Radio Flyer, Inc. v. Santi
Claim Number: FA1902001829773
Complainant is Radio Flyer Inc. (“Complainant”), represented by Joshua S. Frick of Barnes & Thornburg LLP, Illinois, USA. Respondent is Santi (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <radioflyerwagon.com>, registered with 1API GmbH.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 14, 2019; the Forum received payment on February 15, 2019.
On February 15, 2019, 1API GmbH confirmed by e-mail to the Forum that the <radioflyerwagon.com> domain name is registered with 1API GmbH and that Respondent is the current registrant of the name. 1API GmbH has verified that Respondent is bound by the 1API GmbH 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 February 19, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 11, 2019 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@radioflyerwagon.com. Also on February 19, 2019, 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 March 12, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Since 1917, Complainant has been manufacturing and selling safe, high-quality toys, and has grown into a leading designer, manufacturer and provider of toys including wagons, tricycles, scooters, balance bikes and other ride-on toys as well as parts and accessories for these goods. Complainant has rights in the RADIO FLYER mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 635,875, registered Oct. 16, 1956). Respondent’s <radioflyerwagon.com>[i] domain name is identical and/or confusingly similar to Complainant’s mark as it adds the generic/descriptive term “wagon” and the “.com” generic top-level domain (“gTLD”).
2. Respondent has no rights or legitimate interests in the <radioflyerwagon.com> domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the RADIO FLYER mark. Respondent also does not use the domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the domain name resolves to a website that prominently features a misspelling of the Complainant’s RADIO FLYER mark, purports to offer information about Complainant and its products, and displays several prominent, unrelated click-through advertisements.
3. Respondent registered and uses the <radioflyerwagon.com> domain name in bad faith. Respondent registered the domain name primarily for the purpose of deceiving consumers as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and thereby disrupting Complainant’s business. The domain name resolves to a website which displays a misspelled version of Complainant’s mark while offering information about Complainant along with click-through advertisements.
4. Further, Respondent had actual and constructive knowledge of Complainant’s rights in the RADIO FLYER mark through Complainant’s extensive investment in the RADIO FLYER mark, widespread publicity and recognition of the mark, sales of products under the mark, and given Respondent’s use of the domain name to offer information directly relating to Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the RADIO FLYER mark. Respondent’s domain name is confusingly similar to Complainant’s RADIO FLYER mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <radioflyerwagon.com> domain name and that Respondent registered and uses the domain name in bad faith.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant has rights in the RADIO FLYER mark through its registration of the mark with the USPTO (e.g. Reg. No. 635,875, registered Oct. 16, 1956). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015). Accordingly, Complainant has established rights in the RADIO FLYER mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <radioflyerwagon.com> domain name is identical and confusingly similar to Complainant’s mark as it adds the generic/descriptive term “wagon” and the “.com” gTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). The Panel holds that the <radioflyerwagon.com> domain name is confusingly similar to the RADIO FLYER mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <radioflyerwagon.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent has no rights or legitimate interests in the <radioflyerwagon.com> domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Santi” as the registrant. Complainant also claims that Respondent has never been legitimately affiliated with Complainant, has never been known by the <radioflyerwagon.com> domain name prior to its registration, and Complainant has not given Respondent permission to use the RADIO FLYER mark in any manner. Accordingly, the Panel finds that Respondent is not commonly known by the <radioflyerwagon.com> domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that the <radioflyerwagon.com> domain name resolves to a website that prominently features a misspelling of the Complainant’s RADIO FLYER mark, purports to offer information about Complainant and its products, and displays several prominent, unrelated click-through advertisements. Using a confusingly domain name that incorporates the mark of another to offer information related to that party along with click-through links shows a failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”). Complainant provides a screenshot of the resolving webpage associated with the <radioflyerwagon.com> domain name, which displays the heading “Radio Rlyer Ragon” while purporting to offer information relating to Complainant’s products, along with various links in the form of “Open” tabs. Accordingly, the Panel holds that Respondent is failing to use the <radioflyerwagon.com> domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent registered the <radioflyerwagon.com> domain name primarily for the purpose of deceiving consumers as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and thereby disrupting Complainant’s business. Using a domain name that incorporates the mark of another to disrupt a complainant’s business and trade upon the goodwill of a complainant for commercial gain shows bad faith under Policy ¶¶ 4(b)(iii) & (iv). See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)); see also Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). Complainant has provided a screenshot of the resolving webpage displaying the heading “Radio Rlyer Ragon” while purporting to offer information relating to Complainant’s products, along with various links in the form of “Open” tabs. Accordingly, the Panel holds that Respondent disrupts Complainant’s business and attemps to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Complainant argues that Respondent had actual knowledge of Complainant’s RADIO FLYER mark at the time of registering the <radioflyerwagon.com> domain name. The Panel agrees that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the domain name; actual knowledge does adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Respondent’s knowledge can be inferred given Complainant’s extensive investment in the RADIO FLYER mark, widespread publicity and recognition of the mark, sales of products under the mark, and given Respondent’s use of the domain name to offer information directly relating to Complainant. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <radioflyerwagon.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: March 18, 2019
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