Crayola Properties, Inc. v. Protection Domain / Domain Admin
Claim Number: FA1901001823807
Complainant is Crayola Properties, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Protection Domain / Domain Admin (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <crrayola.com>, registered with Above.com Pty Ltd., and <crayolaa.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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 4, 2019; the Forum received payment on January 10, 2019.
On January 7, 2019, Above.com Pty Ltd. confirmed by e-mail to the Forum that the <crrayola.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. On January 8, 2019, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <crayolaa.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Above.com Pty Ltd. and Internet Domain Service BS Corp have verified that Respondent is bound by the respective registration agreements 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 January 14, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 4, 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@crrayola.com, postmaster@crayolaa.com. Also on January 14, 2019, 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 February 7, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceeding, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends that the <crrayola.com> and <crayolaa.com> domain names were registered on the same date, use the same typosquatting technique, and redirect to the same webpage.
As such, as the Respondent has failed to file a Response in this dispute, the Panel presumes all allegations are true unless clearly unreasonable. Therefore, the Panel finds that the disputed domain names are controlled by the same entity and will, hereby, treat them as one.
A. Complainant
Complainant, Crayola Properties Inc., produces art tools and creative toys for home and school use. Complainant has rights in the CRAYOLA mark based upon its registration of the mark around the world, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 644,752, registered Apr. 30, 1957) and the European Union Intellectual Property Office (“EUIPO” and formally known by the OHIM) (e.g., Reg. No. 220,145, registered Oct. 19, 1998). See Compl. Ex. E. Respondent’s <crrayola.com> and <crayolaa.com> domain names are confusingly similar to Complainant’s mark because Respondent includes the CRAYOLA mark in the domain names and adds a single letter (an “r” in the <crrayola.com> domain name and an “a” in the <crayolaa.com> domain name) and a “.com” generic top-level domain (“gTLD”) to Complainant’s mark.
Respondent lacks rights and legitimate interests in the <crrayola.com> and <crayolaa.com> domain names because Respondent is not commonly known by the disputed domain name and is not authorized or permitted to use Complainant’s mark in any fashion. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to redirect users to Complainant’s website.
Respondent registered and uses the <crrayola.com> and <crayolaa.com> domain names in bad faith. Respondent attempts to attract users for commercial gain by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain names. Respondent also failed to respond to Complainant cease and desist letters. Additionally, Respondent registered the disputed domain name with a privacy service. Further, Respondent had actual knowledge of Complainant’s rights in the CRAYOLA mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain names were registered on November 1, 2017
The Panel finds that the disputed domain names are confusingly similar to Complainant’s trademark; that Respondent has no rights or legitimate interests in or to the disputed domain names; and that Respondent has engaged in bad faith use and registration of the disputed domain names.
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 finds that the disputed domain names, <crrayola.com> and <crayolaa.com>, are confusingly similar to Complainant’s valid and subsisting trademark, CRAYOLA. Complainant has adequately established its rights and interests in and to this trademark. Respondent arrives at the disputed domain names by merely adding an “r” to one and an “a” to the other and adding the g TLD “.com” to each. This is insufficient to distinguish the disputed domain names from Complainant’s trademark.
As such, the Panel finds that the disputed domain names are confusingly similar to Complainant’s trademark.
The Panel further finds that Respondent lacks any rights or legitimate interests in or to the disputed domain names. Respondent has no right, permission or license to register the disputed domain names. Respondent is not commonly known by the disputed domain names. Respondent appears to not use the disputed domain names in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Rather, Respondent appears to use the disputed domain names to redirect users to Complainant’s website.
As such, the Panel finds that Respondent lacks any rights or legitimate interests in or to the disputed domain names.
The Panel also finds that Respondent has engaged in bad faith use and registration of the disputed domain names. Respondent apparently uses the disputed domain names to attract users for commercial gain by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the domains. Specifically, Complainant argues Respondent’s disputed domain names redirect users to Complainant’s website. Such use evinces bad faith under Policy ¶¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); see also Deluxe Corp. v. Dallas Internet, FA 105216 (Forum Apr. 10, 2002) (finding the respondent registered and used the <deluxeform.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) by redirecting its users to the complainant’s <deluxeforms.com> domain name, thus receiving a commission from the complainant through its affiliate program). Complainant claims that Respondent uses confusingly similar domain names to redirect to Complainant’s website in order to collect affiliate revenue. See Compl. Ex. F. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶¶ 4(b)(iv).
Next, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the CRAYOLA mark prior to registering the disputed domain names. To substantiate the claim that Complainant’s business is famous, Complainant provides screenshots from its website, evidence of advertising, social media following, media recognition, and Internet search results for its mark. See Compl. Ex. D. Therefore, given the fame of Complainant’s mark and the totality of the circumstances, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the CRAYOLA mark prior to registering the disputed domain names.
As such, the Pane finds that Respondent has engaged in bad faith use and registration of the disputed domain names under 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 <crrayola.com> and <crayolaa.com> domain names be transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: February 9, 2019
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