Radio Flyer Inc. v. xiaoyun yang
Claim Number: FA2105001944726
Complainant is Radio Flyer Inc. (“Complainant”), represented by Joshua S. Frick of Barnes & Thornburg LLP, Illinois, USA. Respondent is xiaoyun yang (“Respondent”), Cambodia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <radio-flyers.com>, registered with Dynadot, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 11, 2021; the Forum received payment on May 11, 2021.
On May 13, 2021, Dynadot, LLC confirmed by e-mail to the Forum that the <radio-flyers.com> 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 May 13, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 2, 2021 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@radio-flyers.com. Also on May 13, 2021, 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 June 8, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 claims rights in the RADIO FLYER mark established by its ownership of the trademark/service mark registrations set out below. In addition, Complainant submits that it has established rights and goodwill in the mark through its use in its business as a designer, manufacturer and provider of toys since 1917, including in recent years on its website and social media platforms.
Complainant alleges that the disputed domain name is confusingly similar to its RADIO FLYER mark and argues that to demonstrate that a domain name is confusingly similar to a complainant’s trademark pursuant to the Policy ¶ 4(a)(i), the complainant need only demonstrate that its mark is included in the disputed domain name. Avaya Inc. v. Jomar Technologies / Jomar Technologies, Inc., FA 1554827 (Forum May 15, 2014) (ending the Identical and/or Confusingly Similar analysis after finding that the domain included Complainant’s identical mark).
Here, the disputed domain name incorporates Complainant’s famous RADIO FLYER mark in its entirety. The only differences between the disputed domain name and Complainant’s RADIO FLYER mark are the additions of a hyphen between “RADIO” and “FLYER,” the addition of the letter “S” to “FLYER,” and the generic top-level domain (gTLD) <.com> extension. These slight differences do nothing to distinguish the disputed domain name from Complainant’s RADIO FLYER mark.
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent has never been known or referred to as “Radio Flyer” or any variation thereof.
There is no other entity, apart from Complainant, that is known as “Radio Flyer”.
Further, there is no indication that Respondent or any business or other organization owned or controlled by Respondent has ever been commonly known by or referred to as the disputed domain name or that the disputed domain name is Respondent’s legal name.
The published WHOIS information for the disputed domain name does not disclose Respondent’s name, thus keeping Respondent’s identity private. Complainant submits that this is further evidence that the Respondent has no rights or legitimate interests in the disputed domain name. See Save On Energy, LLC v. Joseph Crono, FA 1496896 (Forum June 17, 2013) (stating "[t]he fact that Respondent registered the domain name using a privacy service to conceal his identity is by itself evidence that Respondent has no rights or legitimate interests.").
Additionally, Complainant asserts that Respondent is not associated with Complainant and Complainant has not licensed or otherwise authorized Respondent’s use of the RADIO FLYER mark, which demonstrates Respondent’s lack of rights or legitimate interests in the disputed domain name.
The disputed domain name was registered more than 89 years after Complainant first used the RADIO FLYER mark and more than 64 years after Complainant first obtained a registration for the RADIO FLYER mark.
Complainant further argues that Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate non-commercial or fair use. The disputed domain name merely resolves to an inactive website that displays a message stating that “the requested URL could not be retrieved.” A printout of the web page generated by the disputed domain name has been submitted in an annex to the Complaint. Complainant contends that this type of passive holding of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Michelin NorthAmerica, Inc. v. Energie Media Group, FA 451882 (Forum August 7, 2012) (inactive use, or “passive holding,” of a disputed domain name by a respondent “permits the inference that [that respondent] lacks rights and legitimate interests in the domain names [as provided in Policy ¶ 4(c)(i) or (iii)]”).
Complainant also alleges that the disputed domain name was registered in bad faith arguing that the registration took place many years after Complainant commenced use and first registered the RADIO FLYER mark. The long and widespread publicity and recognition of Complainant’s mark, and the sales of Complainant’s products, strongly supports the argument that Respondent had constructive, if not actual, notice of Complainant’s rights to the famous RADIO FLYER mark prior to registering the disputed domain name.
Additionally, Complainant submits that prior panel decisions have held that bad faith may be inferred from the registration of a well-known mark. See The Caravan Club v. Mrgsale, FA7000095314 (Forum August 30, 2000) (“Registration of a well known trademark by a party with no connection to the owner of the trademark and no authorization and no legitimate purpose to utilize the mark reveals bad faith.”)
Complainant further contends that the disputed domain name is being used in bad faith arguing that the disputed domain name does not resolve to an active website and there is no evidence of present use, or demonstrable preparations to use the disputed domain name. Complainant submits that such passive use constitutes bad faith under the Policy. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding that “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant carries on the business as a designer, manufacturer and provider of toys in which it uses the RADIO FLYER mark and is the owner of the following portfolio of trademark registrations:
· United States registered trademark RADIO FLYER registration number 635,875, registered on the Principal Register on October 16, 1956 for goods in international class 28;
· United States registered trademark RADIO FLYER and Design registration number 1,783,110 registered on the Principal Register on July 20, 1993 for goods in international classes 25 and 28;
· United States registered trademark RADIO FLYER registration number 1,669,490 registered on the Principal Register on December 24, 1991 for goods in international class 28;
· United States registered trademark RADIO FLYER and Design registration number 1,660,968 registered on the Principal Register on October 15, 1991 for goods in international class 28;
· United States registered trademark RADIO FLYER (Stylized) registration number 1,661,830 registered on the Principal Register on October 22, 1991 for goods in international class 28
· United States registered trademark RADIO FLYER and Design registration number 1,799,869 registered on the Principal Register on October 19, 1993 for goods in international class 28;
· United States registered trademark RADIO FLYER registration number 1,798,441 registered on the Principal Register on October 12, 1993 for goods in international class 25;
· United States registered trademark RADIO FLYER and Design registration number 2,594,203, registered on the Principal Register on July 16, 2002 for goods in international class 24;
· United States registered trademark RADIO FLYER and Design registration number 5,811,914, registered on the Principal Register on July 23, 2019 for goods in international class 12;
· United States registered trademark RADIO FLYER registration number 5,811,913 registered on the Principal Register on July 23, 2019 for goods in international class12.
Complainant has an established Internet presence and maintains a website to which its domain name <radioflyer.com> resolves.
The disputed domain name was registered on March 7, 2021 and is inactive. The URL <radio-flyers.com> resolves to an error page.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and information provided by the Registrar in response to the enquiry from the Forum seeking confirmation details of the registration of the disputed domain name for the purposes of this Complaint.
The Registrar confirmed that Respondent is the registrant of the disputed domain name. Respondent availed of a privacy service, concealing his or her identity on the published WhoIs.
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”).
Complainant has made out an uncontested convincing case that it has rights in the RADIO FLYER mark established by its ownership of the trademark/service mark registrations described above. In addition, Complainant submits that it has established common law rights and goodwill in the mark through its use in its business designing, manufacturing, and marketing toys for almost 90 years
The disputed domain name consists of Complainant’s RADIO FLYER mark with additions of a hyphen between the words “radio” and “flyer,” the addition of the letter “s” to “flyer,” and the generic Top-Level Domain (“gTLD") extension <.com.>.
Notwithstanding the additions of the hyphen and the letter “s”, Complainant’s RADIO FLYER mark is identifiable as the principal, dominant and only distinctive element in the disputed domain name.
The other elements, namely, the hyphen and the letter “s” and the gTLD extension add no distinguishing character to the disputed domain name.
For the purposes of evaluating confusing similarity between the disputed domain name and Complainant’s mark, the gTLD <.com> extension may be ignored because in the circumstances of this Complaint, on the balance of probabilities it would be recognized as a technical necessity for a domain name and serves no other purpose or meaning in the context.
This Panel finds therefore that the disputed domain name is confusingly similar to the RADIO FLYER mark in which Complainant has rights.
Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out an uncontested prima facie case that Respondent has no rights or legitimate interests in the disputed domain name because:
· Respondent has never been known or referred to as “Radio Flyers” or any variation thereof;
· there is no other entity, apart from Complainant, that is known as “Radio Flyers”;
· there is no indication that Respondent or any business or other organization owned or controlled by Respondent has ever been commonly known by or referred to as the disputed domain name or that the disputed domain name is Respondent’s legal name;
· the published WHOIS information for the disputed domain name does not disclose Respondent’s name, thus keeping Respondent’s identity private;
· Respondent is not associated with Complainant and Complainant has not licensed or otherwise authorized Respondent’s use of the RADIO FLYER mark;
· the disputed domain name was registered more than 89 years after Complainant first used the RADIO FLYER mark and more than 64 years after Complainant first obtained a registration for the RADIO FLYER mark;
· Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate non-commercial or fair use;
· the disputed domain name merely resolves to an inactive website that displays a message stating that “the requested URL could not be retrieved” as shown in the printout of the web page generated by the disputed domain name has been submitted in an annex to the Complaint; and
· such passive holding of a domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
It is well established that, as in this case, once a complainant makes out a prima facie case that the respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts the respondent to prove such rights or interests. Respondent has failed to discharge the burden of production in this proceeding. This Panel must therefore find that on the balance of probabilities, Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant has satisfied this Panel that on the balance of probabilities the disputed domain name was registered in bad faith because it was registered using a privacy service to conceal Respondent’s identity on the published WhoIs, almost 90 years after Complainant first established rights in the RADIO FLYER mark. Complainant’s RADIO FLYER name and mark is a distinctive combination of the two words “radio” and “flyer”. Complainant has long and extensively used the RADIO FLYER in trade including on the Internet. It is most improbable therefore that the registrant of the disputed domain name was unaware of Complainant’s name and mark when the disputed domain name was chosen and registered.
On the balance of probabilities, the disputed domain name was chosen and registered in bad faith with the intention of taking predatory advantage of Complainant’s mark. There is no other plausible explanation.
In the circumstances of this case, this Panel finds on the balance of probabilities, that the passive holding of the disputed domain name constitutes bad faith registration. The pertinent circumstances are that RADIO FLYER is a very distinctive trademark and it is implausible that the disputed domain name could be used for any reason other than to reference Complainant, its goodwill and reputation. If used as a web address the disputed domain name would inevitably cause confusion and risk diversion of Internet traffic away from Complainant’s website. If used for any other purpose there would be a serious risk of confusion because of its confusing similarity to Complainant’s name and mark. There was no Response to the Complaint. Respondent used a privacy service to conceal his or her identity and it is impossible to conceive any good faith use of the disputed domain name.
As this Panel has found that on the balance of probabilities the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to succeed in its application for transfer of 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 <radio-flyers.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: June 10, 2021
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