WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Crayola Properties Inc. v. yansong

Case No. D2019-3145

1. The Parties

Complainant is Crayola Properties Inc., United States of America (“USA”), represented by FairWinds Partners, LLC, USA.

Respondent is yansong, China.

2. The Domain Name and Registrar

The disputed domain name <crayolabeauty.com> is registered with 22net, Inc. (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2019. On December 19, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 20, 2019, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

On December 20, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. Complainant confirmed the request that English be the language of the proceeding on December 26, 2019. Respondent did not comment on the language of the proceeding.

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 in English and Chinese of the Complaint, and the proceedings commenced on January 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 28, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 29, 2020.

The Center appointed Yijun Tian as the sole panelist in this matter on February 7, 2020. 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

A. Complainant

Complainant, Crayola Properties Inc., is a company incorporated in, USA. Found in 1885, Complainant is a world leading producer of innovative art tools, crafting activities, and creative toys for home and school use. Complainant also sells a line of high-quality, vegan and cruelty-free cosmetics products for adults under the name Crayola Beauty. As of 2018, Complainant has approximately 2,000 employees and operates facilities around the world including those in Australia, Canada, Hong Kong, China, Italy, Mexico, and the Netherlands.

Complainant has exclusive rights in the Crayola marks. Complainant is the exclusive owner of numinous valid CRAYOLA trademarks, including the USA trademark CRAYOLA registered on April 30, 1957 (the USA Trademark registration number 0644752), and the European Union (EU) trademark CRAYOLA registered on October 19, 1998 (the EU Trademark registration number 000220145) (Exhibit E to the Complaint).

B. Respondent

Respondent is yansong of China.

C. Disputed Domain Name

The disputed domain name <crayolabeauty.com> was registered by Respondent on April 24, 2018. According to the Complaint and relevant evidence provided by Complainant, the disputed domain name used to resolve to a website displaying pay-per-click (PPC) links that related to Complainant’s products and products of Complainant’s competitors. After Complainant’s Representative sent a letter to Respondent in December 2019, the disputed domain name resolves to a website offering it for sale (Exhibit F to the Complaint).

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name <crayolabeauty.com> is confusingly similar to Complainant’s CRAYOLA trademarks. The additions of “beauty” and the “.com” generic Top-Level Domain (“gTLD”) are not sufficient to alleviate confusion.

Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name.

Complainant contends that Respondent registered and used the disputed domain name in bad faith.

Complainant requests that the disputed domain name be transferred to Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

The language of the Registration Agreement for the disputed domain name <crayolabeauty.com> is Chinese. Pursuant to the Rules, paragraph 11(a), unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:

(a) The disputed domain name is made up of words that appear in Roman script and are used in the English language (e.g., “beauty”);

(b) The content of Respondent’s website appears entirely in the English language (Exhibit F of the Complainant);

(c) Respondent has replied, in English, to correspondence from Complainant’s Representative (Exhibit G to the Complaint);

(d) Respondent is a habitual cybersquatter and should not be permitted to put Complainant to the added work and expense of translating its Complaint into another language so as to gain leverage in negotiating a sale of the disputed domain name; and

(e) Complainant operates its global business in the English language.

(f) Respondent is capable of communicating in the English language. As such, it would be inequitable for Respondent to now hide behind a language requirement, other than English, and the additional cost and burden this would impose upon Complainant is not warranted.

Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.

Paragraph 11(a) allows the panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the panel for the proceeding should not be prejudicial to either one of the parties in its abilities to articulate the arguments for the case (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) further states:

“Noting the aim of conducting the proceedings with due expedition, paragraph 10 of the UDRP Rules vests a panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case.

Against this background, panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.” (WIPO Overview 3.0, section 4.5.1; see also L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).

On the record, Respondent appears to be a Chinese resident and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that Respondent may have sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name includes Latin characters (“crayola”) and particularly English word “beauty”, rather than Chinese script; (b) the disputed domain name <crayolabeauty.com> resolves to a website appears entirely in the English language (Exhibit F to the Complaint);¹ (c) Respondent has replied, in English, to correspondence from Complainant’s Representative (Exhibit G to the Complaint); (d) the Center has notified Respondent of the proceeding in both Chinese and English; and (e) the Center informed Respondent that it would accept a Response in either English or Chinese.

The Panel has also taken into consideration the facts that Complainant is a company from the USA, and Complainant will be spared the burden of working in Chinese as the language of the proceeding.

Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in its ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.

6.2. Substantial Issues

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) 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.

On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a)-(c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the CRAYOLA marks acquired through registration. The CRAYOLA marks have been registered in the USA since 1957, and registered in the EU since 1998. The disputed domain name <crayolabeauty.com> comprises the CRAYOLA mark in its entirety. The disputed domain name only differs from Complainant’s trademarks by, the term “beauty”, and the gTLD suffix “.com” to the CRAYOLA marks. This does not eliminate the confusing similarity between Complainant’s registered trademarks and the disputed domain name (Decathlon v. Zheng Jianmeng, WIPO Case No. D2019-0234).

Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

Further, in relation to the gTLD suffix, WIPO Overview 3.0 further states: “The applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.” (WIPO Overview 3.0, section 1.11.1)

Thus, the Panel finds that the disputed domain name is confusingly similar to the CRAYOLA marks.

The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:

(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) Respondent has been commonly known by the disputed domain name, even if Respondent has acquired no trademark or service mark rights; or

(iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s trademarks.

The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to respondent to rebut complainant’s contentions. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 3.0, section 2.1 and cases cited therein).

Complainant has rights in the CRAYOLA marks in the USA since 1957 and in the EU since 1998, which precede Respondent’s registration of the disputed domain name (2018). According to the Complaint, Complainant is a world leading producer of innovative art tools, crafting activities, and creative toys for home and school use. As of 2018, it has approximately 2,000 employees and operates facilities around the world including those in Australia, Canada, Hong Kong, China, Italy, Mexico, and the Netherlands.

Moreover, Respondent is not commonly known by the disputed domain name. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:

(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name (first, the disputed domain name resolved to a PPC website and later, it resolves to a website offering the disputed domain name for sale) or reasons to justify the choice of the term “crayola” in the disputed domain name and in its business operation. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the CRAYOLA marks or to apply for or use any domain name incorporating the CRAYOLA marks.

(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name in 2018, after the CRAYOLA marks became internationally known. The disputed domain name is identical or confusingly similar to Complainant’s CRAYOLA marks.

(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by the Complainant, the disputed domain name is currently connected to the homepage offering to sell the disputed domain name.

The Panel finds that Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on the website or location.

The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.

(a) Registered in Bad Faith

The Panel finds that Complainant has a widespread reputation in the CRAYOLA marks with regard to its products or services. As mentioned above, Complainant has registered its CRAYOLA marks internationally, including registrations in the USA (since 1957) and in the EU (since 1998). Further, considering the nature of the disputed domain name being confusingly similar to Complainant’s trademark, it is not conceivable that Respondent would not have had actual notice of Complainant’s trademark right at the time of the registration of the disputed domain name (in 2018). The Panel therefore finds that the CRAYOLA mark is not one that a trader could legitimately adopt other than for the purpose of creating an impression of an association with Complainant (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).

Moreover, Respondent has chosen not to respond to Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”. See also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.

Thus, the Panel concludes that the disputed domain name was registered in bad faith.

(b) Used in Bad Faith

Complainant also has adduced evidence to show that by using the confusingly similar disputed domain name, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other online location”. To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is on the “balance of probabilities” that intention exists (WIPO Overview 3.0, section 4.2)

Given the widespread reputation of the CRAYOLA marks, the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to fact. There is a strong likelihood of confusion as to the source, sponsorship, affiliation or endorsement of Respondent’s website. In other words, Respondent has, through the use of a confusingly similar domain name, created a likelihood of confusion with the CRAYOLA marks. Moreover, the disputed domain name used to resolve to a website displaying PPC links that related to Complainant’s products and products of Complainant’s competitors. After receiving the letter from the Complainant’s Representative, Respondent offers to sell the disputed domain name via the website resolved by the disputed domain name <crayolabeauty.com>. The Panel therefore concludes that the disputed domain name is being used by Respondent in bad faith.

In summary, Respondent, by choosing to register and use a domain name which is confusingly similar to Complainant’s trademark, intended to ride on the goodwill of Complainant’s trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website to which the disputed domain name resolves is indicative of registration and use of the disputed domain name in bad faith.

The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.

7. Decision

For all 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 <crayolabeauty.com> be transferred to Complainant.

Yijun Tian
Sole Panelist
Dated: February 12, 2020

¹ See also <crayolabeauty.com>