WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Foot Locker Retail, Inc. v. Li Guoning
Case No. D2016-1552
1. The Parties
The Complainant is Foot Locker Retail, Inc. of New York, New York, United States of America (“United States” or “U.S.”), represented by Kelley Drye & Warren, LLP, United States.
The Respondent is Li Guoning of Changsha, Hunan, China.
2. The Domain Name and Registrar
The disputed domain name <footlocker-fr.com> is registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2016. On July 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 1, 2016, 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. On August 4, 2016, the Center informed the Parties in both Chinese and English that the Registration Agreement is in Chinese and requested them to comment on the language of the proceeding. The Complainant submitted by email a request for English to be the language of the proceeding on August 4, 2016. The Respondent did not comment on the language of the proceeding by the specific due date.
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 and 4, the Center formally notified the Respondent of the Complaint in both English and Chinese, and the proceeding commenced on August 12, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 1, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 2, 2016.
The Center appointed Francine Tan as the sole panelist in this matter on September 7, 2016. The Panel finds that it was properly constituted. The Panel 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 noted that due to an administrative oversight, it appears that the document entitled “Notification of Complaint and Commencement of Administrative Proceeding” was not copied to an email address present on the website at the disputed domain name. On September 22, 2016, the Panel issued the Procedural Order No. 1, notifying the Respondent of the document entitled “Notification of Complaint and Commencement of Administrative Proceeding”, and the Complaint (including annexes), and allowing the Respondent a period of five days to indicate whether it wished to submit a response. As the Respondent did not respond to the Panel’s Procedural Order No. 1, the Panel has proceeded to render its decision.
4. Factual Background
The Complainant is the owner of registered trade marks in the U.S. for FOOT LOCKER (U.S. Registration Nos. 1,032,592, registered on February 3, 1976, and 1,126,857, registered on November 20, 1979) and for FOOTLOCKER.COM (U.S. Registration No. 2,554,892, registered on April 2, 2002). The FOOT LOCKER mark has also been registered in over 80 countries around the world.
The Complainant states that for nearly 40 years, the Complainant and its predecessors-in-interest have used the FOOT LOCKER mark in the U.S. and throughout the world in connection with the sale of athletic apparel, footwear and accessories, and retail store services. It is a leading global athletic footwear and apparel retailer. It has approximately 1,911 stores which are located in 21 countries including 1,171 in the U.S., 129 in Canada, 518 in Europe and 93 in Australia and New Zealand. The FOOT LOCKER and FOOTLOCKER.COM marks have been in use prior to the Respondent’s registration of the disputed domain name.
The Complainant operates a number of websites including “www.footlocker.com” which is dedicated to the promotion and sale of the Complainant’s goods and services in the U.S. The Complainant also has an active presence on country-specific domain name registrations in Canada (<footlocker.ca>), in Australia (<footlocker.au>) and in Europe (<footlocker.eu>).
The disputed domain name was registered on June 2, 2016. The disputed domain name was used to promote and to purportedly sell footwear and apparel brands that are marketed and sold by the Complainant. The website to which the disputed domain name resolves also shows the unauthorized use of the Complainant’s FOOT LOCKER trade mark.
5. Parties’ Contentions
(a) The disputed domain name is nearly identical and confusingly similar to the Complainant’s registered FOOT LOCKER and FOOTLOCKER.COM trade marks. It contains the entirety of the Complainant’s FOOT LOCKER trade mark and it gives the impression to consumers that it is the French version of the Complainant’s official website.
(b) The Respondent has no rights or legitimate interests in the disputed domain name. The disputed domain name is not the trade name or company name of the Respondent; the Respondent is not commonly known by that name, is not a licensee of the Complainant, and is not otherwise authorized by the Complainant to use the FOOT LOCKER mark. The Respondent’s sole intention in registering the disputed domain name must have been to benefit financially from, and unlawfully trade upon, the renown associated with the Complainant’s FOOT LOCKER marks. Given the fame of the Complainant’s FOOT LOCKER marks, it is clear that the Respondent was well aware of the Complainant’s rights therein at the time it registered the disputed domain name.
(c) The disputed domain name was registered and is being used in bad faith. The Complainant asserts its FOOT LOCKER marks are well known by virtue of the quality of its goods and services, its long-standing use, extensive promotions, advertising and publicity relating to its marks and related goods and services. The Complainant has also established a significant level of goodwill in its FOOT LOCKER brand. The Respondent must have been aware of the Complainant’s rights in the FOOT LOCKER marks when it registered the disputed domain name; the inference can be made in view of the fame and long-standing use of the Complainant’s FOOT LOCKER marks. By creating the website which offers goods that are the same as those offered on the Complainant’s “www.footlocker.com” website, the Respondent is seeking to create a false association with the Complainant and to attract Internet users to its website and capitalize on the goodwill of the Complainant for its own commercial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Preliminary Issue: Language of the Proceeding
The language of the Registration Agreement is Chinese but the Complainant requested that English be the language of the proceeding. The reasons given in support of the request were:
(i) the Respondent appears to be very familiar with the English language since the disputed domain name resolves to a website which is entirely in English; and
(ii) the Complainant is not able to communicate in Chinese and would have to incur substantial expense for translation, and this fact also would cause the administrative proceeding to be unduly delayed.
The Respondent did not comment on the language of the proceeding.
Paragraph 11(a) of the Rules provides that in the absence of an agreement between the parties or unless specified otherwise in the Registration Agreement, the language of the proceeding shall be the language of the Registration Agreement. The panel, nevertheless, has the discretion to determine otherwise, “having regard to the circumstances of the administrative proceeding”. The panel is required to ensure that the administrative proceeding takes place with “due expedition” (paragraph 10(b), Rules).
The Panel determines in this case that it would be appropriate for English to be the language of the proceeding. The disputed domain name comprises a combination of English words, namely, “foot” and “locker”, and the website is presented in English. It shows that the Respondent is familiar with the English language and that its website is targeted at English-speaking consumers.
Given the opportunity to dispute the Complainant’s request for English to be the language of the proceeding, the Respondent did not respond at all, i.e., neither to the Center’s email on the language of the proceeding, nor to the administrative proceeding as a whole. The Respondent has been apprised of the nature of the dispute and of the relevant deadlines for response, since all communications by the Center to the Respondent were sent in Chinese as well as English. The Panel therefore believes that the Respondent will not be prejudiced by a decision for English to be the language of the proceeding. Requiring the Complainant to translate the Complaint and annexes into Chinese would, on the other hand, result in a substantial delay in the proceeding. For the above reasons, the Panel determines that it would be appropriate for English to be the language of the proceeding.
6.2. Substantive Issues
A. Identical or Confusingly Similar
The Complainant has shown it has rights in the marks FOOT LOCKER and FOOTLOCKER.COM. The disputed domain name is confusingly similar to these marks. The FOOT LOCKER mark has been incorporated in its entirety in the disputed domain name, and the FOOTLOCKER.COM mark has been largely incorporated therein as well. The only difference between the disputed domain name and the FOOT LOCKER mark lies in the additions of the hyphen and letters “fr”, and of the generic Top-Level Domain (“gTLD”) “.com”; the only difference between the disputed domain name and the Complainant’s FOOTLOCKER.COM mark lies in the addition of the hyphen and letters “fr”.
The gTLD “.com” in the disputed domain name does not remove the confusing similarity with the Complainant’s FOOT LOCKER mark since it is an inherent technical feature of the disputed domain name. The Panel also finds that the addition of the element “-fr” also does not serve to remove the confusing similarity with the Complainant’s FOOT LOCKER and FOOTLOCKER.COM marks. The Complainant’s trade marks are clearly identifiable in the disputed domain name and the addition of the element “-fr” only serves to provide a descriptive function, namely to point to a geographical location (i.e., France). (See paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).)
The Panel finds that the Complainant has satisfied the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name which the latter has not rebutted. The Complainant is only required to establish a prima facie case in relation to paragraph 4(a)(ii) of the Policy, after which the burden shifts to the Respondent to produce evidence demonstrating its rights or legitimate interests in the disputed domain name. (See paragraph 2.1 of the WIPO Overview 2.0.)
There is no evidence to suggest that the disputed domain name is the name by which the Respondent is commonly known. The Complainant did not authorize the Respondent to use the FOOT LOCKER mark or to register a domain name incorporating the trade mark. The Respondent failed to respond in the proceeding and thereby failed to rebut the Complainant’s prima facie case that it has no rights or legitimate interests in the disputed domain name. Moreover, the Panel finds that the use to which the disputed domain name has been put, as set out in more detail below, is not of a nature that would give rise to any rights or legitimate interests in the disputed domain name for the purposes of the Policy.
The Panel therefore finds that the Complainant has satisfied the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that the disputed domain name has been registered and used in bad faith. The Respondent’s registration of the disputed domain name incorporating the Complainant’s FOOT LOCKER trade mark, prominent use of the Complainant’s FOOT LOCKER mark on its website, and use of the website to sell brands of footwear and apparel which the Complainant also sells under its FOOT LOCKER trade marks and at its website at “www.footlocker.com”, are all circumstances which show that the Respondent was well aware of the Complainant and of its trade marks when it registered the disputed domain name.
The Panel is in agreement with the Complainant’s contention that the Respondent’s intention must have been to create a false impression of association with the Complainant and/or that the Respondent’s website is the genuine country-specific website of the Complainant (i.e., in France). The Panel is of the view that the Respondent has sought to “attract, for commercial gain, Internet users to [its] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] website or location or of a product or service on [the Respondent’s] website or location” (paragraph 4(b)(iv) of the Policy).
The Panel therefore finds that the Complainant has satisfied the third element 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 <footlocker-fr.com> be transferred to the Complainant.
Date: September 29, 2016