Radio Flyer Inc. v. Stefan Hansmann / Invertising
Claim Number: FA1503001610574
Complainant is Radio Flyer Inc. (“Complainant”), represented by Ulrika E. Mattsson of McDermott Will & Emery LLP, Illinois, USA. Respondent is Stefan Hansmann / Invertising (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <radioflyerscooter.com>, registered with GoDaddy.com, 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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 20, 2015; the Forum received payment on March 20, 2015.
On March 20, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <radioflyerscooter.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 March 31, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 20, 2015, 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@radioflyerscooter.com. Also on March 31, 2015, 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 April 28, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 uses the RADIO FLYER mark in connection with its business manufacturing and selling safe, quality toys, such as wagons, tricycles, scooter, and other ride-on toys. Complainant has registered the RADIO FLYER mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 635,875, registered October 16, 1956), which demonstrates rights in the mark. Respondent’s <radioflyerscooter.com> domain name is confusingly similar to the RADIO FLYER mark as it incorporates the mark in its entirety while eliminating the spacing between words, adding the descriptive word “scooter” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <radioflyerscooter.com> domain name. Respondent is not commonly known by the disputed domain name. Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <radioflyerscooter.com> domain name. Rather, the domain name resolves to a website containing hyperlinks which resolve to direct competitors of Complainant and from which Respondent presumably nets pay-per-click profits.
Respondent is using the <radioflyerscooter.com> domain name in bad faith. Respondent’s use of the website is a disruption of Complainant’s legitimate business purposes. Respondent has also attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Further, Respondent had actual and constructive notice of the RADIO FLYER mark and Complainant’s rights therein because of the mark’s fame, notoriety, and multiple trademark registrations.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Radio Flyer Inc., uses the RADIO FLYER mark in connection with its business manufacturing and selling safe, quality toys, such as wagons, tricycles, scooter, and other ride-on toys. Complainant has rights in the RADIO FLYER mark through registration with the USPTO (e.g., Reg. No. 635,875, registered October 16, 1956).
Respondent, Stefan Hansmann / Invertising, registered the <radioflyerscooter.com> domain name on May 31, 2014. Respondent uses the domain name to resolve to a website containing hyperlinks which resolve to direct competitors of Complainant and from which Respondent presumably nets pay-per-click profits.
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant has rights in the RADIO FLYER mark under Policy ¶ 4(a)(i) through registration with the USPTO (e.g., Reg. No. 635,875, registered October 16, 1956), even where Respondent operates in a different country. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s <radioflyerscooter.com> domain name is confusingly similar to the RADIO FLYER mark under Policy ¶ 4(a)(i) as it incorporates the mark in its entirety while eliminating the spacing between words, and adding the “.com” gTLD and the descriptive word “scooter”. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”).
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Respondent has no rights or legitimate interests in the <radioflyerscooter.com> domain name. The WHOIS information for the <radioflyerscooter.com> domain name lists “Stefan Hansmann / Invertising” as registrant of record. Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. 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).
Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the <radioflyerscooter.com> domain name under Policy ¶¶ 4(c)(i) and (iii). The domain name resolves to a website containing hyperlinks which resolve to direct competitors of Complainant and from which Respondent presumably nets pay-per-click profits. Such links include: “Outdoor Toys”, “Toy Vehicles”, and “Kids Toys.” Respondent’s use is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).
Respondent’s use of the <radioflyerscooter.com> domain name disrupts Complainant’s business. A respondent’s diversion of Internet users to competitors of a complainant through hyperlinks constitutes bad faith disruption under Policy ¶ 4(b)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Respondent has also attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Respondent’s use of the <radioflyerscooter.com> domain name constitutes bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Finally, Complainant also contends that in light of the fame and notoriety of Complainant's RADIO FLYER mark, it is inconceivable that Respondent could have registered the <radioflyerscooter.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name. Actual knowledge is evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
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 <radioflyerscooter.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: May 12, 2015
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