Decision for dispute CAC-UDRP-108744

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the Disputed Domain Name.

The evidence has established that the Complainant is the owner of a portfolio of registered trademarks including the European trademark registration for FISHER-PRICE, Registered No. 018135754, registered on May 22, 2020; and numerous other International registrations for FISHER-PRICE and derivatives protected in many jurisdictions (collectively "the FISHER-PRICE trademark").

The Complainant is a global company that offers toys and other consumer products for sale and has done so since 1945. It is the owner of the registered trademark for FISHER-PRICE which it has used for many years. It has come to the notice of the Complainant that the Respondent registered the domain name <thefisherprice.com> domain name on March 1, 2024 and caused it to resolve to a website which pretends to be an official or authorized website of the Complainant, makes extensive use of the Complainant's trademark and offers for sale products that are purported to be genuine products of the Complainant. The Complainant is concerned at this infringement of its trademark and the damage being done to its reputation and goodwill by the Respondent's conduct and by passing itself off as and impersonating the Complainant. Accordingly, it has instituted this proceeding to have the Disputed Domain Name transferred to itself.

COMPLAINANT:

The Complainant made the following contentions.

(i) The Disputed Domain Name is confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant owns the trademark for FISHER-PRICE set out above which was registered many years before the Respondent registered the Disputed Domain Name on March 1, 2024.

The Disputed Domain Name <thefisherprice.com> incorporates the Complainant’s FISHER-PRICE trademark in its entirety with the addition of the word “the” and the Top Level Domain “.com.” The trademark is clearly recognizable in the Disputed Domain Name. The addition of the word “the” is now well-established as not having the effect of negating a confusing similarity with a trademark that is apparent from the domain name. In the present case it is very apparent that the Disputed Domain name invokes the Complainant and the presence of the word “the” does nothing but emphasize that fact and certainly does not affect the recognizability of the trademark. The Disputed Domain Name is thus similar and confusingly similar to the trademark, as internet users would undoubtedly conclude that it is a domain name of the Complainant or one that is authorized by it.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

As is universally accepted, the Complainant is first required to make out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and, if such a prima facie case is made out, the onus of proof is then transferred to the Respondent to rebut any such prima facie case that has been established.

The Complainant submits that, for the following reasons, it can make out its prima facie case.

(a) the Respondent is neither a licensee nor an authorized distributor of the Complainant and the Complainant has not given any consent to the Respondent to use its aforesaid trademark;

(b) the Respondent has used the Disputed Domain Name to impersonate the Complainant, which is not a bona fide use of the Disputed Domain Name;

(c) the registration of the Disputed Domain Name creates the false impression of affiliation, endorsement or approval of that registration by the Complainant;

(d) the Respondent registered the Disputed Domain Name on March 1,2024 which was well after the Complainant had acquired its aforesaid trademark rights and by which time the Complainant had established its longstanding international presence and reputation;

(e) the Respondent has used the Disputed Domain Name for illegal activities; and

(f)  there is no other circumstance that could conceivably be argued to give rise to a right or legitimate interest in the Disputed Domain Name.

Accordingly, the Complainant submits that it has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

(iii) The Disputed Domain Name was registered and is being used in bad faith.

The Complainant submits on the following grounds that the Disputed Domain Name was registered and is being used in bad faith.

• At the time of the registration of the Disputed Domain Name, the Complainant had established an international reputation and extensive goodwill in its FISHER-PRICE trademark;

• the Respondent has caused the Disputed Domain Name to resolve to a website on which the Complainant’s FISHER-PRICE trademark is prominently displayed;
  
  
• at the time the Registrant registered the Disputed Domain Name, the Respondent had actual knowledge of the FISHER-PRICE trademark and its association with the Complainant and its goods and services;

• the principal constituent parts of the Disputed Domain Name are patronymics that signify the two founders of the Complainant;

• the Respondent clearly sought to target the Complainant because of its extensive goodwill and fame;
  
  
• the Respondent has used the Disputed Domain Name for illegal activities;
  
  
• the Respondent has used the Disputed Domain Name to pass itself off as and impersonate the Complainant;
  
  
• the Respondent has redacted its contact details; and
  
  
• there is no other circumstance tending to suggest that the Respondent registered and used the Disputed Domain Name with any intention other than to do so in bad faith.

Accordingly, the Complainant submits that the Respondent has registered and used the Disputed Domain Name in bad faith.

The Complainant thus submits that it will establish all of the elements it is required to prove under the Policy and that it is therefore entitled to the relief that it seeks.

RESPONDENT

The Respondent is in default and has not filed a Response in this proceeding.

The Complainant has, to the satisfaction of the Panel, shown the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the Disputed Domain Name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Disputed Domain Name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

This is a mandatory administrative proceeding pursuant to Paragraph 4 of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) of the Internet Corporation for Assigned Names and Numbers (“ICANN”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the CAC Supplemental Rules.

1. Administrative deficiency

By notification dated June 22, 2026 and in accordance with Paragraph 4 (b) of the Rules, the CAC notified the Complainant that the Complaint was administratively deficient in that it had not sufficiently identified the Respondent. The Complainant was invited to see the Registrar’s verification available in the online case file in the form of a non-standard communication regarding the appropriate identification of the domain name holder.

On June 22, 2026, the Complainant filed an Amended Complaint correcting the deficiency and the CAC thus determined on June 24, 2026 that the Complaint should be admitted to proceed further in the Administrative Proceeding.

The Panel has reviewed all of the above matters and makes a finding that within the meaning of Paragraph 4(b) of the Rules, the administrative deficiencies have been corrected and that this matter has proceeded properly to the Panel in accordance with the Policy and the Rules.

  2. Substantive matters

Paragraph 15 of the Rules provides that the Panel is to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

In that regard, the Panel also notes that the onus is on the Complainant to make out its case, and past UDRP panels have consistently said that a complainant must show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.

The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.

For the Complainant to succeed it must prove, within the meaning of Paragraph 4(a) of the Policy, that:

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

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

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

The Panel will therefore deal with each of these requirements in turn.

A. Identical or Confusingly Similar.

The first issue that arises is whether the Complainant has a trademark on which it may rely in this proceeding. In that regard, the Panel finds that the Complainant has adduced evidence that the Panel accepts, that it is the registered owner of the FISHER-PRICE trademark, particulars of which have been set out above. That evidence is in documentary form that the Panel has examined and finds to be in order. The Panel therefore finds that the Complainant has established its trademark rights and hence its standing to institute this proceeding.

The Panel next finds that the Disputed Domain Name is confusingly similar to the FISHER-PRICE trademark. That is so for the following reasons.

The Disputed Domain Name <thefisherprice.com> was registered by the Respondent on March 1, 2024 and incorporates the Complainant’s FISHER-PRICE trademark in its entirety with the addition of the word “the” that precedes the trademark and the Top Level Domain “.com.” The trademark is clearly recognizable in the Disputed Domain Name and is its dominant feature. Thus, an internet user would naturally conclude that it is invoking the FISHER-PRICE trademark.

As the Complainant rightly submits, the addition of the word “the” is now well established as not negating a confusing similarity with a trademark that is apparent from the domain name. Thus, in the present case, the Disputed Domain name invokes the Complainant and the presence of the word “the” does nothing but emphasize that fact and certainly does not affect the recognizability of the trademark.

It is also well-established that the use of a Top Level Domain such as “.com” as in the present case cannot influence a finding on confusing similarity, as all domain names must have some such extension.

Taking all of these matters into consideration, the Panel finds that the Disputed Domain Name is confusingly similar to the FISHER-PRICE trademark.

The Complainant has therefore established the first element that it must show under Paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under Paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

But by virtue of Paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Thus, if a respondent proves any of these elements or indeed anything else that shows that it has a right or legitimate interest in the domain name, the complainant will have failed to discharge its onus and the complaint will fail. It is also well-established that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests and that when such a prima facie case is made out, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent cannot do so, a complainant is deemed to have satisfied Paragraph 4(a)(ii) of the Policy.

The Panel, after considering all of the evidence in the Complaint, finds that the Complainant has made out a very strong prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

The case is made the stronger by the Complainant having adduced relevant documentary evidence which the Panel accepts and which will shortly be referred to, and by the Complainant's citation and discussion of previously decided UDRP cases which support its contentions.

The Panel will address each of the grounds relied on by the Complainant in the order in which they have been submitted by the Complainant. Those grounds are that:

• the Respondent is neither a licensee nor an authorized distributor of the Complainant and the Complainant has not given any consent to the Respondent to use its aforesaid trademark; the evidence is that the Complainant did not give any permission or authority to the Respondent to register or use the Disputed Domain Name and in particular did not give any permission or authority to the Respondent to use its trademark in a domain name or in any other way; moreover, the evidence is that there is no affiliation, business or other relationship between the Complainant and the Respondent; thus it could not be contended that the Disputed Domain Name was registered with any type of consent by the Complainant; this negates any suggestion that the Respondent’s conduct could give rise to a right or legitimate interest in the Disputed Domain Name;

• the Respondent has used the Disputed Domain Name to impersonate the Complainant which is not a bona fide use of the Disputed Domain Name; nor could any of the uses made by the Respondent show that the Respondent had any right to use the Complainant’s trademark or name or to offer its products for sale; this is well-established by the evidence, particularly that contained in one of the Annexes to the Complaint; it shows the Respondent’s resolving website prior to the offending content being removed after complaint by the Complainant; it shows extensive use of the FISHER-PRICE trademark, which was without permission, extensive illustration of the products allegedly being offered for sale which are clearly claimed to be the Complainant’s products, alleged testimonials from buyers and the entire website using the same colors, layout, get-up and ambiance as the Complainant’s own and official presentation, all clearly designed by the Respondent with the intention of giving the false impression that this website was an official website of the Complainant; as the Panel has examined the Complainant’s own official website, it is clear that internet users would assume that the Annex is in fact the Complainant’s website, which it is not;

• the registration of the Disputed Domain Name creates the false impression of affiliation, endorsement or approval by the Complainant of that registration; the Panel has already explained how this submission has been proved by the evidence;

• the evidence shows that the Respondent registered the Disputed Domain Name on March 1, 2024 which was well after the Complainant had acquired its aforesaid trademark rights and by which time the Complainant had established its longstanding international presence and reputation; the Respondent was therefore targeting the Complainant and seeking to trade on its good will and reputation;

• the Respondent has used the Disputed Domain Name for illegal activities; the uses made by the Respondent of the Disputed Domain Name and described above were clearly infringements of its trademark, misleading and deceptive and part of a fraud being committed by the Respondent on internet users; they cannot be described otherwise than being illegal; and

• the evidence shows that there is no other circumstance that could conceivably be argued to give rise to a right or legitimate interest in the Disputed Domain Name.

Accordingly, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

The Respondent has not rebutted the prima facie case as it is in default and has not filed a Response. Indeed, it has been shown by the evidence that the Respondent removed the aforementioned offending content from its website after the Complainant gave the appropriate notice; this shows that the Respondent has in effect admitted that it had no right to register or to use the Disputed Domain Name in the manner described above, or at all.

The Complainant has therefore made out the second of the three elements that it must establish under Paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith.

Paragraph 4(b) of the Policy sets out four circumstances, any one of which is evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive.

The four specified circumstances are:

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

(ii) the respondent has registered the 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 the respondent has engaged in a pattern of such conduct; or

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

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

The Panel finds that the Complainant has shown that the Respondent registered and used the Disputed Domain Name in bad faith on all the grounds relied on by the Complainant.

The Panel will deal with each of those grounds in the order in which they have been raised by the Complainant.

They are that:

(a) the evidence shows that at the time of the registration of the Disputed Domain Name, the Complainant had established an international reputation and extensive goodwill in its FISHER-PRICE trademark; accordingly, taking the Complainant’s trademark and using it as described above shows that the Respondent knew that it was targeting the Complainant and its genuine and famous products;

(b) the evidence shows that the Respondent has caused the Disputed Domain Name to resolve to a website on which the Complainant’s trademark and purported products are prominently displayed, showing in effect that the Respondent intended to give the false impression that it was the Complainant or authorized by it, that it was authorized to sell the products advertised and that they were genuine FISHER-PRICE products; these are all acts of bad faith;

(c) the evidence shows that at the time when the Registrant registered the Disputed Domain Name, the Respondent had actual knowledge of the FISHER-PRICE trademark and its association with the Complainant’s goods and services; this is clearly established by the evidence which it is not necessary to repeat;

(d) the principal constituent parts of the Disputed Domain Name are patronymics that signify the two founders of the Complainant; thus, it is clear that the Respondent wanted to and intended to assert specifically that the products on offer were genuine and branded articles produced by the Complainant;

(e) the evidence shows that the Respondent clearly sought to target the Complainant because of its extensive goodwill and fame which is clearly bad faith;

(f) the evidence shows that the Respondent has used the Disputed Domain Name for illegal activities;

(g) the evidence shows that the Respondent has used the Disputed Domain Name to pass itself off as and impersonate the Complainant;

(h) the evidence shows that the Respondent has redacted its contact details which, on the balance of probabilities and having regard to the evidence, is consistent with the Respondent’s proven dishonest intent; and

(i) there is no other circumstance tending to suggest that the Respondent registered and used the Disputed Domain Name with any intention other than to do so in bad faith.

The Complainant has made out all of the grounds it has relied on and accordingly the Panel finds that the Respondent has registered and used the Disputed Domain Name in bad faith.

The Complainant has therefore made out the third of the three elements that it must establish under Paragraph 4(a)(iii) of the Policy.

The Complainant has therefore established all of the elements it is required to prove under the Policy and the Respondent is in default and has not filed a Response. The Complainant is therefore entitled to the relief that it seeks, namely transfer of the Disputed Domain Name.