WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Foot Locker Retail, Inc. v. zhangshasha / zhang shasha

Case No. D2016-1541

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 zhangshasha / zhang shasha of Zhoukou, Henan, China.

2. The Domain Name and Registrar

The disputed domain name <footlocker-it.com> is registered with West263 International Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 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 3, 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 3, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On August 3, 2016, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

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 Chinese and English, and the proceedings 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 Jonathan Agmon as the sole panelist in this matter on September 9, 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.

4. Factual Background

The Complainant is a corporation incorporated in the United States. The Complainant offers products for a wide variety of athletic activities. Its approximately 1,911 stores are located in 21 countries including 1,171 in the United States, Puerto Rico (Unincorporated Territory of the U.S.), the United States Virgin Islands (Unincorporated Territory of the U.S.), and Guam (Unincorporated Territory of the U.S.), 129 in Canada, 518 in Europe, and a combined 93 in Australia and New Zealand.

The Complainant is the owner of numerous trademark registrations for the FOOT LOCKER and FOOTLOCKER.COM (hereinafter: “FOOT LOCKER trademarks”) marks around the world. For example: U.S. Registration No. 1,032,592 – FOOT LOCKER with the registration date of February 3, 1976; U.S. Registration No. 1,126,857– FOOT LOCKER with the registration date of November 20, 1979; U.S. Registration No. 2,554,892 – FOOTLOCKER.COM of with the registration date of April 2, 2002, and more.

The disputed domain name was registered on June 24, 2016.

The Complainant has an active presence on the Internet, operating a number of websites including “www.footlocker.com”, “www.footlocker.ca”, “www.footlocker.eu” and more.

The disputed domain name currently resolves to a page displaying the message: “Apache is functioning normally”. At the time of filing, according to the Complainant’s evidence, the disputed domain name resolved to a website promoting a competing retail store services.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is nearly identical or confusingly similar to the Complainant’s FOOT LOCKER trademarks.

The Complainant further argues that the disputed domain name registered and used by the Respondent is confusingly similar to the well-known and distinctive FOOT LOCKER trademarks and that it contains the entirety of Complainant’s FOOT LOCKER trademarks, and the Respondent uses the Complainant’s FOOT LOCKER trademark in an attempt to make consumers believe that the disputed domain name is the Italian version of the Complainant’s official site.

The Complainant further argues that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant further argues that considering the fame of the Complainant’s trademarks, and the Respondent’s decision to register and use the disputed domain name to promote its competing retail store services, it is clear that the Respondent was well aware of the Complainant’s rights in the FOOT LOCKER trademarks at the time registering the disputed domain name.

The Complainant further argues that the Respondent has registered and is using the disputed domain name in bad faith.

The Complainant further contends that the Respondent must have been aware of the Complainant’s trademark rights in the FOOT LOCKER trademarks when registering the disputed domain name.

The Complainant further contends that by using the disputed domain name the Respondent is seeking to create a false association with the Complainant and the Respondent clearly intended to attract Internet users to its retail store website and capitalize on the goodwill of Complainant’s famous FOOT LOCKER trademarks for its own commercial gain.

For all the above reasons, the Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Language of the Proceeding

Paragraph 11(a) of the Rules provides that:

“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.”

The language of the Registration Agreement for the disputed domain name is Chinese.

The Complainant requested that the language of the proceeding should be English.

The Panel cites the following with approval:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:

a) The disputed domain name consists of Latin letters, rather than Chinese letters;

b) The website under the disputed domain name shows an error message in the English language, and the previous website selling sneakers from third parties was also in English;

c) The Respondent did not object to English being the language of the proceeding.

Upon considering the above, the Panel rules that English be the language of the proceeding.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of numerous trademark registrations for the FOOT LOCKER. See Section 4 above.

The Panel finds that the disputed domain name incorporates the Complainant’s FOOT LOCKER trademark in its entirety, as a dominant element, and includes a hyphen “-” and the term “it”, together with the generic Top-Level Domain (“gTLD”) suffix “.com”.

The additional hyphen “-” and the term “it”, does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s trademarks, especially as “it” stands for Italy, where the Complainant also conducts its business.

Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate a domain name from the relevant registered trademark. See Yahoo! Inc. v. Blue Q Ltd., Romain Barissat, WIPO Case No. D2011-0702.

The addition of a gTLD “.com” to the disputed domain name does not avoid confusing similarity. See also, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451. Thus, the gTLD “.com” is typically without legal significance since use of a gTLD is technically required to operate a domain name and it does not serve to identify the source of the goods or services provided by the registrant of the disputed domain name.

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights.

C. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. Paragraph 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.

The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the Complainant’s FOOT LOCKER trademarks, or a variation thereof, and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services, as discussed further below.

The Respondent has not submitted any Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

D. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides non-exhaustive list of circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.

According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant has owned a registration for the FOOT LOCKER trademarks since at least the year 1976.

The disputed domain name is confusingly similar to the Complainant’s trademarks. Previous UDRP panels have found that “[a] likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site”. See Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095.

Further the disputed domain name currently resolves to a server notice stating “Apache is functioning normally”, the Panel finds that such use is regarded as passive use of the disputed domain name. Previous UDRP panels have ruled that a passive use can, in appropriate circumstances, indicate the Respondent’s bad faith. See Telstra Corporation Limited v. Nuckear Marshmllows, WIPO Case No. D2000-0003.

In accordance with the Complainant’s evidence, the Respondent has operated a website selling products presenting to be associated with the Complainant, the Respondent did not respond to the Complaint and did not provide any reasoning for its behavior. Thus, the Panel accepts the Complainant’s arguments that the Respondent was seeking to create a false association with the Complainant and clearly intended to attract Internet users to its retail store website and capitalize on the goodwill of the Complainant’s FOOT LOCKER trademarks for its own commercial gain.

Prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.

Based on the evidence that was presented to the Panel, including the use of the Complainant’s trademark in the disputed domain name, the current passive holding of the disputed domain name, the Respondent’s previous use of the disputed domain name, and the Respondent’s failure to answer the Complaint, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

7. Decision

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-it.com> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Date: September 22, 2016