Radio Flyer Inc. v. O'Neill, Pat / IBCF
Claim Number: FA1704001728191
Complainant is Radio Flyer Inc. (“Complainant”), represented by Ulrika E. Mattsson, of McDermott Will & Emery LLP, Illinois, USA. Respondent is O'Neill, Pat / IBCF (“Respondent”), represented by Ginger Mimier, of Sedhom Law Group, PLLC, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <radioflyermusic.com>, registered with Network Solutions, 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.
Jeffrey M. Samuels, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 21, 2017; the Forum received payment on April 21, 2017.
On April 21, 2017, Network Solutions, LLC confirmed by e-mail to the Forum that the <radioflyermusic.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 25, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 15, 2017 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@radioflyermusic.com. Also on April 25, 2017, 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.
A timely Response was received and determined to be complete on May 15, 2017.
Complainant’s Additional Submission was received on May 19, 2017, and determined to be in compliance with the Rules.
Respondent’s Additional Submission was received on May 24, 2017, and determined to be in compliance with the Rules.
On May 24, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jeffrey M. Samuels 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Since 1917, Complainant has made and sold toys, including wagons, tricycles, scooters and other ride-on toys. Complainant owns a number of U.S. trademark registrations for marks that incorporate the term RADIO FLYER, as used on its products. Complainant’s rights in the RADIO FLYER mark trace back to 1931. Complainant also owns a number of domain name registrations that include the term “radioflyer,” including “radioflyer.com.”
Complainant contends that the disputed domain name, radioflyermusic.com, is confusingly similar to its RADIO FLYER mark. It notes that the domain name entirely incorporates the term “radioflyer” with the addition of the generic term “music.”
Complainant further argues that Respondent does not have any rights or legitimate interests in the disputed domain. Complainant asserts that the website located at the disputed domain is not owned, affiliated with, or endorsed by Complainant and that Respondent is not licensed or permitted to use the RADIO FLYER mark or any domain name incorporating such mark.
Complainant points out that the disputed domain name was registered on October 20, 2004, and is used to redirect Internet users to a website for a music band. According to Complainant, such use does not constitute a use in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. Further, Complainant maintains, there is no indication that Respondent is commonly known by the disputed domain name.
With respect to the issue of “bad faith” registration and use, Complainant argues that Respondent registered the domain name in dispute primarily for the purpose of deceiving consumers and thereby disrupting Complainant’s business, within the meaning of paragraph 4(b)(iii) of the Policy. Complainant also indicates that, by using a domain name confusingly similar to the RADIO FLYER mark, Respondent intends to attract Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website, within the meaning of paragraph 4(b)(iv) of the Policy.
Complainant submits that Respondent had actual and constructive knowledge of Complainant’s RADIO FLYER mark at the time the disputed domain name was registered, given the fact that such mark was federally registered prior to registration of the domain name.
B. Respondent
Respondent contends that the disputed domain name is neither identical nor confusingly similar to the RADIO FLYER mark, insofar as the domain name includes the terms “music” and the gTLD “.com.” Respondent notes that it uses the disputed domain name to provide information about a music band and that, inasmuch as Complainant uses the RADIO FLYER mark on or in connection with toys, clothing, and fabrics, the disputed domain name is not likely to create confusion.
Respondent submits that it has rights or legitimate interests in the disputed domain name. Pursuant to paragraph 4(c)(i) of the Policy, Respondent maintains that, before any notice of the dispute, Respondent was using the domain name in connection with a bona fide offering of services, which do not compete with Complainant’s goods.
Respondent argues that the disputed domain name was not registered and is not being used in bad faith. It indicates that it has never offered the domain name for sale, has not engaged in any pattern of conduct to prevent Complainant from reflecting its mark in a corresponding domain name, has never used the disputed domain name to target or disrupt the business of Complainant, and is not attempting to attract uses to its website by creating a likelihood of confusion as to source of such site or of the services offered at such site.
C. Additional Submissions
In its “Additional Submission,” Complainant explains that the addition of the generic term “music” to the disputed domain name does not avoid a finding of confusingly similarity.
With respect to the issue of “rights or legitimate interests,” Complainant notes that Respondent started its band called “Radioflyer” in 2001, and registered the disputed domain name in 2004. Complainant notes that it started using the RADIO FLYER mark 84 years before Respondent started using “Radioflyer” in connection with a band and 87 years before Respondent registered the disputed domain name. “Respondent cannot claim to have rights or legitimate interests in the Disputed Domain because Respondent knew or should have known of Complainant’s Radio Flyer® Marks at the time of registration of the Disputed Domain.”
On the issue of “bad faith” registration and use, Complainant maintains that Respondent had constructive knowledge of Complainant’s RADIO FLYER mark and that “using a famous, registered trademark, without permission of the owner, is bad faith….”
In its “Additional Submission,” Respondent contends that the disputed domain name is not confusingly similar to the RADIO FLYER mark because the additional term “music” has no relation to Complainant’s goods.
Respondent also reiterates that it uses the disputed domain name in connection with a bona fide offering of goods or services, namely, providing information about its music band.
Respondent further argues that many UDRP panels have held that constructive knowledge does not, by itself, support a determination of bad faith registration and use, that there is no evidence that Respondent registered the domain name for the purpose of selling it to anyone or any evidence that would support a finding of bad faith under any of the other provisions of paragraph 4(b) of the Policy. According to Respondent, the fact that the disputed domain name was registered 13 years prior to the filing of the instant Complaint suggests that Respondent was not disrupting Complainant’s business or confusing consumers and such delay, by itself, supports denial of relief.
The Panel finds that: (1) the disputed domain name is confusingly similar to the RADIO FLYER mark and that Complainant has rights in such mark; (2) Respondent has rights or legitimate interests in the disputed domain name; and (3) the domain name in issue was not registered and is not being used in bad faith.
DISCUSSION
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.
The Panel concludes that the disputed domain name, radioflyermusic.com, is confusingly similar to the RADIO FLYER mark. As noted by Complainant, the domain name incorporates the mark in full. The addition of the generic terms “music” and ”.com” does not support a contrary conclusion. While Complainant is not engaged in the music business and, thus, the parties do not compete, such fact is irrelevant in deciding this element of the Policy. Rather, “[a]pplication of the confusingly similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string of the domain name.” See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, §1.2. See, also, Microsoft Corp. v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where a disputed domain name contains complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top level domain).
The Panel further holds that Complainant has rights in the RADIO FLYER mark, as evidenced by its longstanding use of, and registrations covering, such mark.
The Panel finds that Respondent has established that it has rights or legitimate interests in the disputed domain name under paragraph 4(c)(i) of the Policy. Exhibit 6 to Complainant’s Amended Complaint includes a snapshot of the website found at radioflyermusic.com. This exhibit shows that Respondent uses the site to advertise a band called “Radioflyer,” which, according to such site, is “Hudson Valley’s Premier Cover Band.” The site includes links to upcoming shows, a newsletter, and to “The Band!” There is no dispute that the disputed domain name was registered well prior to the commencement of this UDRP proceeding. The fact that the domain name was registered and used well after Complainant’s first use of the RADIO FLYER mark does not, without more, preclude Respondent from establishing that it used the disputed domain before any notice of the dispute in connection with a bona fide offering of goods or services. Complainant’s ownership of the RADIO FLYER mark does not confer upon it absolute rights to prevent others from any uses of such mark.
The Panel determines that the disputed domain name was not registered and is not being used in bad faith. As found above, the evidence supports a determination that Respondent has rights or legitimate interests in the disputed domain name and such fact, alone, may establish a lack of the requisite bad faith. See Vanguard Group Inc. v. Investors Fast Track, FA 863257 (ForumJan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”)
Moreover, there is no evidence that Respondent registered the domain name primarily for the purpose of selling it or that it has engaged in a pattern of conduct designed to prevent Complainant from reflecting its mark in a corresponding domain name. The parties do not appear to offer competing goods or services and, thus, paragraph 4(b)(iii) is not applicable.
With respect to paragraph 4(b)(iv), while the use of “radioflyermusic.com” is confusingly similar to the RADIO FLYER mark for purposes of the first element of the Policy, given that Complainant does not use its mark in connection with music, it is not likely that Internet users would be confused as to the source of such site or of the services advertised on such site.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <radioflyermusic.com> domain name REMAIN WITH Respondent.
Jeffrey M. Samuels, Panelist
Dated: May 25, 2017
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