Foot Locker Retail, Inc. v. Chen Yu et al.
Claim Number: FA1606001680975
Complainant: Foot Locker Retail, Inc. of New York, New York, United States of America.
Complainant Representative: Kelley Drye & Warren LLP of New York, New York, United States of America.
Respondent: Chen Yu of Chang Chun City, China.
Chen Yu of Chang Chun City, ji lin, International, CN.
chenyu of Changchun, China.
REGISTRIES and REGISTRARS
Registries: Minds + Machines Group Limited
Registrars: Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn)
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.
Jonathan Agmon, as Examiner.
Complainant submitted: June 24, 2016
Commencement: June 24, 2016
Response Date: June 26, 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") .
Rule 11(a) of the Rules provide 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 Examiner to determine otherwise, having regard to the circumstances of the administrative proceeding.” The Registration Agreement of the disputed domain name is in the Chinese language. The Complainant submitted the Complaint in English. The Respondent also submitted his Response in English. Some of the documents in this case are in English and some in Chinese and it is clear that the disputed domain name uses English characters. Taking regard of the circumstances of this case, including, but not limited to the language of the Registration Agreement and the proceedings, the language of this decision will be English.
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Complainant, Foot Locker Retail, Inc. of New York, United States of America is a premium retailer of athletic footwear, apparel and related goods and services in the United States.
Complainant is the owner of the Mark – FOOT LOCKER, worldwide for many years, including U.S. Reg. No. 3810824 with the registration date of June 29, 2010; U.S. Reg. No. 1126857 with the registration date of November 20, 1979; and more.
According to the Complainant, it's FOOT LOCKER trademark has achieved well-known status throughout the world.
Complainant asserts the following regarding the Respondent:
1. The registered domain name(s) is/are identical or confusingly similar to a word or mark [URS/.usRS 1.2.6.1]: for which the Complainant holds a valid national or regional registration and that is in current use.
2. Registrant has no legitimate right or interest to the domain name [URS 1.2.6.2] 3. The domain name(s) was/were registered and are being used in bad faith [URS 1.2.6.3] such as: The domain name(s) was/were registered or are being used in bad faith [.usRS 1.2.6.3] such as:
URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, 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.
The Respondent asserts that the disputed domain name <footlocker.vip> was not maliciously registered and he is used to make the “shoes box show site,” and that the mark FootLocker is not a world famous brand, and before receiving the Complainant he did not know of it.
The Respondent further asserts that FootLocker trademark is registered in China, and the English meaning is the meaning of the shoes box, which is a common noun.
Determined: Identical and/or Confusingly Similar - Finding for Complainant
Complainant is the owner of the mark – FOOT LOCKER, worldwide, including U.S. Reg. No. 3810824 with the registration date of June 29, 2010; U.S. Reg. No. 1126857 with the registration date of November 20, 1979; and more.
The domain name includes the Complainant's FOOT LOCKER mark in its entirety, without the " " (space) between the words, and together with the gTLD ".vip".
Therefore, the Examiner finds that the <footlocker.vip> domain name is confusingly similar to the FOOT LOCKER mark pursuant to URS Procedure 1.2.6.1.
Determined: Registrant has no legitimate right or interest to the domain name - Finding for Complainant
The Complainant submitted evidence showing that the disputed domain name resolves to a website displaying “Under Construction” notice. The Complainant has not given any permission to the Respondent to use the Foot Locker trademark. The Complainant made a prima facie case that the Respondent has no legitimate right or interest.
The Respondent however did not submit any evidence proving he is known as by the trademark FootLocker. The Examiner was not persuaded by the arguments made by the Respondent. The Respondent failed to provide any evidence whatsoever. The Examiner finds that the Respondent failed to show that it has rights or legitimate interest in the disputed domain name.
Therefore, the Examiner finds that the Complaint meets URS requirement of 1.2.6.2.
Determined: The domain name was registered and is being used in bad faith - Finding for Complainant
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.
The Complainant has satisfied URS 1.2.6.3 (b) since the Respondent must have known of the Complainant's well-known mark when registering the domain name.
Since Complainant's trademark was registered long before the disputed domain name was registered and the fact the disputed name currently resolves to a website displaying Under Construction notice, and the Respondent's knowingly registered the disputed domain name after receiving a notice that it matches a mark registered with the Trademark Clearinghouse, the conclusion is that the disputed domain name was registered and is being used in bad faith to attract for commercial gain and that Complainant has complied with URS 1.2.6.3 (b).
The Examiner finds that the Complaint was neither abusive nor contained material falsehoods.
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 names be SUSPENDED for the duration of the registration.
Jonathan Agmon, Examiner
Dated: June 29, 2016
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