Radio Flyer, Inc. v. An Hai Tang
Claim Number: FA1912001874155
Complainant is Radio Flyer, Inc. (“Complainant”), represented by Joshua S. Frick of Barnes & Thornburg LLP, United States. Respondent is An Hai Tang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <radioflyersingapore.com>, registered with Namesaplenty 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 6, 2019; the Forum received payment on December 6, 2019.
On December 9, 2019, Namesaplenty LLC confirmed by e-mail to the Forum that the <radioflyersingapore.com> domain name is registered with Namesaplenty LLC and that Respondent is the current registrant of the name. Namesaplenty LLC has verified that Respondent is bound by the Namesaplenty 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 December 10, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 30, 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@radioflyersingapore.com. Also on December 10, 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 January 3, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
Complainant, Radio Flyer, Inc., manufactures and sells ride-on toys such as wagons, tricycles, and scooters. Complainant has the rights in the RADIO FLYER mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 635,875, registered Oct. 16, 1956). See Compl. Ex. F. Respondent’s <radioflyersingapore.com> domain name is confusingly similar to Complainant’s mark because the domain name includes Complainant’s RADIO FLYER mark in its entirety, merely adding the generic word “Singapore” and the “.com” generic top level domain (gTLD).
Respondent has no rights or legitimate interests in the <radioflyersingapore.com> domain name. Respondent is not licensed or authorized to use Complainant’s RADIO FLYER mark and is not commonly known by the disputed domain name. Additionally, Respondent doesn’t use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to divert Internet users to another website for commercial gain.
Respondent registered and is using the <radioflyersingapore.com> domain in bad faith. Respondent is attempting to attract Internet users to its website for commercial gain. Additionally, bad faith may be inferred from Respondent’s registration of a well-known mark. Finally, Respondent had actual knowledge or constructive notice of Complainant’s rights to the RADIO FLYER mark prior to registering the <radioflyersingapore.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that manufactures and sells ride-on toys such as wagons, tricycles, and scooters.
2. Complainant has established its trademark rights in the RADIO FLYER mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 635,875, registered Oct. 16, 1956).
3. Respondent registered the <radioflyersingapore.com> domain name on July 31, 2019.
4. Respondent uses the disputed domain name to divert Internet users to another website for commercial gain.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the RADIO FLYER mark based upon registration with the USPTO. Registration with the USPTO sufficiently establishes rights in a mark under Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority). Complainant provides copies of its USPTO registrations for the RADIO FLYER mark (e.g., Reg. No. 635,875, registered October 16, 1956). See Compl. Ex. F. Thus, the Panel finds that Complainant has rights in the RADIO FLYER mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s RADIO FLYER mark. Complainant argues that Respondent’s <radioflyersingapore.com> domain name is confusingly similar to Complainant’s RADIO FLYER mark because Respondent includes Complainant’s mark in its entirety and simply adds a generic term and the “.com” gTLD. The addition of a generic terms and a gTLD to a complainant’s mark do not negate any confusing similarity between a disputed domain name and the mark under Policy ¶ 4(a)(i). See Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.); see alsoTrip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (finding that the addition of geograhic terms, such as “cancun” to the end of the CHEAPTICKETS mark in the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names, does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i)); see also 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.”). Complainant argues Respondent merely adds the generic word “Singapore” and a “.com” gTLD to Complainant’s RADIO FLYER mark. The Panel agrees with Complainant and finds that the <radioflyersingapore.com> does not contain changes from the trademark that would sufficiently distinguish it from the RADIO FLYER mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s RADIO FLYER mark and to use it in its domain name, adding the generic word “Singapore” which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the <radioflyersingapore.com> domain name on July 31, 2019;
(c) Respondent has used the disputed domain name to divert Internet users to another website for commercial gain;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <radioflyersingapore.com> domain name as Respondent is not authorized to use Complainant’s RADIO FLYER mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information of record identifies the registrant as “an hai tang” and no information suggests that Respondent is affiliated with or authorized by Complainant to use the RADIO FLYER mark. Therefore, the Panel finds that Respondent has not been commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant submits that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate non-commercial or fair use. Specifically, Respondent uses the domain name to redirect users to a website offering gambling services. Redirection to websites that offer services unrelated to a complainant’s business may not constitute a bona fide offering of goods or services or a noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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).”) Here, Complainant provides screenshots of Respondent’s uses the <radioflyersingapore.com> domain name’s resolving webpage which directs users to a website promoting a lottery and gambling services. See Compl. Ex. G. Therefore, the Panel finds that Respondent did not use the domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and used the <radioflyersingapore.com> domain in bad faith because Respondent is attempting to attract Internet users to its website for commercial gain by directing Internet users to unrelated gambling services. Registration and use of a disputed domain name to mislead users and redirect them to a webpage for commercial gain may indicate bad faith per Policy ¶ 4(b)(iv). See Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Forum Oct. 6, 2003) (“Respondent has attempted to commercially benefit from the misleading <qwestwirless.com> domain name by linking the domain name to adult oriented websites, gambling websites, and websites in competition with Complainant. Respondent’s attempt to benefit commercially from the misleading domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”). The Panel recalls Complainant’s screenshots of the disputed domain name’s resolving webpage that shows Respondent uses the <radioflyersingapore.com> domain name to divert potential customers of Complainant’s business to a webpage which promotes services unrelated to Complainant and its business. See Compl. Ex. G. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant Policy ¶ 4(b)(iv).
Secondly, Complainant argues that bad faith may be inferred from Respondent’s registration of a domain name that infringes on Complainant’s well-known mark. Registration of a disputed domain name that incorporates a well-known mark by a respondent entirely unaffiliated with the mark can provide evidence of bad faith under Policy ¶ 4(a)(iii). See Harrods Ltd. v. Harrod’s Closet, D2001-1027 (WIPO Sept. 28, 2001) (finding that where a mark is so “obviously connected with well-known products,” it’s very use by someone with no connection to these products can evidence opportunistic bad faith). Complainant notes the renown of its RADIO FLYER mark and argues that bad faith can be inferred from the use of the trademark in the <radioflyersingapore.com> domain name. As the Panel agrees, it finds bad faith registration and use under Policy ¶ 4(a)(iii).
Thirdly, Complainant submits that Respondent had actual knowledge or constructive notice of Complainant’s rights to the RADIO FLYER mark prior to registering the <radioflyersingapore.com> domain name. Constructive notice of a complainant’s rights in a mark is insufficient to find bad faith, but actual knowledge is sufficient and may be proven through a totality of circumstances under Policy ¶ 4(a)(iii). See Meredith Corp. v. CityHome, Inc., D2000-0223 (WIPO May 18, 2000) (finding that the respondent’s constructive notice of the complainant’s registered mark was insufficient to support a finding of bad faith registration); but see AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Here, Complainant provides evidence of widespread publicity and recognition of Complainant’s RADIO FLYER mark and contends that Respondent must have had actual knowledge of the trademark. See Compl. Ex. E. Therefore, as the Panel determines that Complainant’s evidence rises to the level of actual notice having been acquired by Respondent, the Panel finds that Respondent has engaged in bad faith registration under Policy ¶ 4(a)(iii).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the RADIO FLYER mark and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <radioflyersingapore.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: January 4, 2020
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