Crayola Properties, Inc. v. Shu Lin
Claim Number: FA1903001833694
Complainant is Crayola Properties, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Shu Lin (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <crayoloa.com>, registered with Above.com Pty Ltd.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 12, 2019; the Forum received payment on March 18, 2019.
On March 13, 2019, Above.com Pty Ltd. confirmed by e-mail to the Forum that the <crayoloa.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. 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 March 19, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 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@crayoloa.com. Also on March 19, 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 April 9, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant produces a broad range of products under the CRAYOLA mark, including colored pencils, markers, inks and paints, modeling clays, coloring books, and artists' tools.
Complainant has rights in the CRAYOLA mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <crayoloa.com> domain name is confusingly similar to Complainant’s mark as it merely misspells Complainant’s mark by adding an additional letter “o” and adds the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <crayoloa.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent initially redirects users to a third-party website where they are ultimately forwarded to a site that attempts to install malware on the user’s computer.
Respondent registered and uses the <crayoloa.com> domain name in bad faith. In response to Complainant’s demand letter, Respondent linked Complainant to a bidding website for the domain name, indicating Respondent registered the domain name for the primary purpose of selling it to Complainant. Next, Respondent is a well-known cybersquatter who has engaged in a longstanding pattern of bad faith registration of domain names that are confusingly similar to trademarks in which the Respondent has no rights. Additionally, Respondent intentionally attempts to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s mark as to source, sponsorship, affiliation, or endorsement of activities carried out under that domain. Further, Respondent uses the domain name in connection with the ARRM technique associated with malware and/or phishing. Finally, Respondent had actual knowledge of Complainant’s CRAYOLA mark when registering the domain name as the domain name is merely a typographical variation of Complainant’s mark and forms a term without any meaning in any language.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the CRAYOLA mark as demonstrated by its registration of such mark with the USPTO.
Complainant’s rights in the CRAYOLA mark existed prior to Respondent’s registration of the at-issue domain name.
Respondent registered and used the at-issue domain name to ultimately direct internet users to websites that attempts to install malware on the user’s computer.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for the CRAYOLA trademark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(I). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Additionally, the at-issue domain name contains Complainant’s CRAYOLA trademark, with the letter “o” insert before its final “a,” all followed by the top-level domain name “.com”. The differences between the at-issue domain name and Complainant’s CRAYOLA trademark are insufficient to distinguish one from the other for the purpose of the Policy. Complainant’s trademark is easily recognizable in the <crayoloa.com> domain name notwithstanding the domain name’s extra letter. Therefore, the Panel finds that pursuant to Policy ¶4(a)(i) that the <crayoloa.com> domain name is confusingly similar to Complainant’s CRAYOLA trademark. See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Shu Lin” and the record contains no evidence that otherwise tends to prove that Respondent is commonly known by <crayoloa.com>. The Panel therefore concludes that Respondent is not commonly known by the <crayoloa.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Furthermore, Respondent uses the <crayoloa.com> domain to ultimately direct internet users to websites that attempts to distribute malware. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii). See Bittrex, Inc. v. Domain Privacy Services, FA 1786849 (Forum June 15, 2018) (“Using a disputed domain name to operate an FFDNS scheme and distribute malicious software or phish for users’ information is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
The at-issue domain name was registered and used in bad faith. As discussed below, Policy ¶ 4(b) specific bad faith circumstances as well as other circumstances lead the Panel to conclude that Respondent acted in bad faith regarding the <crayoloa.com> domain name pursuant to paragraph 4 (a)(iii) of the Policy.
First, in response to a demand letter from Complainant regarding the at-issue domain name, Respondent directed Complainant to a website offering the domain name for sale via auction. Offering to sell a confusingly similar domain name, or registering a domain name for the primary purpose of selling it, shows bad faith under Policy ¶ 4(b)(i). See Airbnb, Inc. v. Super Privacy Service LTD c/o Dynadot, FA 1821386 (Forum Jan. 10, 2019) (“Complainant argues that Respondent registered and uses the <airbnbb.com> domain name in bad faith by offering it for sale. The Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).”). Complainant provides the email sent by Respondent, which shows that Respondent linked Complainant to the website located at <above.com/marketplace/crayoloa.com>.
Next, Complainant shows that Respondent is a well-known cybersquatter who has engaged in a pattern of bad faith registration of domain names that are confusingly similar to trademarks in which the Respondent has no rights. Respondent was unsuccessful in over 20 UDRP proceedings. Respondent’s pattern of domain name abuse suggests bad faith registration and use regarding the at-issue domain name under Policy ¶ 4(b)(ii). See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”).
Further, Respondent’s confusingly similar domain name was registered and used to trade upon the goodwill of Complainant’s mark. Respondent’s misappropriation of the goodwill in Complainant’s mark shows Respondent’s bad faith under Policy ¶ 4(b)(iv). See Menard, Inc. v. Domain Admin / Whois Privacy Corp., FA 1785761 (Forum June 13, 2018) (“A respondent’s appropriation of a complainant’s mark in a confusingly similar domain name to divert potential consumers to its own web site is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Additionally and as mentioned above regarding rights and legitimate interests, Respondent uses the domain name in connection with malware and/or phishing. Respondent uses a technique now known as Automatic Rapid Reduction to Malware (“ARRM”) whereby internet visitors to <crayoloa.com> are initially directed to a third-party website and then forwarded to one of a rotating list of websites some of which attempt to install malware on the user’s computer. Using a domain name to facilitate the distribution of malware demonstrates bad faith under Policy ¶ 4(a)(iii). See Google LLC v. Above.com Domain Privacy, FA1753950 (Forum Nov 14, 2017) (Complainant demonstrates that Respondent engages in a phishing scheme to obtain users’ information and downloads malware onto the users’ computers. Using a confusingly similar domain name to phish for personal or financial information and downloading malware are both evidence of bad faith registration and use within the meaning of Policy ¶ 4(a)(iii)).
Respondent also is engaged in typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark and then uses the resulting string in a domain name hoping that internet users will either: 1) inadvertently type the malformed string when searching for products or services related to the domain name’s target trademark; and/or 2) in viewing the domain name will confuse the domain name with its target trademark. Here, in creating the at-issue <crayoloa.com> domain name Respondent misspells Complainant’s CRAYOLA trademark by adding an “o” to the mark. Typosquatting, in itself, indicates bad faith under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Finally, Respondent registered the <crayoloa.com> domain name knowing that Complainant had trademark rights in the CRAYOLA mark. Respondent’s prior knowledge of the CRAYOLA trademark is evident from the notoriety of the CRAYOLA trademark and the inclusion of the mark in a domain name used to perpetuate a phishing scheme. It is thus clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <crayoloa.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <crayoloa.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: April 9, 2019
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