Dr. Seuss Enterprises, L.P. v. Heath grayson / Heath h grayson
Claim Number: FA2105001944027
Complainant is Dr. Seuss Enterprises, L.P. (“Complainant”), represented by Ryan C. Compton of DLA Piper LLP (US), District of Columbia, USA. Respondent is Heath grayson / Heath h grayson (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <drseussbooks.org>, registered with Name.Com, Inc.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 5, 2021; the Forum received payment on May 5, 2021.
On May 6, 2021, Name.Com, Inc. confirmed by e-mail to the Forum that the <drseussbooks.org> domain name are registered with Name.Com, Inc. and that Respondent is the current registrant of the name. Name.Com, Inc. has verified that Respondent is bound by the Name.Com, Inc. 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 May 12, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 1, 2021, 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@drseussbooks.org. Also on May 12, 2021, 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 June 4, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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, Dr. Seuss Enterprises, L.P., is a leading children’s entertainment company. Complainant has rights in the DR. SEUSS mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,254,514 registered June 15, 1999). Respondent’s <drseussbooks.org> domain name is confusingly similar to Complainant’s mark since it incorporates Complainant’s DR. SEUSS mark entirely, adding only the term “books” which describes Complainant’s business and the generic top-level domain (“gTLD”) “.org”.
Respondent lacks rights and legitimate interests in the <drseussbooks.org> domain name as it is not commonly known by the disputed domain name and Complainant has not licensed or authorized Respondent to use the DR. SEUSS mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to pass off as Complainant and direct Internet users to Respondent’s own website, where Respondent directly profits by selling books and merchandise bearing Complainant’s mark, without Complainant’s authorization.
Respondent registered and uses the <drseussbooks.org> domain name in bad faith. Respondent attempts to disrupt Complainant’s business by capitalizing on a confusing similarity with a mark to attract Internet users to Respondent’s website, where Respondent offers competing goods for commercial gain. Respondent had actual knowledge of Complainant’s rights in the DR. SEUSS mark based on the confusing similarity between the domain name and the mark, fame of the mark, and the fact the Respondent sells goods branded with Complainant’s mark on its website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Dr. Seuss Enterprises, L.P. (“Complainant”) of San Diego, CA, USA. Complainant is the owner of domestic and international registrations for the mark DR. SEUSS, and variations thereof, which it has continuously used since at least as early as 1937 for children’s books and characters as well as associated entertainment goods and products.
Respondent is Heath Grayson / Heath H Grayson (“Respondent”), of Chappaqua, NY, USA. Respondent’s registrar’s address is unlisted. The phone number given for the registrar includes an area code for parts of CO, USA. The Panel notes that the <drseussbooks.org> domain name was registered on or about March 5, 2021.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims rights in the DR. SEUSS mark through its registration with the USPTO (e.g., Reg. No. 2,254,514 registered June 15, 1999). Registration of a mark with a national trademark agency is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). The Panel here finds Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <drseussbooks.org> domain name is confusingly similar to Complainant’s DR. SEUSS mark because it incorporates Complainant’s entire DR. SEUSS mark, adding the term “books” which describes Complainant’s business and the gTLD “.org”. Adding a term that describes the complainant’s business not only does not remove confusing similarity but also increases the likelihood of confusion. See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i).). See also Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark). The addition of the gTLD “org.” is also insufficient to distinguish the domain name from the mark. See International Soap Box Derby, Inc. v. Domain Admin / Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1602433 (Forum Mar. 4, 2015) (“The domain name contains the mark in its entirety, merely eliminating the spaces between the terms of the mark and adding the generic Top-Level Domain (“gTLD”) “.org.” These alterations of the mark, made in forming the domain name, do not save it from the realm of identity or confusing similarity under the standards of the Policy.”). Here, Complainant contends that since the famous DR. SEUSS mark is associated with literature, the term “books” will only increase confusion. The Panel here finds the disputed domain name is identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”). The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant argues that Respondent does not have rights or legitimate interests in the <drseussbooks.org> domain name because Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the DR. SEUSS mark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a mark is further evidence that a respondent is not commonly known by the mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Here, Respondent has been identified as Heath H Grayson by Forum on May 10, 2021. Additionally, Complainant asserts that it has not permitted Respondent to use the DR. SEUSS mark and has no business relationship with Respondent. The Panel here finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent fails to use the <drseussbooks.org> domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent uses the disputed domain name to pass off as Complainant and divert users to Respondent’s own website, where Respondent directly profits from purchases. In general, using a disputed domain name to sell products branded with a complainant’s mark, either counterfeit or legitimate but unauthorized, is not a bona fide offering of goods. See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization). Here, Complainant provides screenshots showing the disputed domain name resolves to a website where Respondent sells unauthorized Dr. Seuss branded books and merchandise. The Panel here finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant further argues that Respondent’s registration and use of the <drseussbooks.org> domain name lacks rights and legitimate interests under Policy ¶ 4(c)(iii) because Respondent intentionally misleads consumers or tarnish the DR. SEUSS mark for commercial gain. Selling products that compete directly with a complainant is not a legitimate noncommercial or fair use. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Here, Complainant contends that Respondent sells goods related to Complainant’s DR. SUESS under the disputed domain name, which commercial use misleads consumers for Respondent’s financial gain. The Panel here finds Respondent’s unauthorized offerings evidence that Respondent lacks rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(iii).”)
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues Respondent registered and uses the <drseussbooks.org> domain name in bad faith under Policy ¶ 4(b)(iii) because Respondent is attempting to disrupt Complainant’s business. Capitalizing on a confusing similarity with a mark to offer competing goods has been found to constitute bad faith use under Policy ¶ 4(b)(iii). block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) (“Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.”). Here, Complainant contends that Respondent uses the disputed domain name to resolve to a website where Respondent sells unauthorized goods related to Complainant’s DR. SEUSS mark. The Panel finds Respondents actions constitute bad faith registration and use under Policy ¶ 4(b)(iii).
Complaint finally argues that Respondent registered the <drseussbooks.org> domain name with actual knowledge of Complainant’s rights in the DR. SEUSS mark based on the domain name being identical and/or confusingly similar to the mark, the fame of the mark, and Respondent’s sale of goods branded with Complainant’s mark. Per Policy ¶ 4(a)(iii), actual knowledge of a complainant’s trademark rights is sufficient to establish bad faith and can be demonstrated by the fame of the mark. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Actual knowledge can be inferred when Respondent incorporates Complainant’s mark in the domain name and makes use of Complainant’s services at the resolving page. WordPress Foundation v. mich delorme / mich d dots tlds, FA1410001584295 (Forum Nov. 25, 2014) (“Because Respondent here relies on the WORDPRESS mark in the disputed domain name and also makes use of Complainant’s services at the resolving page, the Panel finds that Respondent had actual knowledge of Complainant’s mark, and that such knowledge evidences Policy ¶ 4(a)(iii) bad faith.”). Complainant contends that: first, the domain name is identical and/or confusingly similar to the DR. SEUSS mark; second, Complainant’s DR. SEUSS mark is well-known; and third, Respondent sells DR. SEUSS branded goods on its website. The Panel here agrees that Respondent had actual knowledge of Complainant’s rights in the DR. SEUSS mark and registered and used it in bad faith pursuant to Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <drseussbooks.org> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: June 21, 2021
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