Crayola Properties, Inc. v. Cyan Yo
Claim Number: FA2007001906789
Complainant is Crayola Properties, Inc. (“Complainant”), represented by Steven M. Levy of FairWinds Partners LLC, District of Columbia, United States of America (“United States”). Respondent is Cyan Yo (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <crayolaideaworks.com> (the “disputed domain name”), registered with Dynadot, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 31, 2020; the Forum received payment on July 31, 2020.
On August 4, 2020, Dynadot, LLC confirmed by e-mail to the Forum that the <crayolaideaworks.com> disputed domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 August 31, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 21, 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@crayolaideaworks.com. Also on August 31, 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 September 25, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant was founded in 1885 as Binney & Smith Company and is headquartered in Lehigh Valley, Pennsylvania, United States. Crayola crayons and related products and services are sold throughout the world under the CRAYOLA trademark. Crayola produces a broad range of products under the Crayola brand name. These include colored pencils, markers, inks and paints, modeling clays, coloring books, and artists' tools. Complainant extensively promotes its CRAYOLA products and services through a variety of advertising and promotional mediums. It utilizes ads in both general-interest and industry-focused magazines, on websites, social media pages, and at art industry trade shows.
Complainant has rights in the CRAYLOLA trademark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 644,752, registered Apr. 30, 1957). Complainant also has a pending trademark in the CRAYOLA IDEAWORKS trademark through its application in the USPTO, serial number 88857678, filed on April 2, 2020 in international class 41 for museum services. The trademarks will hereinafter be referred to as the “CRAYOLA IDEAWORKS Mark”.
The disputed domain name is confusingly similar to the CRAYOLA IDEAWORKS Mark. Respondent does not have rights or legitimate interests in the disputed domain name because the disputed domain name because Complainant has not licensed or permitted Respondent to use the trademark. Finally, Respondent registered and is using the disputed domain name in bad faith. Respondent registered the disputed domain name on April 6, 2020, immediately following Complainant’s filing the trademark application for the CRAYOLA IDEAWORKS Mark. Further, among other conduct exhibiting bad faith, Respondent has displayed a pattern of bad faith domain name registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights in the CRAYOLA and CRAYOLA IDEAWORKS trademarks. The disputed domain name is confusingly similar to Complainant’s CRAYOLA IDEAWORKS Mark. Further, Complainant has established that Respondent lacks rights or legitimate interests in the use of the disputed domain name and that Respondent registered and is using the disputed 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 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 Panel finds that Complainant has rights in the CRAYLOLA mark through its registration of the mark with the USPTO (e.g., Reg. No. 644,752, registered Apr. 30, 1957). Registration with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). The Panel also finds that Complainant has rights in the pending CRAYOLA IDEAWORKS Mark through its application of the mark with the USPTO (Serial No. 88857678, filed on April 2, 2020). The Panel finds that pending applications generally do not confer rights under Policy ¶ 4(a)(i). See Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (“The Panel finds that, in this specific case, the pending trademark application(s) of Complainant are insufficient to establish trademark rights.”). However, in this case, because Complainant also has rights in the CRAYOLA Mark, the Panel finds that the pending trademark adds to, not detracts from, the argument that the disputed domain name is identical or confusingly similar to the CRAYOLA IDEAWORKS Mark.
The Panel finds that the disputed domain name is identical or confusingly similar to Complainant’s mark as Respondent merely adds the “.com” generic Top-Level Domain (“gTLD”) to Complainant’s pending mark. Alternatively, Respondent adds the term “ideaworks” and the “.com” gTLD to Complainant’s CRAYOLA trademark. Adding a gTLD to a mark may not avoid a finding of identity between the disputed domain name and the mark under Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”). Additionally, adding a dictionary term and a gTLD does not distinguish a disputed domain name from a 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).”).
Here, Complainant’s argues that Respondent fully incorporates Complainant’s CRAYOLA mark and adds the term “ideaworks” and the “.com” gTLD, which creates a domain name that is identical to Complainant’s pending application.
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”). In this case, Respondent did not carry its burden to come forward with evidence of its rights or legitimate interests in the disputed domain name as it did not respond to the Complaint, but given the facts of this case, the Panel finds that Respondent would have been hard-pressed to furnish availing arguments had it chosen to respond:
Specifically, Respondent is not commonly known by the disputed domain name, Complainant has not authorized, licensed, or otherwise permitted Respondent to use the CRAYOLA IDEAWORKS Mark and Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
Furthermore, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services, or in connection with a legitimate noncommercial or fair use because Respondent does not make an active use of the disputed domain name. Failure to make active use of a domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶4(c)(iii).”).
Finally, Complainant offers the disputed domain name for sale, which does not convey rights or legitimate interests in a disputed domain name. See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). As proof of the inactive landing page and general offer for sale of the disputed domain name, Complainant provides a screenshot of the resolving webpage of the disputed domain name which displays an offer for sale for $990 of the domain name, far in excess of the Respondent’s out-of-pocket costs.
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
First, the Panel concludes that Respondent registered and is using the disputed domain name in bad faith as Respondent does not make active use of the disputed domain name. Inactive holding of a disputed domain name may indicate bad faith registration and use per Policy ¶ 4(a)(iii). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”). Complainant provides a screenshot of the resolving webpage of the disputed domain name shows that Respondent offers the disputed domain name for sale.
Thus, the Panel concludes, that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(i) since Respondent offered to sell the disputed domain name for an amount in excess of its out-of-pocket registration costs. See loanDepot.com, LLC v. Expired domain caught by auction winner.***Maybe for sale on Dynadot Marketplace*** c/o Dynadot, FA 1786281 (Forum June 8, 2018) (“Complainant shows that Respondent offers the disputed domain name for sale for $950, no doubt above its out-of-pocket costs. The Panel finds that this constitutes bad faith under Policy ¶4(b)(i).”).
Second, the panel finds that Respondent registered the disputed domain name in bad faith because Respondent registered the disputed domain name with actual knowledge of Complainant's rights in the CRAYOLA IDEAWORKS Mark. Actual knowledge of a complainant’s mark prior to registering a disputed domain name is sufficient to establish bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014). Respondent registered the disputed domain name merely 4 days after the Complainant applied to the USPTO for the CRAYOLA IDEAWORKS Mark.
Here, actual knowledge can be inferred by Respondent’s registration of a domain name that is identical to the trademark application filed by Complainant a mere 4 days prior to Respondent’s registration of the disputed domain name.
Finally, the Panel concludes that Respondent has an established pattern of bad faith registration of other third party domain names and UDRP proceedings filed against the Respondent. A pattern of bad faith may be established when evidence is provided that a respondent has been party to prior UDRP cases that resulted in the transfer of the domain name under Policy ¶ 4(b)(ii). See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”). Here, Complainant provides the case names and numbers that allegedly involved the Respondent in the complaint and the Panel agrees that such conduct constitutes bad faith.
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <crayolaideaworks.com> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: October 9, 2020
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