DECISION

 

Jada Group, Inc. dba Jada Toys v. Mahir Hoover

Claim Number: FA2502002140080

PARTIES

Complainant is Jada Group, Inc. dba Jada Toys ("Complainant"), represented by Jorge Arciniega of Loeb & Loeb LLP, California, USA. Respondent is Mahir Hoover ("Respondent"), Germany.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <jadatoysinc.com>, registered with NameCheap, Inc.

 

PANEL

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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 13, 2025; Forum received payment on February 13, 2025.

 

On February 13, 2025, NameCheap, Inc. confirmed by e-mail to Forum that the <jadatoysinc.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 17, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 10, 2025 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@jadatoysinc.com. Also on February 17, 2025, 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 March 10, 2025.

 

On March 10, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends in part as follows:

 

Complainant, Jada Group, Inc. dba Jada Toys, is a manufacturer of collectible scale model cars, figures, radio controlled model vehicles, and dolls. Complainant's history dates back to 1999, when Jack and May Li founded Complainant's company, which was incorporated under the name Jada Toys, Inc. Complainant later changed its name to Jada Group, Inc. in 2010.

 

Complainant owns trademark registrations for the JADA TOYS mark in the U.S. and many jurisdictions around the world.

 

Respondent's at-issue domain name is confusingly similar to a trademark in which Complainant has rights. Complainant used to own the disputed domain name <jadatoysinc.com>, which fully incorporates its original name, Jada Toys, Inc., since its registration date of March 6, 2007. 

 

Complainant has established rights in its JADA TOYS mark through long and continuous use of the mark in commerce in the U.S. and globally, as well as through registration of the JADA TOYS marks with the trademark authorities in both the U.S. and foreign jurisdictions. The at-issue domain name <jadatoysinc.com> is identical and confusingly similar to Complainant's JADA TOYS mark because it incorporates Complainant's JADA and JADA TOYS marks in their entirety merely adding the generic or descriptive term "Inc."

 

Respondent lacks rights and legitimate interests in respect of the at-issue domain name. Respondent is not using or preparing to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services or making a legitimate non-commercial or fair use of the Domain Name within the meaning of Policy ¶ 4(c)(i) or (iii). Instead, Respondent is using the domain name to impersonate Complainant, trade off Complainant's goodwill and promote Respondent's own gaming services under Complainant's JADA TOYS mark. Use of a domain name for illegal activity, e.g., impersonation/passing off, or other types of fraud, can never confer rights or legitimate interests on a respondent. Furthermore, Respondent has no rights or legitimate interests in the <jadatoysinc.com> domain name because Complainant previously owned this domain name before it inadvertently allowed it to expire. Complainant has never licensed or authorized Respondent to use Complainant's JADA TOYS mark or to register any domain name incorporating the mark. Nor is there any affiliation, connection or association between Respondent and Complainant. Respondent also has no rights that might predate those of Complainant. There is no other evidence that suggests that Respondent is commonly known by the <jadatoysinc.com> domain name or name "Jada Toys Inc."

 

Respondent registered and used the at-issue domain name in bad faith. Respondent disrupted Complainant's business by diverting internet users to a commercial website offering content and services unrelated to Complainant's business, i.e. an online gambling website. Respondent has registered and used the at-issue domain name with actual knowledge of Complainant's rights in the JADA TOYS mark. Respondent has registered and used the domain name in bad faith under Policy ¶ 4(a)(iii) because Complainant owned the at-issue domain name for fifteen years and then inadvertently allowed its registration to lapse before Respondent registered it opportunistically to capitalize on Complainant's rights in the JADA TOYS mark. Respondent's use of the disputed Domain Name in attempt to impersonate Complainant also evinces bad faith registration and use under Policy ¶ 4(a)(iii). What's more, Respondent used an incorrect or incomplete address when registering the at-issue domain name, which is a violation of Paragraph 2 of UDRP Policy and further indicates bad faith registration and use.

 

B. Respondent

Respondent contends in full as follows:

 

Dear Jada Group, Inc. dba Jada Toys,

 

I am writing in response to the Written Notice of Complaint (FA Number: FA2502002140080) regarding the domain <jadatoysinc.com>.

 

We sincerely apologize for not noticing your earlier correspondence concerning the licensed content rights. Due to this oversight, the licensed content was not removed in a timely manner, and we deeply regret this failure to act promptly.

 

We fully acknowledge that the use of the licensed content without proper authorization is a serious violation. In order to rectify the situation, we are committed to taking immediate corrective action by removing all content and information that violates the licensing terms and applicable rules.

 

We respectfully request that you consider our corrective measures and, if appropriate, withdraw your complaint. Please let us know if you require any additional information or further documentation from our side.

 

Thank you for your understanding and cooperation.

 

FINDINGS

Complainant has rights in the JADA TOYS trademark.

 

Respondent is not affiliated with Complainant and had not been authorized to use Complainant's trademark in any capacity.

 

Respondent registered the at‑issue domain name after Complainant acquired rights in the JADA TOYS trademark.

 

Respondent uses the <jadatoysinc.com> domain name to address a website that impersonates Complainant.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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.

 

Identical and/or Confusingly Similar

The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.

 

Complainant shows it has rights in its JADA TOYS mark through Complainant's registration of JADA TOYS with any of several trademark registrars worldwide. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) ("Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world."); see also Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) ("The Panel finds that complainant has rights in BLOOMBERG mark under Policy ¶ 4(a)(i) based upon its registration with multiple trademark agencies, including the USPTO.").

 

Furthermore, at-issue domain name contains Complainant's entire JADA TOYS trademark less its domain name impermissible space, followed by the suggestive abbreviation "inc" and the confusingly similar analysis irrelevant ".com" top-level. The differences between <jadatoysinc.com> and Complainant's trademark are thus insufficient to distinguish the <jadatoysinc.com> domain name from Complainant's JADA TOYS trademark under Policy ¶ 4(a)(i). Therefore, the Panel finds that <jadatoysinc.com> is confusingly similar to Complainant's JADA TOYS trademark. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018)("Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element."); see also, Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).)

 

Notably, Respondent failed to proffer any evidence that might in anyway tend to prove that either Complainant had no trademark rights in JADA TOYS when Respondent registered the at-issue domain name, or evidence that distinguishes Respondent's <jadatoysinc.com> domain name from Complainant's mark.

 

Rights or Legitimate Interests

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. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant's prima facie showing acts conclusively.

 

Respondent is not authorized to use Complainant's trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or legitimate interests in respect of the at‑issue domain name. See Navistar International Corporation v. N Rahmany, FA 1620789 (Forum Jun. 8, 2015) (finding that the respondent was not commonly known by the at-issue domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark into any domain name).

 

The WHOIS information for <jadatoysinc.com> identifies the domain name's registrant of as "Mahir Hoover" and the record before the Panel contains no evidence that tends to show that Respondent is commonly known by <jadatoysinc.com>. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

Additionally, Respondent uses the at-issue domain name to address a website appearing like it might be sponsored by or affiliated with Complainant. Respondent thus attempts to pass itself off as Complainant and cause internet users to mistakenly believe that Respondent's at-issue domain name and its website are somehow sponsored by Complainant. Respondent's use of the <jadatoysinc.com> domain name in this manner constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (refusing to find rights and legitimate interests in a domain name on the part of a respondent when the disputed domain name "resolves to a website that Respondent has designed to mimic Complainant's own in an attempt to pass itself off as Complainant"); see also, Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) ("Respondent uses the [disputed] domain name to divert Internet users to Respondent's website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).").

 

In its response, Respondent fails to inform the Panel of any facts or argument even relevant to Policy ¶ 4(a)(ii) analysis, a fortiori that might support Respondent holding rights or legitimate interests in the at-issue domain name. Instead in its Response, Respondent admits to wrong doing regarding "licensed content" and "immediate corrective action" where there is no evidence that Respondent has any license to use any of Complainant's intellectual property and Respondent has done nothing that would warrant Complainant's withdrawing its Complaint. 

 

Given the forgoing, the Panel finds that Respondent lacks rights and lacks legitimate interests in respect of <jadatoysinc.com>

 

Registration and Use in Bad Faith

As discussed below without being exhaustive, the Panel finds that Respondent acted in bad faith pursuant to the Policy.

 

As mentioned above, Respondent uses the at-issue domain name to address a website looking like it is affiliated with Complainant. Respondent's use of <jadatoysinc.com> to pass itself off as Complainant is disruptive to Complainant's business and is intended to attract internet users looking for Complainant to Respondent's website so that Respondent might then, or sometime in the future, capitalize on the confusion Respondent created between its <jadatoysinc.com> domain name and website, and Complainant's JADA TOYS trademark. Here, Respondent diverts internet traffic to a commercial website offering content and services unrelated to Complainant. Respondent's use of <jadatoysinc.com> demonstrates Respondent's bad faith registration and use of such domain name under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where "Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing internet users to a website that mimics Complainant's own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant."); see also, Chevron Intellectual Property LLC v. Domain ID Shield Service / Domain ID Shield Service CO., Limited, FA 1841700 (Forum June 21, 2019) (finding that respondent was using "chevronplacement.com" in bad faith in order to "disrupt the business of Complainant by causing internet users to think an affiliation exists between Respondent's domain names and Complainant"); 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).

 

Additionally, Respondent had actual knowledge of Complainant and its rights in the JADA TOYS mark when it registered <jadatoysinc.com> as a domain name. Respondent's prior knowledge is obvious given the notoriety of Complainant's mark and given Respondent's use of its <jadatoysinc.com> domain name to address a website posing as if it is affiliated with Complainant. Respondent's actual knowledge of Complainant and its rights in JADA TOYS further demonstrates Respondent's bad faith. See Lemon Inc. v. Sumer Singh, FA 2110519 (Forum September 5, 2024 ("registration of a disputed domain name with actual knowledge of another's trademark rights is sufficient to establish bad faith, and can be shown by the notoriety of the mark and the use the Respondent makes of the disputed domain name"); see also, Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name).

 

Moreover, Respondent's Response fails to show that it has any good faith basis whatsoever for registering or using the <jadatoysinc.com> domain name.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <jadatoysinc.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Paul M. DeCicco, Panelist

Dated: March 10, 2025