WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Foot Locker Retail, Inc. v. San Zhang
Case No. D2020-2455
1. The Parties
Complainant is Foot Locker Retail, Inc., United States of America (“United States”), represented by Kelley Drye & Warren, LLP, United States.
Respondent is San Zhang, China.
2. The Domain Name and Registrar
The disputed domain name <footlockersales.com> is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 22, 2020. On September 22, 2020, the Center transmitted a request to the Registrar by email, for registrar verification in connection with the disputed domain name. On September 22, 2020, the Registrar transmitted its verification response to the Center by email, 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 September 25, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 30, 2020.
The Center verified that the Complaint, along 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 Respondent of the Complaint, and the proceedings commenced on October 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 22, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 23, 2020.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on November 4, 2020. 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
Complainant is Foot Locker Retail, Inc, a leading athletic footwear and apparel retailer, operating worldwide through its online stores, among other means. Complainant is offering its goods and services under the name “FOOT LOCKER”.
Complainant owns rights in the FOOT LOCKER sign, that has been registered and has trademarks around the world, including the United States and many other countries.
Complainant is also offering its goods and services through the domain name <footlocker.com>.
Respondent is an individual, San Zhang, located in China.
Respondent registered the disputed domain name on November 29, 2019. The disputed domain name resolves to a website that purports to promote and offer goods that are the same or related to the goods and services offered under the FOOT LOCKER Marks.
5. Parties’ Contentions
Firstly, Complainant alleges that the disputed domain name is identical to its registered trademarks and therefore confusingly similar. Complainant argues that it has exclusive rights in the FOOTLOCKER sign for many years, in connection with “the promotion and sale of athletic apparel, footwear and accessories, and retail store services” and prior to the disputed domain name’s registration.
Complainant alleges it registered the FOOT LOCKER trademarks in over 100 jurisdictions worldwide. It also alleged that it expended significant time and money in order to promote its goods and services under the FOOT LOCKER trademarks.
Complainant argues that it is highly active on the Internet, through several websites including “www.footlocker.com” and domain names registered in various countries, with specific country-code Top Level Domain (“ccTLDs”). It also advertises goods and services via various social networks accounts that have over 20 million followers combined.
Complainant stated that its trademarks are well known by virtue of its excellence, throughout the world and that is has established a valuable reputation.
With regard to the elements above, Complainant alleges that the disputed domain name reproduces identically its well known FOOT LOCKER trademarks, with the mere addition of the generic term “sales” which does not dispel the likelihood of confusion. Indeed, Complainant adds that this generic term is commonly used in association with its business and therefore increases the likelihood of confusion in consumers’ mind, who may believe this is an official website.
Secondly, Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name and is not known under the FOOT LOCKER sign. Respondent was neither authorized by Complainant nor one of its licensees.
Complainant alleges that the sole intention of Respondent was to benefit from its business and reputation, since it registered the disputed domain name that is identically reproducing its prior trademarks.
According to Complainant, there is no doubt that Respondent knew about its business and that he registered the disputed domain name for illegal purposes. Complainant helds that Respondent failed to make a bona fide offering of goods and services since it uses the disputed domain name to offer goods that are identical or related to Complainant. Such a use does not confer any right to Respondent and could not be considered as a bona fide offering of goods and services.
Complainant further argues that the use of the disputed domain name was intended to attract Complainant’s consumers, which is not a legitimate use. Respondent takes unfair advantage of Complainant’s popularity and has no rights or legitimate interests in the disputed domain name.
Thirdly, Complainant states that the disputed domain was registered and is used in bad faith. Regarding the long-standing use of its trademarks, Complainant alleges that it was registered in bad faith, and particularly since it was registered to offer goods and services that are identical or similar to the ones offered by Complainant, under the FOOT LOCKER trademarks. Therefore, Respondent knew about Complainant when he registered the disputed domain name and did it for illegal purposes.
Furthermore, Complainant argues that the disputed domain name is used in bad faith since Respondent intentionally attempted to attract visitors and therefore created a likelihood of confusion with Complainant, disrupting its business.
Finally, Complainant states that Respondent also uses the disputed domain name in bad faith since it reproduces Complainant’s trademark associated with an offer of goods and services identical to those of Complainant.
Respondent did not reply to Complainant’s contentions and is, therefore, in fault.
6. Discussion and Findings
Paragraph 15(a) of the Rules provides that the “Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraphs 10(b) and 10(d) of the Rules provides that: “In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case” and that “The Panel shall determine the admissibility, relevance, materiality and weight of the evidence”.
The Policy provides, at paragraph 4(a), that each of the three findings must be made in order for a Complainant to prevail:
i. The domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Panel to consider in the first place, whether Complainant has established relevant trademark rights. The Panel is also required to examine under paragraph 4(a)(i) of the Policy whether the disputed domain name is identical or confusingly similar to Complainant’s trademarks. This test involves “a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Panel finds that Complainant has duly shown it owns trademark rights in the FOOT LOCKER sign, at least regarding the United States FOOT LOCKER trademark, No. 4115829, of March 20, 2012. However, Complainant did not prove the other trademarks mentioned in its Complaint have been renewed or are still active and duly registered. Panel cannot therefore infer that it has rights upon those trademarks.
Nevertheless, the disputed domain name reproduces the Complainant’s FOOT LOCKER trademark, identically, with the mere addition of the term “sales” that is purely generic and may directly refer to Complainant’s business. The mere addition of this term increases the likelihood of confusion since consumers may believe the disputed domain name points to the official Complainant’s website offering goods for sale.
Furthermore, it is commonly considered that the generic Top Level Domain (“gTLD”) should be disregarded considering the first element of the Policy. The Panel finds that the present gTLD “.com” should be disregarded as well.
Previous Panel already had the occasion to state on these points, regarding the domain name <jppumasales.com>, in the WIPO Case No. D2020-2220, Puma SE v. Super Privacy Service LTD c/o Dynadot / Andingmen, Tina Nono: “In the present case, even with the addition of ‘jp’ and ‘sales’, an average observer of the disputed domain name will recognize ‘puma’ in it. Therefore, ‘jp’ and ‘sales’ do not affect the finding of confusing similarity between the disputed domain name and the Complainant’s trademark. The top level domain (‘TLD’) ‘.com’ in the disputed domain name is disregarded under the test for confusing similarity.”
The Panel finds that Complainant duly shown it owns trademark rights in the FOOT LOCKER sign and therefore satisfies paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires a complainant to demonstrate that a respondent has no rights or legitimate interests in the disputed domain name.
Previous UDRP panels duly find that Complainant has made a prima facie case, from the moment Respondent failed to show it has rights or legitimate interests in the disputed domain name. See for example, Carvana, LLC v. Domain Administrator, Fundacion Privacy Services LTD, WIPO Case No. D2020-1569: “The Panel considers the submissions put forward by the Complainant as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case.”
In this case, Complainant duly established that Respondent has no rights or legitimate interests neither in the FOOT LOCKER sign, nor in the disputed domain name. Respondent did not respond to its contentions and is, therefore, in default. He did not try to defend any of its rights, nor a legitimate interest that could justify the registration and use of the disputed domain name.
Therefore, and considering the previous elements, the Panel here finds that Complainant made a prima facie case and therefore, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name and that Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires Complainant to demonstrate that the disputed domain name was registered and is being used in bad faith.
Complainant has stated that Respondent could not have ignored its business at the time of the disputed domain name’s registration, considering its global reputation. However, the Panel finds that Complainant did not bring any evidence of its reputation.
Nevertheless, Complainant shows it owns several social networks accounts, with a high number of followers, that shows its renown, at least online. The Panel finds that even a quick search on the Internet would point to Complainant’s business.
The Panel finds that even if there are only evidences of Complainant’s Internet presence, Respondent should have known about Complainant’s business at the time he registered the disputed domain name.
Furthermore, Complainant has duly argued that considering the website that has been set up on the disputed domain name, Respondent obviously had Complainant in mind at the time of its registration and is using the disputed domain name in bad faith.
Indeed, Respondent is using the disputed domain name to offer goods and services that are at least similar to those offered by Complainant, and mainly identical. The website that has been set up reproduces Complainant’s FOOT LOCKER trademarks.
It has been previously established that such a use, targeting Complainant’s consumers and disrupting its business implies bad faith. See for example Novomatic AG v. Benjamin Kang, WIPO Case No. D2020-1167: “As to bad faith use, by using the disputed domain name in connection with a website offering services competing to the services of the Complainant, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant’s website to its own for commercial gain as set out under paragraph 4(b)(iv) of the Policy. The Panel is therefore satisfied that the Respondent is also using the disputed domain name in bad faith.”
Considering that the domain name is reproducing Complainant’s trademark and it is used in connection with the same goods or services, the Panel finds that such a use in bad faith implies necessarily a registration in bad faith. Indeed, it shows that Respondent had Complainant in mind at the time of the registration and has registered the disputed domain name with the specific aim of targeting Complainant’s business.
Considering the above elements, the Panel finds that Respondent registered and uses the disputed domain name in bad faith.
Complainant has therefore satisfied paragraph 4(a)(iii) 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 <footlockersales.com> be transferred to Complainant.
Date: November 18, 2020