Nominet UK Dispute Resolution Service

 
Foot Locker Europe BV and FL Europe Holdings, Inc. -v- Alan Hardwick Nominet UK Dispute Resolution Service DRS 05871

(1) Foot Locker Europe BV (2) FL Europe Holdings Inc (3) Alan Hardwick

Decision of Independent Expert
1. Parties:

Complainants: Foot Locker Europe BV and FL Europe Holdings, Inc

c/o Foot Locker, Inc

US

Respondent: Alan Hardwick

Vianen

2. Domain Name:

footlocker.co.uk ("the Domain Name")

3. Procedural Background:

3.1 A hard copy of the Complaint was received in full by Nominet on 21 July 2008. Nominet validated the Complaint and notified the Respondent of the Complaint.

3.2 No response has been received and therefore informal mediation was not possible.

3.3 On 19 August 2008 the Complainants paid the fee to obtain the expert decision pursuant to paragraph 21 of the procedure for the conduct of proceedings under the Nominet Dispute Resolution Service ("the Procedure")

3.4 On 20 August 2008, Nick Phillips, the undersigned ("the Expert"), confirmed to Nominet that he knew no reason why he could not properly accept the invitation to act as the Expert in this case and further confirmed that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to question his independence and/or impartiality.

4. OUTSTANDING PROCEDURAL ISSUES:

4.1 The Respondent has not submitted a response to Nominet in time (or at all) in compliance with paragraph 5(a) of the Procedure.

4.2 Paragraph 15(b) of the Procedure provides, inter alia, that "if, in the absence of exceptional circumstances, a party does not comply with any time periods laid down in the policy of this procedure, the Expert will proceed to a decision on the Complaint".

4.3 Nominet appears to have used all of the available contact details to try to bring the Complaint to the Respondent's attention and indeed for the reasons I explain below it is clear that the Respondent was aware of the Complaint but failed to file a response. Consequently, there do not appear to me to be any exceptional circumstances involved and I will therefore proceed to a decision on the Complaint notwithstanding the absence of a Response.

5. THE FACTS:

5.1 The Complainants Foot Locker Europe BV and FL Europe Holdings, Inc. are affiliate companies ultimately owned by Foot Locker, Inc and are part of the Foot Locker group of companies.

5.2 The Respondent is Alan Hardwick.

5.3 The Complainant FL Europe Holdings, Inc. is the registered proprietor of sixteen UK trade mark registrations for FOOT LOCKER or marks comprising FOOT LOCKER namely:-

FOOT LOCKER in Class 35, number 2391181 (registered 6 May 2005)

FOOT LOCKER in Class 35, number 1291619 (registered 3 November 1986)

FOOT LOCKER in Class 42, number 1291620 (registered 3 November 1986)

FOOT LOCKER (stylised) in Classes 18, 25 and 28 number 1141598 (registered 9 October 1980)

FOOT LOCKER (stylised) in Class 25 number 1119946 (registered 31 August 1979)

FOOT LOCKER COLORADO in Class 18, number 1549926 (registered 8 October 1993)

FOOT LOCKER COLORADO in Class 25, number 1549927 (registered 8 October 1993)

FOOT LOCKER COLORADO in Class 28, number 1549928 (registered 8 October 1993)

FOOT LOCKER COLORADO in Class 42, number 1549929 (registered 8 October 1993)

LADY FOOT LOCKER in Class 25, number 1239052 (registered 1 April 1985)

LADY FOOT LOCKER in Class 35, number 1291621 (registered 3 November 1986)

LADY FOOT LOCKER in Class 42, number 1291622 (registered 3 November 1986)

TEAM FOOT LOCKER in Class 18, number 1549934 (registered 8 October 1993)

TEAM FOOT LOCKER in Class 25, number 1549935 (registered 8 October 1993)

TEAM FOOT LOCKER in Class 28, number 1549936 (registered 8 October 1993)

TEAM FOOT LOCKER in Class 42 number 1549937 (registered 8 October 1993)

5.4 There are no further registrations of FOOT LOCKER or any mark including the word FOOTLOCKER by any other party in any class.

5.5 The Complainant FL Europe Holdings, Inc. is the registered proprietor of nine Community Trade mark registrations comprising FOOT LOCKER namely:-

KIDS FOOT LOCKER in Classes 25 and 35, number 4732343 (registered 21 November 2005)

THE COLLECTION SELECT: UNIQUE TO FOOT LOCKER in Classes 18, 25, 28 and 25 number 2979854 (registered 17 December 2002)

THE COLLECTION SELECT: UNIQUE TO FOOT LOCKER in Classes 18, 25, 28 and 35, number 2979839 (registered 17 December 2002)

THERE CAN ONLY BE ONE FOOT LOCKER in Classes 18 and 25, number 2902427 (registered 22 October 2002)

FOOT LOCKER SPORTS EXPERIENCE in Classes 36 and 41 number 2053759 (registered23 January 2001)

FOOT LOCKER BEACH EXPERIENCE in Classes 36 and 41, number 1523505 registered 23 February 2002)

FOOT LOCKER RUNNING EXPERIENCE in Classes 36 and 41, number 1523497 (registered 23 February 2000

FOOT LOCKER STREET EXPERIENCE in Classes 36 and 41, number 1131044 (registered 8 April 1999)

FOOT LOCKER in Classes 18, 25, 28, 35 and 42, number 42168 (registered 1 April 1996)

5.6 The Complainant Foot Locker Europe B.V. is the proprietor of over 70 Domain Names in Europe comprising Foot Locker, including:-

Footlocker-Europe.com

Footlockereurope.com

Footlocker.co.uk

Foot-locker.co.uk

Footlocker-uk.co.uk

A complete list of domain names comprising the word Foot Locker which are owned by the Complainants has been provided by the Complainants.

5.7 The FOOT LOCKER brand was launched in the US in 1974.

5.8 FOOT LOCKER has been used as a trade mark in the United Kingdom on a substantial scale for many years in relation to retailing services in athletic footwear, clothing and accessories.

5.9 The FOOT LOCKER brand is marketed throughout the United Kingdom and has been so since 1991. The complainant has 65 shops located throughout the United Kingdom. The FOOT LOCKER trade mark is used on all of the Complainants' shop signs.

5.10 The Complainants' have a flag ship store on London's Oxford Street.

5.11 The www.footlocker.co.uk Domain Name was first registered by a company called Foot, Loc, Kerr & Partners.

5.12 The Complainants first wrote to Foot, Loc, Kerr & Partners on 31 August 2005. Foot, Loc, Kerr & Partners informed the Complainants on 13 September 2005 that the Domain Name was owned and controlled by Alan Hardwick. The details on the Nominet website were amended after this letter to show Alan Hardwick as the registrant. Alan Hardwick as an individual elected to have his address omitted from the WHOIS database and therefore the Complainants requested Foot, Loc, Kerr and Partners forward on to Alan Hardwick their letter of 31 August 2005. The Complainants also wrote to the registrant's agents, Pipex Communications Hosting Limited but obtained no response. Subsequently, the website www.footlocker.co.uk became inaccessible.

5.13 Subsequently the Respondent's address was changed to that of the Complainant Foot Locker Europe B.V and all traffic to the website www.footlocker.co.uk was re-directed to the Complainants' site at www.footlocker-europe.com, a domain name owned by the Complainants. The practical affect of this was that the Complainants were receiving all renewal notices in relation to the Domain Name and were making full use of the Domain Name. They therefore did not take any further action.

5.14 The Complainants now wish to offer online shopping through the Domain Name. For this purpose it is necessary to obtain an SSL certificate for secure online payment. Verisign, the company issuing SSL certificates, refuses to issue a SSL certificate in cases where the registrant's name does not match the name of the Verisign SSL customer, i.e. the customers to whom the SSL certificate is granted.

5.15 While the Domain Name is registered in the name of Alan Hardwick the complainant can not obtain an SSL certificate and cannot activate the online shopping on www.footlocker.co.uk.

6. THE PARTIES CONTENTIONS

The parties' contentions can be summarised as follows:

Complainants

In the Complaint, the Complainants make the following submissions:

6.1 The Complainants have rights in a name or mark which is identical or similar to the Domain Name because:

(a) The Complainants are the registered proprietors of a number of registered trade marks, details of which are set out above and which include a registration for the word mark FOOT LOCKER;

(b) The Complainants are the registered proprietor of a number of Domain Names incorporating, or similar to, the FOOT LOCKER mark.

(c) The Complainants have been trading as Foot Locker in the UK since 1991 and has made significant promotional and commercial investments in the promotion of the FOOT LOCKER brand.

(d) The Complainants are one of the world's leading retailers of sports shoes and clothing and has developed relationships with Nike, Addidas, Reebok and Converse and as a result of this is able to offer an extremely wide variety of products. The Complainants run more that 4000 specialist athletic stores spread across the globe and has a dominant presence in North America, Europe and Australia. The Foot Locker trade mark is a globally recognised trade mark.

(e) The public associates the FOOT LOCKER mark with the Complainants

(f) As a result of this the Complainants have Rights in the word or mark FOOTLOCKER which is the same as the Domain Name.

6.2 The Domain Name in the hands of the Respondent is an Abusive Registration because;

a) By registering the Domain Name the Respondent has blocked the Complainants from registering the name in which the Complainants have rights and is preventing the Complainants from trading online.

b) Given the reputation of the Complainants it is inconceivable that the Respondent was not aware of the Complainants when it acquired the Domain Name.

c) The Complainants contend that circumstances indicate that use of the Domain Name is causing disruption to the Complainants' business because it is impossible for the Complainants to sell any products online whilst the Domain Name remains in the name of Alan Hardwick. Online shopping is presently a major sales tool for any manufacturer and retailer, therefore, its inability to sell products online is causing the Complainants significant business disruption.

6.3 The Complainants have conducted research including engaging the services of a personal investigator in order to locate Mr Hardwick to resolve this matter. All efforts to locate Mr Hardwick have failed and therefore the only option open to the Complainants is to apply for the Domain Name to be transferred.

Respondent:

The Respondent has not provided a Response so there are no submissions to consider.

7. DISCUSSIONS AND FINDINGS:

General

7.1 Under Paragraph 2 of the Dispute Resolution Service Policy ("the Policy") the Complainants are required to show, on the balance of probabilities, that;

(1) it has rights in respect of a name or mark which is identical or similar to the Domain Name; and

(2) the Domain Name in the hands of the Respondent is an Abusive Registration.

Complainants' Rights

7.2 The first question I must answer is therefore whether the Complainants have proved on the balance of probabilities that it owns Rights in a name or mark that is identical or similar to the Domain Names.

7.3 The Policy defines rights as including but not limited to "…rights enforceable under English laws." This has always been treated in decisions under Nominet DRS as a test with a low threshold to overcome and I think that that must be the correct approach.

7.4 The Complainant has provided evidence of its use of the name FOOT LOCKER and owns a number of registered trade marks consisting of or incorporating the name FOOT LOCKER. The Complainants have also registered and use a number of Domain Names incorporating the name FOOT LOCKER.

7.5 In the circumstances I have no difficulty in finding that the Complainants have rights in the name FOOT LOCKER.

7.6 I must now decide whether the name in which the Complainants have rights i.e. FOOT LOCKER is identical or similar to the Domain Name and it is clear that the name in which the Complainants have rights is identical to the Domain Name ignoring the first and second level suffixes as I must do.

Abusive Registration

7.7 Having concluded that the Complainants have rights in a name which is identical to the Domain Name, I must consider whether the Domain Name constitutes an Abusive Registration. Abusive registration is defined in the Policy as;

"…a Domain Name which either;

(a) was registered or otherwise acquired in the manner which, at the time when the registration or acquisition took place, took unfair advantage of, or was unfairly detrimental to the Complainant's rights; OR

(b) has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights."

7.8 This definition allows me to consider whether the Domain Name constitutes an Abusive Registration at any time and not, for example, just the time of the registration/acquisition.

7.9 Paragraph 3 of the Policy provides a non-exhaustive list of the factors which may evidence that a Domain Name is an Abusive Registration. It is worthwhile setting out paragraph 3 of the Policy in full:

"3. Evidence of Abusive Registration

a. A non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration is as follows:

i. Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:

A for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name;

B as a blocking registration against a name or mark in which the Complainant has Rights; or

C for the purpose of unfairly disrupting the business of the Complainant;

ii. Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant;

iii. The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of Domain Names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern;

iv. It is independently verified that the Respondent has given false contact details to us; or

v. The Domain Name was registered as a result of a relationship between the Complainant and the Respondent, and the Complainant:

A has been using the Domain Name registration exclusively; and

B paid for the registration and / or renewal of the Domain Name registration.

b. Failure on the Respondent's part to use the Domain Name for the purposes of e-mail or a website is not in itself evidence that the Domain Name is an Abusive Registration.

c. There shall be a presumption of Abusive Registration if the complainant proves that Respondent has been found to have made an Abusive Registration in three (3) or more Dispute Resolution Service cases in the two (2) years before the Complaint was filed. This presumption can be rebutted."

7.10 Paragraph 3a of the Policy is a list of non exhaustive factors which may be evidence that the Domain Names are an abusive registration. It is however also relevant to consider in broader terms whether the Domain Names constitutes an Abusive Registration within the definition set out in the policy.

7.11 In doing this, I have adopted the reasoning of the Appeal Panel in the case of Thomas Cook UK Limited v. WhitleyBayUncovered (DRS00583). The relevant part of that decision is produced below.

"It seems to the Panel that, given the extent and renown of the Complainant's trade mark, it is stretching credulity beyond breaking point to suggest that the Respondent did not know of the trade mark in question when it sought registration of the Domain Names. Indeed, it is perhaps instructive that there is no suggestion in the communications from the Respondent that it was in fact, unaware of the reputation of the Complainant's trade mark CLUB18-30. Although the Respondent is careful to suggest that the Complainant's proposed use of the Domain Names is open to question (referring to "our concept of the uncovered names") there is no suggestion that the club18-30 part of the Domain Names was chosen by it for any other reason than it was the Complainant's trade mark.

The Panel, therefore, finds that upon the balance of probabilities the Respondent was aware of the Complainant's trade mark at the time of registration of the Domain Names, and consciously chose to use that trade mark."

7.12 As in the Whitley Bay case, it seems to me that the mark, "FOOT LOCKER" is so well known that it is almost inconceivable that the Respondent did not know of the Complainants' Rights generally when it acquired the Domain Name.

7.13 Further, it seems clear that and in the absence of any explanation to the contrary from the Respondent, that the only possible reason for the Respondent acquiring the Domain Names could be to take advantage of the substantial goodwill and reputation in the mark, "FOOT LOCKER".

7.14 Additionally the Respondent's acquisition of the Domain Name has also clearly been unfairly detrimental to the Complainants' Rights in the name FOOT LOCKER because it has prevented them from using the Domain Name (which I have found is not simply similar but identical to the name in which the Complainants have rights) for the purposes of offering online shopping services.

7.15 I therefore find that, on the balance of probabilities, that the Respondent must have intended to gain an advantage of some kind by using the Domain Names in such a way and it must follow that this advantage was, "unfair". I also find that the Respondent's acquisition of the Domain Name has caused the Complainants detriment which, adopting the same reasoning based on how well known the Complainants' mark FOOT LOCKER is, was clearly "unfair".

7.16 The Complainants have therefore established a prima facie case of Abusive Registration and on that basis I will not, at this stage, go on to consider further points which the Complainants make.

7.17 This is not of course the end of the story. Having found that the Complainants have, on the balance of probabilities, establish a prima facie case of Abusive Registration it is now open to the Respondent to rebut this finding by, for example, establishing any of the non-exhaustive factors found under paragraph 4 of the Policy. However, as no Response has been made by the Respondent, such consideration is not possible.

7.18 I therefore find that the Complainants have proved on the balance of probabilities that the Domain Name is an Abusive Registration.

8. Decision

8.1 I find that the Complainants have proved, on the balance of probabilities, that they have rights in a name or mark which is identical to the Domain Name and that the Domain Name is an Abusive Registration in the hands of the Respondent. I therefore direct that the Domain Name be transferred to the first Complainant, Foot Locker Europe BV.

………………………………

NICK PHILLIPS

10 September 2008