Radio Flyer Inc. v. L H
Claim Number: FA2111001972604
Complainant is Radio Flyer Inc. (“Complainant”), represented by Joshua S. Frick of Barnes & Thornburg LLP, Illinois, USA. Respondent is L H (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <radioflyer-us.store>, 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 November 9, 2021; the Forum received payment on November 9, 2021.
On November 10, 2021, Dynadot, LLC confirmed by e-mail to the Forum that the <radioflyer-us.store> 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 November 10, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 30, 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@radioflyer-us.store. Also on November 10, 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 December 2, 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 relies on its rights in its portfolio of trademark and service mark registrations described low and claims rights in the RADIO FLYER mark established by extensive use in commerce, commencing in 1917. Complainant submits that it has an international reputation and goodwill in the mark and its international sales are promoted by extensive marketing and advertising, including on the Internet on Complainant’s website at <www.radioflyer.com> as well as social media platforms.
Complainant has provided detailed history of its business in an annex to the Complaint and submits that online sales have become critical to its business.
Complainant alleges that the disputed domain name is confusingly similar to the RADIO FLYER mark in which it has rights, arguing that the disputed domain name fully incorporates its registered trademark and service mark and the only differences are the addition of the generic term “US” and the generic Top-Level Domain (gTLD) <.store> extension.
Complainant submits that panels established under Policy have consistently held that the use of Complainant’s RADIO FLYER mark as the sole distinctive portion of a domain name in dispute, as in the present the case, constitutes a confusingly similar use of Complainant’s mark. Complainant cites a long list of proceedings in which Complainant has succeeded under the Policy, including for example: Radio Flyer Inc. v. Daisuke Nakajima / Meril .Inc., Case. No. 1781847 (Forum May 17, 2018).
Complainant further alleges that Respondent has no rights legitimate interests in the disputed domain name, arguing that Respondent has never been known, or referred to, as RADIO FLYER or any variation thereof; that Respondent is not affiliated with, licensed by or otherwise authorized by Complainant to use the RADIO FLYER mark; that Respondent has not used the disputed domain name in connection with any bona fide offering of goods or services; and that Respondent has registered the disputed domain name using a privacy service to conceal its identity.
Complainant adds that there is no other entity, apart from Complainant, that is known as RADIO FLYER.
Complainant further asserts that its rights in the RADIO FLYER mark predate the registration of the disputed domain name by more than 89 years.
Referring to a screen capture of the website to which the disputed domain name resolves, which has been adduced in evidence in an annex to the Complaint, Complainant submits that it illustrates that Respondent is using the disputed domain name to impersonate Complainant and take advantage of its reputation and goodwill by purporting to confuse and misdirect Internet users to Complainant’s website that displays Complainant’s mark, logo and products without authorization.
Complainant contends that Respondent is purporting to impersonate Complainant by the use of the disputed domain name and the content of the website.
Complainant argues that the evidence shows that Respondent is not making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant further contends that the disputed domain name was registered and is being used in bad faith, arguing that the disputed domain is identical and/or confusingly similar to Complainant’s famous RADIO FLYER mark and Respondent had constructive or actual notice of Complainant’s rights to the RADIO FLYER marks when the disputed domain name was chosen and registered.
Complainant further contends that Respondent is using Complainant’s RADIO FLYER mark in the disputed domain name and on its website, without authorization, in an attempt to deceive Internet users and attract them to Respondent’s website for its own financial gain.
Complainant reemphasizes that when the disputed domain name was registered in 2021, Complainant had already been using its RADIO FLYER mark for more than 89 years and owned at least ten (10) United States federal registrations for Complainant’s RADIO FLYER marks, one of which had been registered for more than 65 years.
Furthermore, Complainant contends that given the appearance and content of the website to which the disputed domain name resolves, including the unauthorized prominent use of the RADIO FLYER mark and photographs of Complainant’s RADIO FLYER branded products which are copied from Complainant’s own website, it is clear that Respondent is attempting to impersonate Complainant and to pass off Respondent’s website as Complainant’s official RADIO FLYER website or a website approved by or associated with Complainant.
Complainant further argues that it cannot be denied that Respondent had actual knowledge of Complainant and Complainant’s RADIO FLYER marks prior to registering and using the disputed domain name and that this is clear evidence of Respondent’s bad faith. See Logitech International S.A. v. Alexander Walker, FA1909001860966 (Forum Sept. 13, 2019) (finding bad faith where Respondent knew of Complainant and its rights).
Moreover, Complainant submits that Respondent’s unauthorized use of Complainant’s RADIO FLYER mark and other intellectual property to attract Internet consumers to Respondent’s website using the disputed domain name, which incorporates the RADIO FLYER mark without Complainant’s authorization, for Respondent’s own financial gain is clear evidence of Respondent’s bad faith. See Wahl Clipper Corporation v. rayan cash / gewcorps.com, FA2006001898556 (Forum June 26, 2020) (finding bad faith where the disputed domain resolved to parked page displaying sponsored hyperlinks labeled with terms related to Complainant’s Wahl Products).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a manufacturer and designer of toys which it markets under the RADIO FLYER trademark for which it owns a portfolio of registrations including the following:
· 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 (illustrated drawing), registration number 1,783,110, registered on the Principal Register on July 20, 1993, for goods in international classes 16, 25, and 28;
· United States registered trademark RADIO FLYER, registration number 1,669,490, registered on the Principal Register on December 24, 1991, goods in international classes 20 and 28
· United States registered trademark RADIO FLYER (illustrated drawing), 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 (illustrated drawing), 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 (illustrated drawing), registration number 1,799,869, registered on the Principal Register on October 19, 1993 for goods in international classes 16, 25, and 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 classes 16, 18, 25, and 28;
· United States registered service mark RADIO FLYER (illustrated drawing), registration number 2,594,203, registered on the Principal Register on July 16, 2002 for services in international classes 42 and 50;
· United States registered trademark RADIO FLYER, registration number 5 million hundred and 11,914 registered on the Principal Register on July 23, 2019 for goods in international class 12.
Complainant has an established Internet presence and maintains its website at <www,radioflyer.com>.
The disputed domain name <radioflyer-us.store> was registered on October 25, 2021 and resolves to a website that mimics the look and feel of Complainant’s website, prominently displays Complainant’s RADIO FLYER marks and purports to sell Complainant’s products at hugely discounted prices with this ranging from 43% to 79%.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WHOIS, and the information provided by the Registrar in response to the request by the Forum for the details of the registration of the disputed domain name in the course of this proceeding.
Respondent has availed of a privacy service is concealed to conceal its identity, on the published WHOIS, and Respondents chosen identifier, the initials LH, was revealed by the Registrar in response to said request by the Forum.
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 provided convincing, uncontested evidence of its rights in the RADIO FLYER mark established by its ownership of the portfolio of trademark and service mark registrations described above as well as its use of the mark in the sale of its goods and provision of services in the market, including online on its website. The evidence shows that Complainant has established a significant international goodwill and reputation in the mark.
The disputed domain name <radioflyer-us.store>, consists of Complainant’s RADIO FLYER mark, together with a hyphen, the letters “US”, and the gTLD extension <.store>.
Complainant’s RADIO FLYER mark is the initial, dominant, and only distinctive element in the disputed domain name. The hyphen, in context, has no significance. The letters “US”, would probably be taken as a reference to the market in the United States, and therefore, in context, have no distinguishing character, and the gTLD extension <.store> would be considered by Internet users as a necessary technical requirement for a domain name. The gTLD itself bears a reference to online sales.
This Panel finds therefore that the disputed domain name is confusingly similar to the RADIO FLYER mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· Respondent has never been known or referred to as RADIO FLYER or any variation thereof;
· Respondent has registered the disputed domain name using a privacy service to conceal its identity;
· Respondent is not affiliated with, licensed or otherwise authorized by Complainant to use the RADIO FLYER mark;
· there is no other entity, apart from Complainant, that is known as RADIO FLYER;
· Complainant has not licensed or otherwise authorized Respondent’s use of the RADIO FLYER mark. Complainant’s rights in the RADIO FLYER mark predate the registration of the disputed domain name by more than 89 years;
· the screen capture of the website to which the disputed domain name which has been adduced in evidence in an annex to the Complaint, illustrates that Respondent is using the disputed domain name to impersonate Complainant and take advantage of its reputation and goodwill in the RADIO FLYER mark by purporting to confuse and misdirect Internet users to Complainant’s website that displays Complainant’s mark, logo and products;
· it follows that Respondent is not making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue;
· Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services.
It is well established that once our complainant makes out a prima facie case that a complainant has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests. Respondent has failed to discharge that burden and therefore this Panel must find that 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).
It is improbable that the registrant would have chosen and the disputed domain name, without knowledge of Complainant’s RADIO FLYER mark which is the dominant and only distinctive element of the disputed domain name.
Furthermore, Complainant has shown that it has made long and extensive use of the RADIO FLYER mark for many years, including on the Internet, prior to the registration of the disputed domain name.
On the balance of probabilities therefore, this Panel finds that the disputed domain name was registered in bad faith with the intention of targeting and taking predatory advantage of Complainant’s mark and goodwill.
On the balance of probabilities, the registrant registered the disputed domain name intending that it would be used to confuse, mislead and misdirect Internet users, luring Internet traffic away from Complainant’s website to a website used by Respondent to impersonate Complainant.
This finding is supported by the screen capture of the website to which the disputed domain name resolves, which has been adduced in evidence by Complainant and which shows that Respondent’s website mimics Complainant’s website, uses Complainant’s logo and trademark as well as the look and feel of Complainant’s website, creating the impression that the website is maintained or associated with Complainant.
There is no question that the Respondent is a bona fide reseller of Complainant’s goods as Respondent’s website is clearly designed to impersonate Complainant. It purports to be associated with Complainant. Respondent does not in any way provide any information on the website that would identify Respondent or that might clarify that Respondent has no connection with Complainant. In fact, the contrary is true as Respondent is purporting to impersonate Complainant.
This Panel finds therefore that the disputed domain name has been 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 be granted the remedy requested.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <radioflyer-us.store> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: December 6, 2021
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