URS DEFAULT DETERMINATION


Foot Locker Retail, Inc. v. myitem.sale
Claim Number: FA1606001680973


DOMAIN NAME

<footlocker.online>


PARTIES


   Complainant: Foot Locker Retail, Inc. Joy Echer of New York, NY, United States of America
  
Complainant Representative: Kelley Drye & Warren LLP Amy Gaven of New York, NY, United States of America

   Respondent: myitem.sale Praveen Rayabarapu of Hyderabad, Telangana, II, IN
  

REGISTRIES and REGISTRARS


   Registries: DotOnline Inc.
   Registrars: Go Daddy, LLC

EXAMINER


   The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
   Saravanan Dhandapani, as Examiner

PROCEDURAL HISTORY


   Complainant Submitted: June 24, 2016
   Commencement: June 24, 2016
   Default Date: July 11, 2016
   Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").

RELIEF SOUGHT


   Complainant requests that the domain name be suspended for the life of the registration.

STANDARD OF REVIEW


   Clear and convincing evidence.

FINDINGS and DISCUSSION


   Procedural Findings:  
      Multiple Complainants: Multiple Complainants: No multiple Complainants are involved in this proceeding. This Complaint and findings relate to the domain name <footlocker.online>. No domain name is dismissed from this Complaint.
      Multiple Respondents: Multiple Respondents: No multiple Respondents are involved in this proceeding. This Complaint and findings relate to the domain name <footlocker.online>. No domain name is dismissed from this Complaint.

   Findings of Fact: The case of the Complainant is as follows: Complainant Foot Locker Retail, Inc. (“Foot Locker”) is a premium retailer of athletic footwear, apparel and related goods and services in the United States. Foot Locker owns all rights, title, and interest in and to the well-known and incontestable FOOT LOCKER trade marks (U.S. Reg. No. 3810824 and 1126857), registered in the United States Patent and Trademark Office and other countries worldwide vide Exhibit B. Complainant currently uses the Marks in commerce throughout the world vide Exhibit C (Foot Locker’s Trademark Clearinghouse SMD file). Complainant’s Marks and related goods and services are well known throughout the world by virtue of the Marks’ longstanding use, the excellence of Complainant’s goods and services, and Complainant’s extensive promotion, advertising and unsolicited publicity involving the Marks and their related goods and services. The Disputed Domain Name <FOOTLOCKER.ONLINE> is identical to the Complainant’s cited trademarks, consisting in whole of the words “FOOT LOCKER”. The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use any domain name incorporating the Marks and use of the Disputed Domain Name is likely to result in consumer confusion. Respondent has no rights or legitimate interest in the Disputed Domain Name because it is not a licensee of Complainant and is not otherwise authorized to use Complainant’s Marks. Upon information and belief, Respondent registered the Disputed Domain name on October 6, 2015 despite receiving notification that the domain name matched a mark registered with the Trademark Clearinghouse. The Respondent was required to have clicked on the Registrar notice Acknowledgment Claim when presented with the Trademark Claims Notice to complete registration of the name. At the time of registration of the Disputed Domain Name, Respondent was aware of Complainant’s trademarks. The Disputed Domain Name has been registered and is being used in bad faith. Complainant’s Marks have a strong reputation and are widely known and well-recognized in the United States and throughout the world. Respondent was aware of Complainant’s rights in the Marks when registering the Disputed Domain Name. By registering a domain name that is identical to Complainant’s Marks, Respondent registered the Disputed Domain Name for the purpose of selling, renting, or transferring the Disputed Domain Name to Complainant who is the owner of the FOOT LOCKER trademark. Based on the foregoing, Respondent clearly registered and is using the Disputed Domain Name in bad faith and primarily for the purpose of unfairly disrupting Complainant’s business.

  

Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.


[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark:
  (i) for which the Complainant holds a valid national or regional registration and that is in current use; or
  (ii) that has been validated through court proceedings; or
  (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.

Determined: Finding for Complainant 


The Complainant has proved by documentary evidences that they are the registered owner of service mark and trademark “FOOTLOCKER” under various classifications. As noted, the disputed domain name <footlocker.online> composes “footlocker” and “.online”. Thus the word “footlocker” in disputed domain name is identical to Complainant’s registered mark “footlocker”. The “.online” in disputed domain name is a generic code top-level domain name (gTLD) suffix. It is non-distinctive and is incapable of differentiating the disputed domain name from the Complainant’s registered trademark. Based on the “footlocker” being a registered trademark of the Complainant, the Examiner determines that URS 1.2.6.1(i) covers the domain name at issue in this Complaint.


[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.

Determined: Finding for Complainant 


The Complainant owns registered mark “footlocker” under various classifications. In such case, the burden lies on the Respondent to prove that he has legitimate rights and/or interests in the disputed domain name. The Respondent is in default and has not filed any response. Although, the Complainant is not entitled to relief simply by default of the Respondent to submit a Response, the Examiner can however and does draw evidentiary inferences from the failure of the Respondent to respond. In view of the above, the Complainant has established a prima facie case of lack of rights and legitimate interest. Based on the record, the Respondent does not have rights or legitimate interests in the disputed domain name. Hence, the Examiner determines that URS 1.2.6.2 covers the domain name at issue in this Complaint and that the Respondent has no legitimate right or interest to the domain name.


[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
  a. Registrant has registered or acquired the 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the domain name; or
  b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
  c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
  d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.

Determined: Finding for Complainant 


It is the specific case of the Complainant that the Respondent is not affiliated with Complainant in any manner and never authorized the Respondent to register or use any domain name incorporating “footlocker”. The Respondent has not responded in spite of the notice of complaint and notice of default under this URS determination process. It is well established that the registration and use of the disputed domain name must involve malafides where the registration and use of it was continues to be made in full knowledge of the Complainant’s prior rights in the “footlocker” registered mark and in circumstances where the registrant did not seek permission from the Complainant, as the owner of trademark, for such registration and use. Thus the Panel Examiner comes to irresistible determination that (i) the disputed domain name is identical to the Complainant’s “footlocker” trademark; (ii) the Respondent’s name does not correspond to the disputed domain name; (iii) the Respondent was aware of the Complainant and its trademark when it registered the disputed the domain name; (iv) there is no indication of any authorization to use the Complainant’s mark. Hence, it is lawful to conclude that the disputed domain name was registered in bad faith. Thus the Examiner determines that URS 1.2.6.3 (a) and (d) covers the domain name at issue in this Complaint and the domain name was registered and is being used in bad faith.


FINDING OF ABUSE or MATERIAL FALSEHOOD


The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.

The Examiner finds as follows:


  1. The Complaint was neither abusive nor contained material falsehoods. 

DETERMINATION


After reviewing the parties’ submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name(s) be SUSPENDED for the duration of the registration:

  1. footlocker.online

 

Saravanan Dhandapani
Examiner
Dated: July 11, 2016

 

 

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