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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Foot Locker Retail, Inc. v. WhoisGuard, Inc. / Derrick Berney, Tnylth

Case No. D2019-0504

1. The Parties

The Complainant is Foot Locker Retail, Inc. of New York, New York, United States of America (“United States”), represented by Kelley Drye & Warren, LLP, United States.

The Respondent is WhoisGuard, Inc. of Panama / Derrick Berney, Tnylth, Miami, Florida, United States.

2. The Domain Name and Registrar

The disputed domain name <footlocker.club> (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2019. On March 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 6, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 7, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 11, 2019.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 3, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 4, 2019.

The Center appointed Lynda M. Braun as the sole panelist in this matter on April 25, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a leading global athletic footwear and apparel retailer that has sold athletic apparel, footwear and accessories, and provided retail store services for over 40 years. Its stores offer the latest in athletic-inspired performance products for a wide variety of athletic activities, manufactured primarily by leading athletic brands. The Complainant operates approximately 1,755 stores located in 24 jurisdictions, including 910 in the United States; 111 in Canada; over 636 in Europe; and a combined 98 in Australia and New Zealand.

The Complainant is the exclusive owner of all right, title, and interest in and to the following trademarks, duly registered in the United States Patent and Trademark Office, including: FOOT LOCKER, United States Registration Nos. 1,126,857 and 3,810,824 (registered on November 20, 2010, and on June 29, 2010, respectively); FOOT LOCKER (Stylized), United States Registration No. 1,032,592 (registered on February 3, 1976); and the Striper Logo, United States Registration Nos. 1,588,443 and 1,591,435 (registered on March 27, 1990, and on April 10, 1990, respectively). The Complainant also owns registrations for trademarks in over 80 jurisdictions worldwide (hereinafter collectively referred to as the “FOOT LOCKER Mark”).

Further, the Complainant has an active presence on the Internet, owning multiple domain names and operating a number of websites to which the domain names resolve. These domain names include <footlocker.com> (United States), <footlocker.ca> (Canada), <footlocker.com.au (Australia), and <footlocker.co.uk> (United Kingdom). The Complainant’s websites have become a valuable tool in promoting its athletic apparel, footwear, accessories, and retail stores. The Complainant has used the FOOT LOCKER Mark in connection with its goods and services long before the Respondent’s registration of the Disputed Domain Name.

The Respondent registered the Disputed Domain Name on February 16, 2019. According to a screenshot provided by the Complainant as an annex to the Complaint, the Disputed Domain Name resolved to a website offering gift cards for use in the Complainant’s retail and online stores and displaying the FOOT LOCKER Mark without consent (Annex 6 to the Complaint). Counsel for the Complainant filed a notification of infringement pursuant to the Digital Millennium Copyright Act (the “DMCA Notice”) with the hosting provider, Amazon EC2 (“Amazon”), regarding the Respondent’s unauthorized use of the Complainant’s FOOT LOCKER Mark online. Amazon acknowledged receipt of the Complainant’s DMCA Notice and stated that it would investigate the issue (Annex 7 to the Complaint). Amazon, however, stated that it was “unable to identify the customer responsible for the reported activity.” (Annex 8 to the Complaint). Soon thereafter, the Disputed Domain Name resolved to a different page, displaying an error message stating “Host not reachable, the site may be down.” (Annex 9 to the Complaint). Subsequently, the Disputed Domain Name resolved to the Complainant’s official United States website (Annex 10 to the Complaint). As of the writing of this decision, the website currently states: “This site can’t be reached. footlocker.club’s server IP address could not be found.”

5. Parties’ Contentions

A. Complainant

The following are the Complainant’s contentions:

- The Disputed Domain Name is confusingly similar to the Complainant’s Mark.

- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

- The Respondent registered and is using the Disputed Domain Name in bad faith.

- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) The Disputed Domain Name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.

It is uncontroverted that the Complainant has established rights in the FOOT LOCKER Mark based on its longstanding and continuous use as well as its numerous trademark registrations for the FOOT LOCKER Mark in the United States and in other jurisdictions worldwide. The Disputed Domain Name consists of the FOOT LOCKER Mark in its entirety followed by the generic Top-Level Domain (“gTLD”) “.club”. It is well established that a domain name that wholly incorporates a trademark is confusingly similar to that trademark for purposes of the Policy. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Here, the Disputed Domain Name contains the Complainant’s entire FOOT LOCKER Mark and thus, the Disputed Domain Name is identical to the FOOT LOCKER Mark.

Finally, the addition of a gTLD such as “.club” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.

Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production to demonstrate rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions Third Edition (“WIPO Overview 3.0”), section 2.1.

In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its FOOT LOCKER Mark, nor does the Complainant have any type of business relationship with the Respondent. Finally, the name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights.

Instead, the Panel finds that the Respondent is improperly using the Disputed Domain Name for commercial gain as part of a phishing scheme to deceive the Complainant’s potential customers into believing that they have reached the Complainant’s website. In this scheme, the Disputed Domain Name resolved to a page on which Respondent posted gift cards to fraudulently induce the Complainant’s customers to use the gift cards to purchase goods. “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.” WIPO Overview 3.0, section 2.13.1.

Such a phishing scheme cannot be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Disputed Domain Name. See CMA CGM v. Diana Smith, WIPO Case No. D2015-1774. Thus, the Panel finds that the Respondent does not have rights or legitimate interests in respect of the Disputed Domain Name.

Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.

First, as demonstrated above, the Respondent is using the Disputed Domain Name to perpetrate an impersonation scheme aimed at defrauding unwitting customers with falsely created or nonexistent gift cards. “As noted in section 2.13.1 [of WIPO Overview 3.0], given that the use of a domain name for per se illegitimate activity such as the sale of counterfeit goods or phishing can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith.” WIPO Overview 3.0, section 3.1.4.

Second, the registration of a domain name that is confusingly similar to a trademark by an entity that has no relationship to that mark may be suggestive of opportunistic bad faith. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. Based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith to target the Complainant’s FOOT LOCKER Mark for commercial gain.

Third, the Respondent knew or should have known of the Complainant’s rights in its widely-used FOOT LOCKER Mark when registering the Disputed Domain Name. The Respondent registered the Disputed Domain Name long after the Complainant first used and obtained its numerous trademark registrations for the FOOT LOCKER Mark. It therefore strains credulity to believe that the Respondent had not known of the Complainant or its FOOT LOCKER Mark when registering the Disputed Domain Name. See Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763 (a finding of bad faith may be made where the respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the domain name).

Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <footlocker.club> be transferred to the Complainant.

Lynda M. Braun
Sole Panelist
Date: May 9, 2019

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