Radio Flyer Inc. v. Daisuke Nakajima / Meril .Inc
Claim Number: FA1804001781847
Complainant is Radio Flyer Inc. ("Complainant"), represented by Brittany A. Washington of McDermott Will & Emery LLP, Illinois, USA. Respondent is Daisuke Nakajima / Meril .Inc ("Respondent"), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <radioflyervt.com>, registered with GMO Internet, Inc. d/b/a Onamae.com ("GMO Internet").
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 April 16, 2018; the Forum received payment on April 16, 2018. The Complaint was submitted in both Japanese and English.
On April 17, 2018, GMO Internet confirmed by email to the Forum that the <radioflyervt.com> domain name is registered with GMO Internet and that Respondent is the current registrant of the name. GMO Internet has verified that Respondent is bound by the GMO Internet 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 April 23, 2018, the Forum served the Complaint in both English and Japanese and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 14, 2018 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@radioflyervt.com. Also on April 23, 2018, 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 May 17, 2018, 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 manufactured and sold wagons and other toys since 1917. Its goods are offered under the RADIO FLYER mark throughout the United States and around the world. Complainant holds numerous registrations for RADIO FLYER and related marks in the United States and other jurisdictions, and asserts that the mark has become famous as a result of widespread use and promotion.
Respondent registered the disputed domain name <radioflyervt.com> in November 2017, using a privacy registration service in an effort to conceal his identity. The domain name resolves to a website containing the message "This site can't be reached." Complainant states that Respondent is neither affiliated with Complainant nor licensed or permitted to use its RADIO FLYER mark, and that Respondent is not commonly known by the disputed domain name.
Complainant contends on the above grounds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
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 is being 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 Panel notes that the Registration Agreement is written in Japanese. Rule 11(a) provides that the language of this administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise.
The Complaint and Commencement Notification were served in both English and Japanese, and Respondent elected not to file a Response or otherwise participate in the proceedings. The disputed domain name is comprised of words in the English language, and the content of the website that it resolves to is also in English, indicating a likelihood that Respondent understands the English language. Under the circumstances, the Panel determines that the language requirement in the Rules has been satisfied, and the remainder of the proceedings may be conducted in English.
The disputed domain name <radioflyervt.com> incorporates Complainant's registered RADIO FLYER mark, omitting the space and adding the letters "VT" (possibly an abbreviation for the geographic term "Vermont") and the ".com" top-level domain. These alterations do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Radio Flyer Inc. v. Jonathan Buckley / The Artesian Network, LLC, FA 1752395 (Forum Nov. 10, 2017) (finding <radioflyerpictures.com> confusingly similar to RADIO FLYER); New Horizons Education Corp. v. Benchmark Learning, D2012-0925 (WIPO June 16, 2012) (finding <newhorizonsmn.com> confusingly similar to NEW HORIZONS); Everlast Roofing, Inc. v. Rips&Hits & Brendon Nath, D2012-0034 (WIPO Feb. 29, 2012) (finding <everlastroofingnc.com> confusingly similar to EVERLAST and EVERLAST ROOFING, INC.). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
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, and there is no indication that Respondent has made any active use of the domain name. See, e.g., Enterprise Holdings, Inc. v. Stephanie Wynter, FA 1780232 (Forum Apr. 30, 2018) (finding lack of rights or legitimate interests where domain name resolved to default web server page); Spotify AB v. Mary Janes / Mary LTDA, FA 1777750 (Forum Apr. 20, 2018) (same, where domain name did not resolve to a website); Otter Products, LLC v. Robot Flower, FA 1771989 (Forum Mar. 13, 2018) (same, where domain name resolved to "coming soon" web page).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, 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)(i) of the Policy, bad faith may be shown by evidence that a domain name was acquired "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent's] documented out-of-pocket costs directly related to the domain name." Under paragraph 4(b)(iv), 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."
Respondent registered the disputed domain name in the name of a privacy registration service and does not appear to have made any active use of the domain name. In the absence of any explanation from Respondent, the Panel considers it reasonable to infer that Respondent registered the domain name intending to use it in a manner calculated to create and exploit confusion with Complainant's famous mark, most likely either by selling the domain name or by using it to attract Internet users seeking Complainant, and that Respondent is maintaining the domain name for that purpose. See, e.g., Enterprise Holdings, Inc. v. Stephanie Wynter, supra (finding bad faith registration and use in similar circumstances). The Panel finds that the disputed domain name was registered and is being 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 <radioflyervt.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: May 17, 2018
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