Crayola Properties, Inc. v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1812001820716
Complainant is Crayola Properties, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <craola.com>, registered with Internet Domain Service BS Corp.
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 December 12, 2018; the Forum received payment on December 18, 2018.
On December 14, 2018, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <craola.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 19, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 8, 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@craola.com. Also on December 19, 2018, 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 10, 2019, 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, Crayola Properties, Inc., uses their CRAYOLA mark in connection with art tools, crafting activities, and creative toys for home and school use. Complainant has rights in the CRAYOLA mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 644,752, registered Apr. 30, 1957). Respondent’s <craola.com> domain name is confusingly similar to Complainant’s CRAYOLA mark, as the domain name includes the entire mark, removes the letter “y”, and adds the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <craola.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the CRAYOLA mark. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is typosquatting Complainant’s famous CRAYOLA mark to further a malware scheme using fast-flux DNS (“FFDNS”).
Respondent registered and is using the <craola.com> domain name in bad faith. Respondent intentionally seeks to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Respondent’s bad faith is shown by use of the disputed domain name to deposit malware onto user’s computers using a rotating series of third-party websites under what is sometimes known as the “Automatic Rapid Reduction to Malware” or ARRM (previously referred to as “fast-flux DNS” or FFDNS.). Finally, Respondent had actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Crayola Properties, Inc., uses their CRAYOLA mark in connection with art tools, crafting activities, and creative toys for home and school use. Complainant has rights in the CRAYOLA mark based on registration with the USPTO (e.g. Reg. No. 644,752, registered Apr. 30, 1957). Respondent’s <craola.com> domain name is confusingly similar to Complainant’s CRAYOLA mark.
Respondent registered the <craola.com> domain name on November 13, 2000.
Respondent has no rights or legitimate interests in the <craola.com> domain name. Respondent is typosquatting Complainant’s famous CRAYOLA mark to further a malware scheme using a rotating series of third-party websites under “Automatic Rapid Reduction to Malware” or ARRM (previously referred to as “fast-flux DNS” or FFDNS.).
Respondent registered and is using the <craola.com> domain name in bad faith.
DISCUSSION
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 has rights in the CRAYOLA mark under Policy ¶ 4(a)(i) based upon registration of the mark with the USPTO. See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Forum July 17, 2015) (finding, “Registration of a mark with a governmental authority (or, in this case, multiple governmental authorities) is sufficient to establish rights in the mark for purposes of Policy ¶4(a)(i)”).
Respondent’s <craola.com> domain name is confusingly similar to the CRAYOLA mark, as the domain name includes the entire mark, removes the letter “y”, and adds generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <craola.com> domain name. Complainant has not authorized Respondent to use the CRAYOLA mark. The WHOIS information of record identifies the registrant of the disputed domain name as “Domain Admin / Whois Privacy Corp.” Therefore, Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Respondent fails to make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Respondent uses the domain name to further a malware scheme under “Automatic Rapid Reduction to Malware” or ARRM (previously referred to as “fast-flux DNS” or FFDNS.) to automatically redirect Internet users to a series of rotating third-party websites. See MoneyGram International, Inc. v. Domain Admin / Whois Privacy Corp., FA1698585 (Forum Nov. 28, 2016) (“Where a domain name redirects Internet users to a rotating series of webpages, such use does not demonstrate rights or legitimate interests within the meaning of the Policy.”); see also Harry Winston, Inc. v. Domain Admin / Whois Privacy Corp., FA 1749276 (Forum Oct. 18, 2017) (holding that use of a domain name to redirect Internet users to a rotating series of third-party websites, some of which attempt to install malware on users’ computers, does not show the respondent has rights or legitimate interests in the domain name).
Respondent uses a typographical variation of the CRAYOLA mark. Use of a domain name to take advantage of Internet users typographical errors is evidence that respondent lacks rights and legitimate interests in the domain name per Policy ¶ 4(a)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Pham Dinh Nhut, FA1502001605819 (Forum Apr. 17, 2015) (“Respondent’s acts of typosquatting provide additional evidence that respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).”).
Registration and Use in Bad Faith
Respondent’s use of the <craola.com> domain name to redirect to a series of third-party web pages that deposit malware onto users’ computers is bad faith under Policy ¶ 4(a)(iii). See eNom, Incorporated v. Muhammad Enoms General delivery / Enoms.com has been registered just few days after Enom.com, therefore could not have been registered, FA1505001621663 (Forum July 2, 2015) (“In addition, Respondent has used the disputed domain name to install malware on Internet users’ devices. The Panel finds that this is bad faith under Policy ¶ 4(a)(iii).”); see also Harry Winston, Inc. v. Domain Admin / Whois Privacy Corp., FA 1749276 (Forum Oct. 18, 2017) (finding the respondent acted in bad faith by using “a technique known as FFDNS to divert internet users to a rotating series of webpages unrelated to or in competition with Complainant’s business, some of which attempt to install malware onto users’ computers.”).
Next, as Respondent had actual knowledge of Complainant’s rights in the mark prior to registering the <craola.com> domain name, Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii). See Coachella Music Festival, LLC v. ALEXANDER DE ALMEIDA LOPES, FA 1705267 (Forum Jan. 9, 2017) (respondent’s actual knowledge of the complainant’s COACHELLA mark when it registered the <coachellastuff.com> domain name was registration and use in bad faith).
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 <craola.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 18, 2019
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