Radio Flyer, Inc. v. shuai liu / liu shuai
Claim Number: FA2004001891657
Complainant is Radio Flyer, Inc. (“Complainant”), represented by Joshua S. Frick of Barnes & Thornburg LLP, Illinois, USA. Respondent is shuai liu / liu shuai (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <radioflyerinnovations.com>, registered with DropCatch.com 765 LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 10, 2020; the Forum received payment on April 10, 2020.
On April 13, 2020, DropCatch.com 765 LLC confirmed by e-mail to the Forum that the <radioflyerinnovations.com> domain name is registered with DropCatch.com 765 LLC and that Respondent is the current registrant of the name. DropCatch.com 765 LLC has verified that Respondent is bound by the DropCatch.com 765 LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 13, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 4, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@radioflyerinnovations.com. Also on April 13, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 5, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, Radio Flyer Inc., manufactures and sells safe, high-quality toys, and has grown into a leading designer, manufacturer and provider of toys including wagons, tricycles, scooters, and other ride-on toys as well as parts and accessories for these goods. Complainant sells these products throughout the United States and around the world through retail stores and online retailers.
Complainant has rights in the RADIO FLYER mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <radioflyerinnovations.com> domain name is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s RADIO FLYER mark, merely adding the generic term “innovations” and the “.com” generic top-level domain (“gTLD”).
Respondent does not have any rights or legitimate interests in the <radioflyerinnovations.com> domain name. Respondent is not licensed or authorized to use Complainant’s RADIO FLYER mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the at-issue domain name to pass itself off as Complainant and direct users who are seeking Complainant’s products and/or services to a website that has no affiliation with Complainant and instead promotes a Chinese-language lottery and gambling service.
Respondent registered and uses the <radioflyerinnovations.com> domain name in bad faith in a manner that disrupts Complainant’s business. Respondent attempts to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the affiliation, sponsorship, or endorsement of Respondent’s website. Finally, Respondent had actual or constructive knowledge of Complainant’s rights in the RADIO FLYER mark when it registered the <radioflyerinnovations.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the RADIO FLYER mark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the RADIO FLYER trademark.
Respondent uses the at-issue domain name to address a website that promotes Chinese lottery and gambling services.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s USPTO trademark registration for RADIO FLYER is sufficient to demonstrate Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i)”).
Respondent’s <radioflyerinnovations.com> domain name contains Complainant’s entire RADIO FLYER trademark, less its domain name impermissible space, followed by the descriptive term “innovations.” The top-level domain name “.com” completes the domain name. The differences between Complainant’s trademark and Respondent’s <radioflyerinnovations.com> domain name fail to distinguish the domain name from Complainant’s mark for the purpose of Policy ¶ 4(a)(i). In fact, the inclusion of the term “innovations” in Respondent’s domain name suggests Complainant’s related business and therefore the included term “innovations” only adds to any confusion between Complainant’s RADIO FLYER trademark and Respondent’s <radioflyerinnovations.com> domain name. The Panel thus concludes that Respondent’s <radioflyerinnovations.com> domain name is confusingly similar to Complainant’s RADIO FLYER trademark under Policy ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “shuai liu / liu shuai`” and the record before the Panel contains no evidence otherwise showing that Respondent is commonly known by the <radioflyerinnovations.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <radioflyerinnovations.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name).
Additionally, Respondent uses its <radioflyerinnovations.com> domain name to address a website that promotes gambling activities. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4 (c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Radio Flyer, Inc. v. An Hai Tang, FA 1874155 (Forum Jan. 4, 2020) (finding respondent did not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use where respondent’s website promoted a lottery or gambling service); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below without limitation, circumstances are present based on which the Panel concludes that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
As mentioned above regarding rights and legitimate interests, Respondent registered and is using its confusingly similar <radioflyerinnovations.com> domain name to address a website promoting gambling activities. Using the domain name in such manner, to mislead internet users and redirect them to third-party services, disrupts Complainant’s business and indicates Respondent’s bad faith pursuant to Policy ¶ 4(b)(iii) and (iv). See EthnicGrocer.com v. Latin Grocer.com, FA 94384 (Forum July 7, 2000) (registration of slight variation of Complainant’s mark suggests Respondent registered names primarily for the purpose of disrupting Complainant’s business);see also, Baylor University v. Pan Pan Chen / Chen Pan Pan, FA1809001808541 (Forum Oct. 27, 2018) (respondent’s use of the webpage associated with the disputed domain name to promote Chinese gambling websites, indicates that respondent attempted to commercially benefit off complainant’s mark in bad faith under Policy ¶4(b)(iv));see also, AOL LLC v. iTech Ent , LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
Finally, Respondent had actual knowledge of Complainant’s rights in the RADIO FLYER mark when Respondent registered <radioflyerinnovations.com> as a domain name. Respondent’s actual knowledge is evident from the widespread public notoriety of the RADIO FLYER trademark and from Respondent’s use of the term “innovations” in the <radioflyerinnovations.com> domain name ‑a reference that suggests Complainant’s business. See, AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”); see also, Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name);
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <radioflyerinnovations.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 5, 2020
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