WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Crayola Properties, Inc. v. Domain Contact, Protected WHOIS @INR

Case No. D2018-2091

1. The Parties

Complainant is Crayola Properties, Inc. of Easton, Pennsylvania, United States of America (“United States”), represented by Steven M. Levy, Esq., United States.

Respondent is Domain Contact, Protected WHOIS @INR of Golden, Colorado, United States.

2. The Domain Name and Registrar

The disputed domain name <crayolla.com> is registered with Register.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 12, 2018. On September 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 14, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 15, 2018.

The Center appointed Mark Partridge as the sole panelist in this matter on October 19, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant was founded in 1885. Complainant produces a broad range of products, including colored pencils, markers, inks and paints, modeling clays, coloring books, and artists’ tools. As of 2016, Complainant employs approximately 2,000 employees and operates facilities around the world including those in Australia, Canada, Italy, Mexico, the Netherlands, and Hong Kong, China.

Complainant owns many CRAYOLA trademark registrations, including: United States Trademark Registration No. 0644752 for CRAYOLA (registered on April 30, 1957); United States Trademark Registration No. 1173166 for CRAYOLA (registered on October 13, 1981); United States Trademark Registration No. 1157295 for CRAYOLA (registered on June 9, 1981); and European Union Trade Mark Registration No. 000220145 for CRAYOLA (registered on October 19, 1998). According to the Complaint, Complainant extensively promotes its CRAYOLA products and services through a variety of advertising and promotional mediums.

The disputed domain name was created on March 21, 2003.

5. Parties’ Contentions

A. Complainant

In requesting that the disputed domain name be transferred to it, Complainant contends that it has satisfied the three necessary elements under the Policy.

First, Complainant argues that the disputed domain name is confusing similar to Complainant’s registered CRAYOLA mark. It alleges that consumers will be confused into believing there is a connection between Complainant and Respondent. Further, it alleges that, as a result of the long usage and promotion of the CRAYOLA mark, it has become famous and widely recognized around the world by both artists and members of the general public. Complainant contends that Respondent is using a misspelling of Complainant’s mark by adding the letter “l”. Additionally, Complainant argues that the addition of “.com” does not alleviate the confusion between the CRAYOLA mark and the disputed domain name.

Second, Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name, asserting that none of the circumstances set out by paragraph 4(c) of the Policy apply in the present dispute. Complainant argues that Respondent’s actions are not a bona fide offering of goods or services because Respondent’s website redirects users to a rotating series of third-party websites; Complainant refers to this as “Automatic Rapid Reduction to Malware” (or “ARRM”) and that this practice has been also referred to as “fast-flux DNS” (or “FFDNS”). Complainant alleges that, after the second time entering the disputed domain name, the domain name resolves to a classic PPC website with links leading to third-party websites.

Further, Complainant maintains that Respondent is not commonly known by the term “crayolla”, does not operate a business under the mark, and does not own any rights in the “Crayolla” name. Complainant asserts that the disputed domain name <crayolla.com> uses a typographical variation of the CRAYOLA mark to mimic Complainant’s own “www.crayola.com” website address to confuse users into believing that the disputed domain name is owned by or affiliated with Complainant.

Third, Complainant argues that the disputed domain name was registered and is being used in bad faith. Complainant alleges that Respondent intentionally targeted the CRAYOLA mark without consent, that Respondent was on notice of Complainant’s rights in the famous mark, and that those rights predate the date on which the disputed domain name was registered. Complainant also contends that bad faith is shown by the ARRM technique, the PPC website resolution, and typographical variation of Complainant’s mark.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

“The Policy is directed towards resolving disputes concerning allegations of abusive domain name registration.” Kerakoll S.P.A. v. SC Aris Co Group SRL, WIPO Case No. DRO2017-0006; see Organization for Transformative Works v. Bradley Binkley, WIPO Case No. D2018-0132; Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. The Policy provides a process in which the complainant must provide evidence in support of its complaint. In turn, the respondent is given an opportunity to respond.

Here, Respondent is in default. Accordingly, the Panel may choose to accept the reasonable contentions of Complainant as true. Allianz SE v. IP Legal, Allianz Bank Limited, WIPO Case No. D2017-0287(citing Joseph Phelps Vineyards LLC v. NOLDC, Inc., Alternative Identity, Inc., and Kentech, WIPO Case No. D2006-0292); see also OSRAM GmbH. v. Mohammed Rafi/Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, WIPO Case No. D2015-1149 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).

Under paragraph 4(a) of the Policy, and notwithstanding Respondent’s default, Complainant must prove the following three elements:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

To satisfy the first element, a complainant must establish that the disputed domain name is identical or confusingly similar to the trademark or service mark in which the complainant has rights. This inquiry generally involves a “side-by-side” comparison of the disputed domain name and the relevant trademark to assess whether the mark is recognizable within the disputed domain name. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). For purposes of the first element, the Top-Level Domain (“TLD”) “.com” in the disputed domain name is disregarded. See WIPO Overview 3.0, section 1.11; see also Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698; America Online, Inc. v. Johuathan Investments, Inc., and AOLLNEWS.COM, WIPO Case No. D2001-0918; OSRAM GmbH., WIPO Case No. D2015-1149. “A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.” See WIPO Overview 3.0, section 1.9; see also Sanofi, Genzyme Corporation v. Domain Privacy, WIPO Case No. D2016-1193.

Here, Complainant has established that it has sufficient rights in the CRAYOLA trademark, based on extensive use and ownership of several CRAYOLA trademark registrations.

The disputed domain name differs from Complainant’s mark merely by the addition of the letter “l” in the disputed domain name. This is a classic case of “typosquatting.” See Humana Inc. v. Cayman Trademark Trust, WIPO Case No. D2006-0073. The additional letter “l” in the disputed domain name does not alleviate the recognizable aspects of Complainant’s mark. Accordingly, the Panel concludes that the disputed domain name is confusingly similar to Complainant’s CRAYOLA mark.

B. Rights or Legitimate Interests

To satisfy the second element, a complainant must make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once the complainant satisfies its initial burden, the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the disputed domain name. AB Electrolux v. Mostafa Faheem, WIPO Case No. D2017-2233; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances which, if found by the Panel, shall demonstrate that respondent has rights or legitimate interests in a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy.

As detailed above, Complainant contends that Respondent has no rights or legitimate interests for various reasons, providing evidence establishing the same. For those reasons, the Panel concludes that Complainant made out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name <crayolla.com>.

As a result, the burden shifts to Respondent. There is no evidence in the current record indicating that Respondent could demonstrate any of the circumstances evidencing rights or legitimate interests, pursuant to paragraph 4(c) of the Policy. Moreover, the Panel notes that the use of the AARM or FFDNS technique and the use of the PPC links of the kind described above have both been recognized as not qualifying as legitimate or bona fide use[s] under the Policy […] Oracle International Corporation v. Above.com Domain Privacy / Protection Domain, WIPO Case No. D2017-1987 (collecting cases). Accordingly, the Panel concludes that Complainant has satisfied the second element, paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Lastly, Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy offers a non-exhaustive list of circumstances that indicate bad-faith use and registration of a domain name. As mentioned above, the disputed domain name consists of a typographical variation of the CRAYOLA mark, which evidences Respondent’s intent to take advantage of Complainant’s mark. Based on Complainant’s extensive use of the CRAYOLA mark, it seems clear that Respondent was aware of Complainant’s rights in the mark. The Panel concludes that Respondent registered and is using the disputed domain name in attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to source, sponsorship, affiliation, or endorsement. See paragraph 4(b)(iv) of the Policy.

On top of this, Respondent’s use of the AARM technique and the eventual PPC website resolution evidences further bad faith. See Oracle International Corporation, WIPO Case No. D2017-1987 (“It does not seem at all credible that the Respondent would have thought, when registering the disputed domain names, that it was legitimate to redirect it to websites which seek to install malware on the browser’s computer or to websites competing with the Complainant’s business.”).

Accordingly, the Panel concludes that Complainant has sufficiently shown that Respondent has registered and used the disputed domain name in bad faith, thereby satisfying the third element.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <crayolla.com> be transferred to Complainant.

Mark Partridge
Sole Panelist
Date: November 2, 2018