The Complainant is Foot Locker Retail, Inc. of New York, New York, United States of America (“US”), represented by Kelley Drye & Warren, LLP, US.
The Respondent is Lin Changyong of NanChang, Jiangxi, China.
The disputed domain name <footlockersau.com> is registered with Xin Net Technology Corp. (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2016. On July 28, 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 1, 2016, the Center transmitted by email to the Parties a request in both English and Chinese for 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 1, 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 proceedings commenced on August 9, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 29, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 30, 2016.
The Center appointed Sok Ling MOI as the sole panelist in this matter on August 31, 2016. 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 Complainant, a US-headquartered company, is one of the world’s leading athletic footwear and apparel retailers. Its corporate name and trade mark FOOT LOCKER has been used by the Complainant and its predecessors in connection with its products and retail store services in the US and throughout the world for nearly 40 years. It has some 1,900 stores located in 21 countries including the US, throughout Europe, Australia and New Zealand.
The Complainant owns trade mark registrations for FOOT LOCKER in the US (including US Reg. Nos. 1,032,592 and 1,126,857 registered on February 3, 1976 and on November 20, 1979 respectively) as well as in several countries and jurisdictions worldwide.
The Complainant has an active presence on the Internet, operating a number of websites including “www.footlocker.com”, “www.footlocker.ca”, “www.footlocker.com.au” and “www.footlocker.eu”.
The disputed domain name <footlockersau.com> was registered by the Respondent on July 5, 2016, long after the Complainant’s first use and registration of its FOOT LOCKER trade mark. The disputed domain name resolves to a website with contents entirely in English, seemingly offering for sale similar athletic footwear and apparel products under brands that are marketed and sold by the Complainant.
5.1 The Complainant refers to its business, trade marks and registered domain names and claims that the disputed domain name is identical and confusingly similar to those trade marks and domain names.
5.2 The Complainant contends that given the fame of the Complainant’s trade mark, there are no imaginable circumstances under which the Respondent could legitimately use the disputed domain name, especially since the Respondent’s name does not correspond to the disputed domain name. It contends that as the Complainant has not licensed or otherwise authorized the Respondent to use its trade mark or to apply for any domain name incorporating its FOOT LOCKER trade mark, the Respondent’s use of the disputed domain name to promote its competing retail store services to sell footwear and apparel online is neither a legitimate noncommercial use or fair use of the disputed domain name.
5.3 The Complainant contends that given the fame of the Complainant’s trade mark, and especially since the Respondent is allegedly in a competitive footwear and apparel retail business, the Respondent’s knowledge of the Complainant’s rights can be inferred. The Complainant further contends that the disputed domain name has been registered to create confusion and mislead Internet users into believing that the Respondent’s website is in some way connected with or endorsed by the Complainant, thereby capitalising on the goodwill of the Complainant’s trade mark for its own commercial gain. The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith.
For all of the above reasons, the Complainant requests for the transfer of the disputed domain name to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Paragraph 10(b) and (c) of the Rules requires the Panel to ensure that the proceeding takes place with due expedition and that the parties are treated fairly and given a fair opportunity to present their respective case.
The language of the Registration Agreement for the disputed domain name is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding.
On the record, the Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:
(a) the disputed domain name is registered in Latin characters, rather than Chinese script; and
(b) the disputed domain name resolves to a website which is entirely in English.
Additionally, the Panel notes that:
(a) the Center has notified the Respondent of the proceeding in both Chinese and English;
(b) the Center informed the Respondent that it would accept a Response in either English or Chinese; and
(c) the Respondent has been given the opportunity to present its case in this proceeding and to respond to the issue of the language of the proceeding but has chosen not to do so.
Considering the above circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in its ability to articulate the arguments for this case. To require the Complaint to be translated into Chinese would in the circumstances of this case cause an unnecessary cost burden to the Complainant and unfairly disadvantage the Complainant. The proceeding would be unnecessarily delayed.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that (i) it shall accept the Complaint and all supporting materials as filed in English; and (ii) English shall be the language of the proceeding and the decision will be rendered in English.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following three elements to obtain an order for the disputed domain name to be transferred:
(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
On the basis of the evidence introduced by the Complainant, the Panel concludes as follows:
The Panel accepts that the Complainant has rights in FOOT LOCKER by virtue of its use and registration of the same as a trade mark.
The disputed domain name effectively incorporates the Complainant’s trade mark FOOT LOCKER in its entirety. The addition of the letter “s” and the acronym “au” (which may be interpreted as the abbreviated code for Australia) does not serve to sufficiently distinguish or differentiate the disputed domain name from the Complainant’s trade mark. The addition of the generic Top-Level-Domain (gTLD) “.com” does not impact on the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant’s trade mark.
Consequently, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark.
Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.
Under paragraph 4(a)(ii) of the Policy, the Complainant bears the burden of establishing that the Respondent lacks rights or legitimate interests in the disputed domain name. However, once the Complainant makes a prima facie showing under paragraph 4(a)(ii), the burden of production shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao Internet foshan co, ltd, WIPO Case No. D2013-0974.
The Complainant has clearly established that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the FOOT LOCKER trade mark or register the disputed domain name. There is also no evidence suggesting that the Respondent is commonly known by the disputed domain name or that the Respondent has any rights in the term “foot locker”.
The Panel notes that the Respondent is using the disputed domain name to publish a website that offers for sale athletic footwear and apparel products under brands which are also marketed and sold by the Complainant. Given the long standing use and fame of the Complainant’s trade mark, it appears that the Respondent has intent to, for commercial gain, mislead Internet users into believing that its website “www.footlockersau.com” is somehow connected with the Complainant, and divert Internet users looking for the Complainant’s products to the Respondent’s website. The Panel does not find such use to be bona fide use of the disputed domain name for the purposes of the Policy.
The Panel is satisfied that the Complainant has made out a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production thus shifts to the Respondent to establish his rights or legitimate interests in the disputed domain name.
The Respondent has failed to respond. Since no response was filed, the prima facie case has not been rebutted. The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s 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.
Given the substantial Internet presence the Complainant enjoys, it is reasonable to believe that the Respondent has prior knowledge of the Complainant’s rights in the FOOT LOCKER trade mark at the time of its registration of the disputed domain name. Registration of a domain name that incorporates the Complainant’s long-established and widely-known trade mark suggests opportunistic bad faith.
The Panel determines that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s website. As such, the Panel is satisfied that the Respondent is using the disputed domain name for mala fide purpose and illegitimate financial gain, and the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case.
The Panel also notes that efforts to contact the Respondent at the physical address provided to the Registrar failed which suggests that the Respondent had provided false contact details.
Taking into account all the circumstances, it is adequate to conclude that the Respondent has registered and used the disputed domain name in bad faith.
Accordingly, the Complainant has satisfied the requirements of 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 <footlockersau.com> be transferred to the Complainant.
Sok Ling Moi
Sole Panelist
Date: September 14, 2016