WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Foot Locker Retail, Inc. v. Protection Domain
Case No. D2015-0867
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 Protection Domain of Panama City, Panama.
2. The Domain Name and Registrar
The disputed domain name <myfootlocker.com> is registered with Above.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 21, 2015. On May 21, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 26, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on June 9, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 29, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 30, 2015.
The Center appointed Petter Rindforth as the sole panelist in this matter on July 6, 2015. 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.
The Panel shall issue its Decision based on the Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in the English language.
4. Factual Background
The Complainant is the owner of a number of registered trademarks including the words “foot locker” and versions thereof, such as the following registrations issued by the United States Patent and Trademark Office (“USPTO”):
- FOOT LOCKER (device), Registration No. 1,032,592, registered on February 3, 1976 for services in Class 42;
- FOOT LOCKER (word), Registration No. 1,126,857, registered on November 20, 1979 for goods in Classes 24 and 28;
- FOOTLOCKER.COM (word), Registration No. 2,554,892, registered on April 2, 2002 for services in Classes 35 and 42.
The disputed domain name <myfootlocker.com> was registered on April 12, 2012. No detailed information is provided about the Respondent’s activities, apart from what is mentioned below by the Complainant.
5. Parties’ Contentions
The Complainant and its predecessors-in-interest have used the trademark FOOT LOCKER for over 40 years in the United States and throughout the world in connection with the sale of athletic apparel, footwear and accessories, and retail store services.
The Complainant is a leading global athletic footwear and apparel retailer, with approximately 1,911 stores located in 21 countries including 1,171 in the United States, Puerto Rico, the United States Virgin Islands, and Guam, 129 in Canada, 518 in Europe, and 93 in Australia and New Zealand. The domestic stores have an average of 2,400 selling square feet and the international stores have an average of 1,500 selling square feet. The Complainant has used the FOOT LOCKER and FOOTLOCKER.COM trademarks in connection with its retail stores services prior to the Respondent’s registration of <myfootlocker.com>.
The Complainant informs that the Complainant owns trademark registrations for FOOT LOCKER in over 80 countries worldwide, and states that the FOOT LOCKER trademarks are well known throughout the world by virtue of the excellence of the Complainant’s goods and services, its long standing use, extensive promotion, advertising and unsolicited publicity relating to the trademarks.
The Complainant has an active presence on the Internet, operating a number of websites including <footlocker.com>, <footlocker.ca>, <footlocker.com.au>, and <footlocker.eu>.
According to the Complainant, the disputed domain name currently redirects to the Complainant’s website “www.footlocker.com” without authorization. The disputed domain name also uses the Complainant’s FOOT LOCKER trademarks without the Complainant’s authorization or consent.
The Complainant states that <myfootlocker.com> is confusingly similar to the Complainant’s FOOT LOCKER trademarks, in which the Complainant has exclusive rights.
The Complainant further states that the Respondent has no rights or legitimate interests in <myfootlocker.com>, as it is not the trade name or company name of the Respondent and in fact the Respondent intends to auction off <myfootlocker.com> to the highest bidder. The Respondent is not commonly known by that name, is not a licensee of the Complainant and is not otherwise authorized to use the Complainant’s FOOT LOCKER trademarks.
The Respondent’s registration of the disputed domain name was clearly made for the purpose of creating a false association with the Complainant and its famous FOOT LOCKER retail stores.
Finally, the Complainant states that <myfootlocker.com> was registered and is being used in bad faith.
The Complainant’s FOOT LOCKER trademarks have a strong reputation and are widely known and well recognized in the United States and throughout the world, and the Respondent must have been aware of the Complainant’s rights in the FOOT LOCKER trademarks when registering the disputed domain name. By including the entirety of the Complainant’s FOOT LOCKER trademark in <myfootlocker.com>, the Respondent is seeking to create a false association with the Complainant.
The Respondent clearly intended to attract Internet users to its retail store website and capitalize on the goodwill of the Complainant’s famous FOOT LOCKER trademarks for its own commercial gain.
The Complainant requests that the Panel issue a decision that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has obtained multiple trademark registrations for FOOT LOCKER (e.g., Registration No. 1,126,857 of November 20, 1979) with the USPTO.
The Panel finds that the Complainant has established rights in the FOOT LOCKER trademark for purposes of the Policy through its trademark registrations with the USPTO. SeeJanus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201 (finding that panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.)
The relevant part of the disputed domain name is “myfootlocker”. The addition of the generic Top-Level Domain “.com” is insufficient to distinguish the disputed domain name from the Complainant’s mark.
The Panel concludes that the disputed domain name consists of the Complainant’s trademark FOOT LOCKER, with the addition of the generic word “my”. As stated in many UDRP cases, the addition of a generic term does not necessarily distinguish a domain name from a trademark. In this case, FOOT LOCKER is well known, and the word “my” before the trademark only indicates that it refers to a specific Foot Locker website or to someone’s personal Foot Locker shops or goods.
The Panel therefore concludes that <myfootlocker.com> is confusingly similar to the Complainant’s trademark FOOT LOCKER.
B. Rights or Legitimate Interests
Once a complainant establishes a prima facie case of the second element of the Policy, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
The Respondent has no rights to use the Complainant’s trademark or variations thereof and is not an authorized agent or licensee of the Complainant’s products, services or trademarks. There is also nothing on the record indicating that the Respondent is commonly known by the disputed domain name. As such, the Panel finds the Complainant has established a prima facie case on the second element.
By not submitting a formal Response, the Respondent failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, or in any other manner, any rights or legitimate interests in the disputed domain name or to rebut the Complainant’s prima facie case.
The Panel notes that <myfootlocker.com> seems to be used only for offering sale of the disputed domain name. As <myfootlocker.com> is confusingly similar to a well-known trademark, such use cannot create rights or legitimate interests as such.
Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant refers to the Complainant’s United States trademarks, registered prior to the registration of the disputed domain name, whereas the Respondent’s home country is Panama. Arguably this alone may be insufficient in certain circumstances to indicate that the Respondent was aware of the Complainant at the time of registering the disputed domain name.
However, the Panel also notes that the Complainant’s trademark seems to be used and well known since long also outside the United States. Further, the fact that the Respondent has registered the Complainant’s full and distinctive trademark FOOT LOCKER, only adding the generic word “my” before the trademark, strongly indicates that the disputed domain name was indeed registered with full knowledge of the Complainant’s trademark.
As to the use in bad faith, the Complainant states that “the disputed domain name currently redirects to the Complainant’s website <footlocker.com> without authorization”. However, the evidence provided by the Complainant to support that statement (Exhibit E of the Complaint) only shows a printout of the Complainant’s main website, without any evidence that this was a result of using <myfootlocker.com>. The Panel can therefore not accept this statement as proof of bad faith use.
In addition, the Complainant (by Exhibit F of the Complaint) also argue that the Respondent has offered <myfootlocker.com> for sale. Again, the email referred to is not clearly directed from the Respondent. However, the email does in fact show that the disputed domain name is for sale, and without any response from the Respondent, the Panel cannot make any other conclusion than that the offer for sale (presumably extending the out-of-pocket costs for the disputed domain name) is originated and supported by the Respondent.
As stated in Trip.com, Inc. v. Daniel Deamone, WIPO Case No. D2001-1066, “there is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent. Although Respondent’s offer of the Domain Name for sale was not made specifically to Complainant or its competitor, offers for sale to the public may nevertheless constitute evidence of bad faith under the Policy.”
In this case, the disputed domain name clearly relates to a distinctive and well-known trademark, the Respondent has not provided any reply or information related to legitimate interests or good faith registration and use, and the only clear use throughout the years is the offer to sell <myfootlocker.com>.
Thus, the Panel concludes that the disputed domain name was registered and is being used in bad faith within the meaning of 4(b)(iv) of the Policy, and that the Complainant has succeeded in proving the three elements of paragraph 4(a) of the Policy.
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 <myfootlocker.com> be transferred to the Complainant.
Date: July 17, 2015