Administrative Panel Decision; Crayola Properties, Inc. v Xu Jisong

WIPO Case No. D2023-5324

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION
Crayola Properties, Inc. v. Xu Jisong

Case No. D2023-5324

1. The Parties

The Complainant is Crayola Properties, Inc., United States of America (United States”), represented by

Hovey Williams LLP, United States.

The Respondent is Xu Jisong, China.

2. The Domain Name and Registrar

The disputed domain name <outletcrayola.com> is registered with Name.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21,
2023. On December 22, 2023, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain name. On December 22, 2023, the Registrar transmitted
by email to the Center its verification response disclosing registrant and contact information for the disputed
domain name which differed from the named Respondent (Domain Protection Services, Inc.) and contact
information in the Complaint. The Center sent an email communication to the Complainant on December 26,
2023, providing the registrant and contact information disclosed by the Registrar, and inviting the
Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on

December 29, 2023.

The Center verified that the Complaint together with the amended 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 the Respondent of the
Complaint, and the proceedings commenced on January 8, 2024. In accordance with the Rules, paragraph
5, the due date for Response was January 28, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on January 31, 2024.

The Center appointed Fabrizio Bedarida as the sole panelist in this matter on February 7, 2024. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

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Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

The Complainant in this administrative proceeding is Crayola Properties, Inc., a Delaware corporation and, a leading company in the art supply market, which owns hundreds of trademark registrations for CRAYOLA, and variations thereof, in connection with crayons, markers, pens, pencils, chalk, paints, various other arts and crafts supplies, toys, puzzles, games, clothing, jewellery, cosmetics, computer software, furniture, retail store services, and restaurant services.

The Complainant has numerous registrations for the CRAYOLA trademark around the world.

The Complainant is, inter alia, the owner of the following:

United States trademark registration number 641294 for the CRAYOLA (word) trademark registered on

February 12, 1957, covering goods in class 16;

United States trademark registration number 644752 for the CRAYOLA (word) trademark registered on

April 30, 1957, covering goods in class 37;

United States trademark registration number 3136794 for the CRAYOLA (device) trademark registered on

August 29, 2006, covering goods in class 16.

The Complainant’s first use of the CRAYOLA trademark dates back to 1905.

The disputed domain name was registered on October 10, 2022.

Currently the disputed domain name resolves to an inactive website, while according to the Complainant’s unrebutted assertion and evidence, previously (at least on April 5, 2023) the disputed domain name resolved to a website featuring the Complainant’s CRAYOLA trademarks, and also products, information, photographs, and product listings taken directly from the Complainant’s “ website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademarks, that the Respondent has no legitimate interests in the disputed domain name, and particularly that the Respondent registered and used the disputed domain name to redirect Internet users to an unauthorized commercial website featuring the Complainant’s CRAYOLA trademarks, and also products, information, copyrighted images, and product listings taken directly from the Complainant’s website, and that this is clear inference of bad faith use and registration of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

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6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has

rights; and

(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

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms here, “outlet”, may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

Panels have held that the use of a domain name for illegal activity, here claimed as impersonation/passing off, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

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The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the Respondent intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s trademark.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

The disputed domain name reproduces, without any authorization or approval, the Complainant’s registered CRAYOLA trademarks. The disputed domain name was registered many decades after the Complainant’s CRAYOLA trademark was registered. In addition, owing to the substantial presence established worldwide and on the Internet by the Complainant, it is at the least very unlikely that the Respondent was not aware of the existence of the Complainant’s trademarks when registering the disputed domain name.

In fact, it appears that the Respondent used the disputed domain name to resolve to an unauthorized
website advertising the Complainant’s products, and those of the Complainant’s competitors, side-by-side
under the CRAYOLA trademarks, thus creating a misleading impression of association with the Complainant.

Therefore, it is more likely than not that the Respondent had knowledge of the Complainant’s earlier rights to the CRAYOLA trademarks, and chose the disputed domain name intentionally in order to misleadingly attract Internet users to its own website.

The disputed domain name is currently inactive. Panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the available record, the Panel finds the current non-use of the disputed domain name does not prevent a finding of bad faith in the circumstances of this proceeding. Although panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement). WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness or reputation of the Complainant’s trademark, and the composition of the disputed domain name, the Respondent’s failure to respond to the Complainant’s contentions, the Respondent’s concealing its identity when registering the disputed domain name, and the Respondent’s previous use of the disputed domain name, and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.

Further, Panels have held that the use of a domain name for illegal activity here, claimed as impersonation/passing off, constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

The Panel finds that the Complainant has established the third element of the Policy.

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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 <outletcrayola.com> be transferred to the Complainant.

/Fabrizio Bedarida/
Fabrizio Bedarida
Sole Panelist
Date: February 12, 2024