Radio Flyer Inc. v. Jonathan Buckley / The Artesian Network, LLC
Claim Number: FA1710001752395
Complainant is Radio Flyer Inc. (“Complainant”), represented by Ulrika E. Mattsson of McDermott Will & Emery LLP, Illinois, USA. Respondent is Jonathan Buckley / The Artesian Network, LLC (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <radioflyerpictures.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 5, 2017; the Forum received payment on October 5, 2017.
On October 6, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <radioflyerpictures.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 October 10, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 30, 2017 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@radioflyerpictures.com. Also on October 10, 2017, 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 November 2, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant uses the RADIO FLYER mark, logo design mark and trade name in connection with manufacturing and selling safe, quality toys, such as wagons, tricycles, scooters, and other ride-on toys. Complainant registered the RADIO FLYER mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 635,875, registered Oct. 16, 1956).
2. Respondent’s <radioflyerpictures.com>[1] is confusingly similar to Complainant’s mark because it incorporates the RADIO FLYER mark in its entirety, adding the generic term “pictures” and the “.com” generic top level domain (“gTLD”).
3. Respondent has no rights or legitimate interests in <radioflyerpictures.com>. Respondent is not commonly known by the domain name. Complainant has not licensed or permitted Respondent to use the RADIO FLYER mark for any purpose.
4. Respondent fails to use the domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. The domain resolves to an inactive website displaying the message: “Website coming soon.”
5. Respondent registered and continues to use <radioflyerpictures.com> in bad faith. The domain name disrupts Complainant’s business by redirecting users to an inactive webpage. Respondent registered <radioflyerpictures.com> with actual knowledge of Complainant and its rights in the RADIO FLYER mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the RADIO FLYER mark. Respondent’s domain name is confusingly similar to Complainant’s RADIO FLYER mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <radioflyerpictures.com> domain name and that Respondent registered and uses the domain name 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.”).
Complainant uses the RADIO FLYER mark, logo design mark and trade name in connection with manufacturing and selling safe, quality toys, such as wagons, tricycles, scooters, and other ride-on toys. Complainant registered the RADIO FLYER mark with USPTO (e.g., Reg. No. 635,875, registered Oct. 16, 1956). Registration of a mark with the USPTO sufficiently establishes the required rights in a mark for purposes of Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Therefore, the Panel concludes that Complainant has established its rights in the RADIO FLYER mark under Policy ¶ 4(a)(i).
Complainant asserts that Respondent’s <radioflyerpictures.com> is confusingly similar to Complainant’s mark because it incorporates the RADIO FLYER mark in its entirety, adding the generic term “pictures” and the “.com” gTLD. The addition of a generic or descriptive term and a gTLD are insufficient to differentiate a domain name from a mark in which a complainant has rights. See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Accordingly, the Panel finds that the additions made to Complainant’s mark in <radioflyerpictures.com> do not serve to differentiate the RADIO FLYER mark from the domain name for purposes of Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <radioflyerpictures.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <radioflyerpictures.com> domain name as required by Policy ¶ 4(a)(ii). Complainant contends Respondent is not commonly known by the domain names, nor has Complainant licensed or permitted Respondent to use the RADIO FLYER mark for any purpose. The WHOIS information of record lists Respondent as “Jonathan Buckley,” which does not reflect that Respondent has been commonly known by the <radioflyerpictures.com> domain name. The WHOIS registrant information can be used to indicate that a respondent is not commonly known by a domain name. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Therefore, the Panel finds that Respondent is not commonly known by <radioflyerpictures.com>.
Complainant further argues that Respondent fails to use the <radioflyerpictures.com> domain name in connection with any bona fide offering of goods or services, or for a legitimate noncommercial or fair use. The domain name resolves to an inactive website displaying the message” “Website coming soon.” Domain names which have no demonstrable preparations of use do not demonstrate a bona fide offering of goods or services. See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). Thus, the Panel finds that Respondent does not use the <radioflyerpictures.com> domain name in connection with any bona fide offering of goods or services or for a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues Respondent registered and continues to use <radioflyerpictures.com> in bad faith. Complainant asserts that the domain name disrupts Complainant’s business by redirecting users to an inactive webpage. Disrupting a complainant’s business, and attracting internet users to a domain name by creating a likelihood of confusion for commercial gain can demonstrate bad faith under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). “Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).” VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015). Therefore, the Panel finds Respondent’s <radioflyerpictures.com> was registered in bad faith .
Finally, Complainant argues that Respondent registered <radioflyerpictures.com> with actual knowledge of the Complainant and its rights in the RADIO FLYER mark. Complainant contends that in light of the fame, notoriety, and long-standing use of Complainant's RADIO FLYER mark, it is inconceivable that Respondent could have registered the <radioflyerpictures.com> domain name without actual knowledge of Complainant's rights in the mark. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“[T]he Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Therefore, because the Panel concludes that the record supports Complainant’s assertion that Respondent had actual knowledge of Complainant’s mark and Complainant’s rights in that mark, the Panel finds bad faith. Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <radioflyerpictures.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson Panelist
Dated: November 10, 2017
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