Radio Flyer Inc. v. Gregory Villa / Radio Flyers
Claim Number: FA1609001693141
Complainant is Radio Flyer Inc. ("Complainant"), represented by Ulrika E. Mattsson of McDermott Will & Emery LLP, Illinois, United States. Respondent is Gregory Villa / Radio Flyers ("Respondent"), California, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <radioflyersound.com>, registered with Register.com, Inc.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 9, 2016; the Forum received payment on September 9, 2016.
On September 12, 2016, Register.com, Inc. confirmed by email to the Forum that the <radioflyersound.com> domain name is registered with Register.com, Inc.; that Respondent is the current registrant of the name; and that the domain name registration is active and has an expiration date of August 20, 2017. Register.com, Inc. has verified that Respondent is bound by the Register.com, 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 September 15, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 5, 2016 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@radioflyersound.com. Also on September 15, 2016, the Written Notice of the Complaint, notifying Respondent of the email 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 October 11, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 has used RADIO FLYER and related marks since 1931 in connection with the manufacture and sale of wagons and other toys. The marks are the subject of numerous U.S. trademark registrations. Complainant asserts that RADIO FLYER has become a famous mark as a result of widespread use and promotion, claiming more than 8,000 media mentions since 1985.[1]
The disputed domain name <radioflyersound.com> was registered on August 20, 2015. The registration was held in the name of a privacy service, concealing the identity of the actual registrant. Complainant states that Respondent is using the domain name for a website for a music band. The printout of this website provided by Complainant states, in relevant part, "Radio Flyers, Bringing the Entertainment . . . Radio Flyers is a professional cover band that truly brings a sense of energy and excitement to any event."[2]
Complainant contends that the disputed domain name is identical or confusingly similar to its RADIO FLYER mark; that Respondent has no rights or legitimate interests in the domain name; and that the domain name was registered and is being used in bad faith. In support thereof, Complainant asserts that Respondent is not commonly known by the domain name, as the domain name was registered through a privacy service and Complainant has not consented to the use of its name for a music band. Complainant states that Respondent is not affiliated with Complainant and is not licensed or permitted to use Complainant's mark. Complainant alleges that Respondent's conduct constitutes trademark counterfeiting, trademark infringement, cybersquatting, and consumer fraud.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been used in bad faith.
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 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 (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.").
The disputed domain name <radioflyersound.com> corresponds to Complainant's registered mark, with the space omitted and the word sound and the ".com" top-level domain appended thereto. These changes do not diminish the similarity between the domain name and Complainant's mark. See, e.g., Radio Flyer Inc. v. Stefan Hansmann / Invertising, FA 1610574 (Forum May 12, 2015) (finding <radioflyerscooter.com> confusingly similar to RADIO FLYER); National Academy of Recording Arts & Sciences, Inc. v. Jackie Morrisette, FA 1362152 (Forum Jan. 6, 2011) (finding <grammysound.com> confusingly similar to GRAMMYS). The Panel finds that the disputed domain name is confusingly similar to Complainant's mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization. Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. As a result, the Panel need not decide whether use of the phrase "radio flyer" within the name of a band and in a corresponding website would give rise to rights or legitimate interests under paragraph 4(c)(i) of the Policy (bona fide offering of goods or services) or paragraph 4(c)(ii) (entity commonly known by the domain name), or at least might give rise to a legitimate trademark dispute precluding resolution under the Policy, see, e.g., The Gap, Inc. v. G.A.P Adventures Inc., FA 1419226 (Forum Feb. 13, 2012) (dismissing complaint on grounds that it was part of a broader trademark dispute that ought to be decided by a court). The Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(iv) of the Policy, bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Because Respondent has elected not to respond to Complainant's allegations, the Panel accepts them as true for purposes of this proceeding, and finds that the disputed domain name was registered and has been used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <radioflyersound.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: October 17, 2016
[1] The Panel notes that the evidence submitted by Complainant in support of this claim was a partial printout of a LexisNexis news search conducted on May 2, 2016, for the phrase “radio flyer,” indicating that 8,772 documents were retrieved, and including citations and snippets for the first ten of those documents. It is not apparent from the printout how each document actually refers to “radio flyer,” as the term does not appear in most of the snippets. In at least one instance, however, the Panel’s research indicates that the reference to “radio flyer” contained in the document had nothing to do with Complainant or its mark. The fourth entry in the search results provided by Complainant is a newspaper article about horse racing results that mentions a gelding named “My Radio Flyer,” an also-ran in the fourth race at Remington Park in Oklahoma City on April 24, 2016. My Radio Flyer’s performances since that race have been stronger, including a first-place finish on October 1 at Prairie Meadows in Altoona, Iowa.
[2] The “Radio Flyers” cover band advertised on this website appears to be based in Murrieta, California, although its website is no longer active. “Radio Flyers” appears to be a popular name for cover bands. A quick Google search conducted by the Panel reveals other bands with the name “Radio Flyers” located in Kansas City, Kansas; Las Vegas; Salem, Oregon; Seattle; Traverse City, Michigan; Vancouver; and Yonkers, New York; and a band called “Radio Flyer” in Burlington, Vermont. The Vermont band was the subject of a recent proceeding under the Policy, Radio Flyer Inc. v. Michael Maslack, FA 1677366 (Forum July 8, 2016) (transferring <radioflyervt.com> based upon consent of parties).
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