WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Foot Locker Retail, Inc. v. Chen Zhi (陈挚)
Case No. D2018-2802
1. The Parties
The Complainant is Foot Locker Retail, Inc. of New York, New York, United States of America (“USA” or “United States”), represented by Kelley Drye & Warren, LLP, USA.
The Respondent is Chen Zhi (陈挚) of Hangzhou, Zhejiang, China.
2. The Domain Name and Registrar
The disputed domain name <footlocker.pro> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2018. On December 7, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 10, 2018, 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 December 11, 2018, the Center sent an email to the Parties in English and Chinese regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on the same day. The Respondent did not comment on the language of the proceeding by the specified 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 in English and Chinese of the Complaint, and the proceedings commenced on December 17, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 6, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 7, 2019.
The Center appointed Rachel Tan as the sole panelist in this matter on January 15, 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
Headquartered in the United States, the Complainant is a global retailer of sportswear and footwear manufactured by leading athletic brands. The Complainant, and its predecessor in-interests, have used the Foot Locker trade name for over forty years. Currently, the Complainant operates approximately 1,755 Foot Locker branded stores in North America, Europe, Asia-Pacific and the Caribbean.
The Complainant owns a worldwide portfolio of trade marks (“FOOT LOCKER Trade Marks”), including:
- FOOT LOCKER, United States Registration No. 1,126,857, registered on November 20, 1979, in class 25;
- FOOT LOCKER, European Union Registration No. 000042168, registered on September 16, 1998, in classes 18, 25, 28, 35 and 42;
- United States Registration No. 1,032,592, registered on February 3, 1976, in class 42; and
- United States Registration No. 1,591,435, registered on April 10, 1990, in class 42.
The Complainant is the registrant of various domain names, including <footlocker.com>, <footlocker.ca>, <footlocker.co.au> and <footlocker.co.uk>.
The disputed domain name was registered by the Respondent on September 23, 2016. The disputed domain name currently redirects users to the website “www.nikesupper.com”, but previously resolved to a website offering for sale leading brands of athletic footwear and on which was displayed the Complainant’s FOOT LOCKER Trade Marks and images.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to the FOOT LOCKER trade mark, the Respondent has no rights or legitimate interests with respect to the disputed domain name, and that the disputed domain name was registered and is being used in bad faith. In particular, the Complainant alleges that the Respondent uses the disputed domain name to operate a website impersonating the Complainant’s official websites from which counterfeit goods are sold. The Complainant further contends that it has made multiple attempts to notify the Respondent of its trade mark rights, but no response has been received from the Respondent. The Complainant requests transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
Initially, the Panel must address the language of the proceeding. Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement unless otherwise agreed by the parties, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The panel may choose to write a decision in either language, or request translation of either party’s submissions.
In this case, the Registrar has confirmed to the Center that the language of the Registration Agreement is Chinese. However, the Complainant has requested that English be adopted as the language of the proceeding.
The Respondent did not comment on the language of the proceeding. The Center proceeded to issue its case-related communications to the Parties in both English and Chinese. The Center decided to accept the Complaint as filed in English, accept a Response in either English or Chinese, and appoint a Panel familiar with both languages.
It is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Panel having considered the circumstances finds that English shall be the language of this proceeding. The reasons are set out below:
(a) The Complainant is a company based in the United States. Requiring the Complainant to submit documents in Chinese would lead to delay and cause the Complainant to incur translation expenses;
(b) The disputed domain name previously and currently resolves to websites in the English language which indicates a level of comprehension of the language;
(c) Even if the Respondent does not possess a sufficient command of English to understand the Complaint, there were ample opportunities for the Respondent to raise an objection. The Center notified the Parties in English and Chinese regarding the language of the proceeding, but the Respondent did not reply; and
(d) The Respondent has failed to participate in the proceeding and has been notified of its default. The Complaint has been submitted in English. No foreseeable procedural benefit may be served by requiring Chinese to be used. On the other hand, the proceeding may proceed expeditiously in English.
Accordingly, the Panel chooses to write the Decision in English,
6.2. Substantive Issues
On the basis of the facts and evidence introduced by the Complainant, and with regard to paragraphs 4(a), (b) and (c) of the Policy, the Panel concludes as follows:
A. Identical or Confusingly Similar
The Complainant submitted a list of its FOOT LOCKER trade mark registrations in the United States, European Union and United Kingdom as well as extracts from the official public records of the United States Patent and Trademark Office. The registrations cover, amongst others, retail sports apparel and footwear store services.
The Panel finds that the Complainant has adduced sufficient evidence to demonstrate its established rights in the FOOT LOCKER Trade Marks.
The disputed domain name replicates the Complainant’s FOOT LOCKER trade mark in its entirety. The addition of “.pro”, a generic Top-Level Domain (“gTLD”), “is a technical requirement of every domain name registration” and as such disregarded under the first element confusing similarity test. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s FOOT LOCKER Trade Marks. Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Complainant contends that the disputed domain name is not the trade name or company name of the Respondent. The Complainant further contends that the Respondent is neither commonly known by this name, nor licensed or authorized to use the FOOT LOCKER Trade Marks. The Respondent’s act of creating a website accessed by the disputed domain name which mimics the Complainant’s official website shows an intention to benefit financially and unlawfully trade on the fame of the FOOT LOCKER Trade Marks.
The Panel notes that the disputed domain name currently redirects Internet users to a website retailing Nike branded footwear at heavily discounted prices. The Complainant has submitted archived web pages showing that the disputed domain name previously resolved to a copycat store selling athletic footwear and on which the Complainant’s FOOT LOCKER Trade Marks and physical store images were prominently displayed. This Panel notes that the online store failed to prominently disclose the lack of a commercial relationship between the Complainant and the Respondent. Such conduct by the Respondent does not represent a bona fide offering of goods or services or support a recognition of a legitimate claim to the disputed domain name, but rather an intention to create a false association with the Complainant in order to gain financial benefit.
Pursuant to the Policy, the Panel has not found any evidence to suggest that the Respondent has any rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that the Complainant has satisfied the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Complainant has adduced sufficient evidence to demonstrate that the FOOT LOCKER Trade Marks have garnered a strong reputation in the United States and around the world. The disputed domain name was registered well after the first registration of the Complainant’s FOOT LOCKER Trade Marks which by then had gained a worldwide reputation through long and extensive use.
In the past, the disputed domain name was used to access an e-commerce store bearing the FOOT LOCKER Trade Marks and images to sell leading athletic footwear at extremely low prices, without authorization. The layout of the website mimics key elements of the Complainant’s official websites without any disclaimers of non-affiliation. Thus, it is clear that the Respondent had full knowledge of the Complainant’s trade mark rights and services when it registered the disputed domain name and was using it to direct Internet traffic to its store to gain illegitimate profit through false association. The Panel considers that it is not necessary to address the Complainant’s allegations regarding the sale of counterfeit goods by the Respondent. The Respondent is currently using the disputed domain name to redirect Internet users to a website offering Nike branded athletic footwear for sale at heavily discounted prices. The continuous holding and act of redirection in this case can establish bad faith insofar as the Respondent is disrupting the Complainant’s business and retains control over the redirection thus creating a real or implied ongoing threat to the Complainant.
Based on the above facts, it is implausible to contemplate of any good faith use to which the disputed domain name may be put by the Respondent.
Taking into account all the circumstances of the case, the Panel finds that the Respondent must have known of the Complainant before registering the disputed domain name and, considering the prior use, the redirections and by continuing to hold the disputed domain name, the Respondent has registered and is using the disputed domain name in bad faith.
Therefore, the Panel concludes that the Complainant has satisfied the third element under 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.pro> be transferred to the Complainant.
Date: January 28, 2019