarding the <footlockersportinggoods.com> and
<footlockerathletics.com> domain names, both
registered by Respondent.
The cease-and-desist letter went unanswered by Respondent, but Respondent
permitted the domain name registrations
to lapse, allowing Complainant’s
attorney to register them on behalf of Complainant.
A supplemental cease-and-desist letter was sent on April 23, 2002,
regarding the <footlockerinternational.com>,
<footlockervendors.com>,
<kidsfootlockervendors.com>,
ladyfootlockervendors.com>, and <mensfootlocker.com> domain names.
Again, Complainant
received no response, and again, the domain name registrations
were allowed to expire, on or about July of 2002.
On July 19, 2002, on or about the time that the above-mentioned domain name
registrations expired, Respondent registered the <footlockersportinggoodsinternational.com>, <babyfootlocker-clothing-shoes-supplies.com>,
<footlockersportinggoodstechnical-shoes-apparel-equipment.com>,
<footlockersportingtechnicalinformation-marathontrainingtips.com>
and <ladyfootlockersportinggoodsshoes-apparel.com>
domain names. Respondent is not and has never been licensed or authorized to
use Complainant’s FOOT LOCKER family of marks for any
purpose. Respondent has
not posted any original content at the disputed domain names since their
registration.
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 its FOOT LOCKER family of marks
through registration with the Principal Register of the United
States Patent
and Trademark Office, as well as through widespread use and promotion of the
marks worldwide.
Respondent’s <footlockersportinggoodsinternational.com>,
<babyfootlocker-clothing-shoes-supplies.com>,
<footlockersportinggoodstechnical-shoes-apparel-equipment.com>,
<footlockersportingtechnicalinformation-marathontrainingtips.com>
and <ladyfootlockersportinggoodsshoes-apparel.com>
domain names are each confusingly similar to Complainant’s registered FOOT
LOCKER family of marks. The dominant feature of each of
the domain names is
some variation of Complainant’s distinctive FOOT LOCKER mark, an important
consideration when analyzing confusing
similarity under Policy ¶ 4(a)(i). See 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”); 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 in each
case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is
satisfied).
Respondent’s addition of descriptive words and phrases to Complainant’s
marks in the disputed domain names (such as “sporting goods,”
“shoes,” “apparel,”
or “marathon training tips”) do nothing to dispel the confusing similarity
surrounding its use of Complainant’s
FOOT LOCKER family of marks. As these
words and phrases are all descriptive of Complainant’s business, they actually
increase the
likelihood of confusion in the minds of Internet users who also
recognize Complainant’s FOOT LOCKER family of marks in the domain
names.
Respondent’s use of generic words such as “technical” or “international” in the
disputed domain names also fails to create
a meaningful distinction, for
similar reasons. 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).
Accordingly, the Panel finds that the <footlockersportinggoodsinternational.com>,
<babyfootlocker-clothing-shoes-supplies.com>,
<footlockersportinggoodstechnical-shoes-apparel-equipment.com>,
<footlockersportingtechnicalinformation-marathontrainingtips.com>
and <ladyfootlockersportinggoodsshoes-apparel.com>
domain names are confusingly similar to Complainant’s registered FOOT LOCKER
family of marks under Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Under the Policy, the burden lies upon the Complainant to show that
Respondent has no rights or legitimate interests in the disputed
domain names.
Complainant can meet this burden with a showing that the safe harbors
illustrated in Policy ¶¶ 4(c)(i)-(iii) do not
apply to Respondent. Once
Complainant has made this showing, Complainant’s burden shifts to Respondent,
and Respondent’s lack of
a response results in its inability to meet its burden
under Policy ¶ 4(a)(ii). See G.D. Searle
v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where a
Complainant has asserted that Respondent has no rights or legitimate interests
in respect of the domain name it is incumbent on Respondent to come forward
with concrete evidence rebutting this assertion because
this information is
“uniquely within the knowledge and control of the respondent”); see also 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).
Respondent makes no use of the infringing <footlockersportinggoodsinternational.com>, <babyfootlocker-clothing-shoes-supplies.com>,
<footlockersportinggoodstechnical-shoes-apparel-equipment.com>,
<footlockersportingtechnicalinformation-marathontrainingtips.com>
and <ladyfootlockersportinggoodsshoes-apparel.com>
domain names. Considering that all of the disputed domain names infringe on
Complainant’s registered marks, are not being utilized
for any purpose, and
that Respondent has not come forward reason to hold otherwise, the Panel
concludes that neither Policy ¶ 4(c)(i)
or Policy ¶ 4(c)(iii) apply to
Respondent. 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”); see also Woolworths plc. v. Anderson,
D2000-1113 (WIPO Oct. 10, 2000) (finding that absent evidence of preparation to
use the domain name for a legitimate purpose, the
burden of proof lies with the
Respondent to demonstrate that it has rights or legitimate interests).
Due to the fame of
Complainant’s FOOT LOCKER family of marks, the fact that Complainant has not
licensed Respondent to use its marks
and the fact that Respondent’s WHOIS
information reveals its name to be “Bruce Gibson,” the Panel infers that
Respondent was not
“commonly known by” any of the disputed domain names prior
to their registration, and concludes that Policy ¶ 4(c)(ii) does not apply
to
Respondent. See RMO, Inc.
v. Burbridge, FA 96949 (Nat.
Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a
showing that one has been commonly known
by the domain name prior to
registration of the domain name to prevail"); 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).
Complainant has successfully shown that Respondent’s behavior does not fall
under the ambit of Policy ¶¶ 4(c)(i)-(iii). The Panel
also views Respondent’s
lack of a response as evidence that it has no rights or legitimate interests in
the disputed domain names
in finding that Policy ¶ 4(a)(ii) is satisfied. See Pavillion Agency, Inc. v. Greenhouse
Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondent’s
failure to respond can be construed as an admission that they have no
legitimate interest in the domain names); see
also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000)
(finding it appropriate for the Panel to draw adverse inferences from
Respondent’s failure to reply
to the Complaint).
Accordingly, the Panel finds that Respondent does not have rights or
legitimate interests in the <footlockersportinggoodsinternational.com>,
<babyfootlocker-clothing-shoes-supplies.com>,
<footlockersportinggoodstechnical-shoes-apparel-equipment.com>,
<footlockersportingtechnicalinformation-marathontrainingtips.com>
and <ladyfootlockersportinggoodsshoes-apparel.com>
domain names under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Respondent registered each of the <footlockersportinggoodsinternational.com>,
<babyfootlocker-clothing-shoes-supplies.com>,
<footlockersportinggoodstechnical-shoes-apparel-equipment.com>,
<footlockersportingtechnicalinformation-marathontrainingtips.com>
and <ladyfootlockersportinggoodsshoes-apparel.com>
domain names on July 19, 2002. Each of the five infringing domain names
incorporate one of Complainant’s registered marks. Moreover,
on two separate
occasions Respondent registered at least seven other domain names infringing on
Complainant’s marks. These registrations
were done despite Complainant’s
repeated demands to cease use and transfer the infringing domain name
registrations to it. Respondent’s
repeated registrations of intentionally
infringing domain names, preventing Complainant from adequately reflecting and
protecting
its marks online, equate to bad faith use and registration under
Policy ¶ 4(b)(ii). See Harcourt, Inc. v.
Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one
instance of registration of several infringing domain names satisfies
the
burden imposed by the Policy ¶ 4(b)(ii)); see
also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 8, 2000)
(finding bad faith where (1) the Respondent knew or should have known of the
Complainant’s SONY marks
and (2) Respondent registered multiple domain names
which infringed upon the Complainant’s mark).
Respondent’s July 19, 2002 registration of the disputed domain names,
occurring after it had already received two cease-and-desist
letters from
Complainant, evidences actual notice of Complainant’s rights in the FOOT LOCKER
family of marks prior to registration
of the infringing domain names.
Furthermore, even if Complainant had not sent this series of cease-and-desist
letters, Respondent
was put on constructive notice of Complainant’s rights in
the FOOT LOCKER family of marks through registration of its marks on the
Principal Register of the United States Patent and Trademark Office and through
the worldwide fame associated with the FOOT LOCKER
family of marks.
Respondent’s registration of the infringing domain names with actual and
constructive notice of Complainant’s rights
evidences bad faith registration of
the domain names under Policy ¶ 4(a)(iii). See
Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161
F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register
registration [of a trademark or service mark] is constructive
notice of a claim
of ownership so as to eliminate any defense of good faith adoption” pursuant to
15 U.S.C. § 1072); see also Reuters Ltd.
v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that the
Respondent demonstrated bad faith where the Respondent was aware of the
Complainant’s
famous mark when registering the domain name as well as aware of
the deception and confusion that would inevitably follow if he used
the domain
names).
In light of Respondent’s bad faith registration of the disputed domain
names, Respondent’s passive holding of the domain names equates
to bad faith
use under Policy ¶ 4(a)(iii). See Phat Fashions v. Kruger, FA 96193 (Nat.
Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(a)(iii) even
though Respondent has not used the domain
name because “It makes no sense
whatever to wait until it actually ‘uses’ the name, when inevitably, when there
is such use, it will
create the confusion described in the Policy”); see also Alitalia –Linee Aeree Italiane
S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith
where the Respondent made no use of the domain name in question and there are
no other indications that the Respondent could have registered and used the
domain name in question for any non-infringing purpose).
The Panel thus finds that Respondent registered and used the <footlockersportinggoodsinternational.com>,
<babyfootlocker-clothing-shoes-supplies.com>,
<footlockersportinggoodstechnical-shoes-apparel-equipment.com>,
<footlockersportingtechnicalinformation-marathontrainingtips.com>
and <ladyfootlockersportinggoodsshoes-apparel.com>
domain names in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under ICANN Policy, the
Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <footlockersportinggoodsinternational.com>,
<babyfootlocker-clothing-shoes-supplies.com>,
<footlockersportinggoodstechnical-shoes-apparel-equipment.com>,
<footlockersportingtechnicalinformation-marathontrainingtips.com>
and <ladyfootlockersportinggoodsshoes-apparel.com>
domain names be TRANSFERRED from
Respondent to Complainant.
Sandra
Franklin, Panelist
Dated:
February 4, 2003
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