Dr. Seuss Enterprises, L.P. v. Waren Treuhand GmbH / Gerd Umrath
Claim Number: FA2108001961017
Complainant: Dr. Seuss Enterprises, L.P. of San Diego, California, United States of America.
Complainant Representative: DLA Piper LLP (US) of Washington, District of Columbia, United States of America.
Respondent: Waren Treuhand GmbH / Gerd Umrath of Liestal, Switzerland.
REGISTRIES and REGISTRARS
Registries: Knock Knock WHOIS There, LLC
Registrars: 1API GmbH
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Examiner in this proceeding.
Mr. Peter Müller, as Examiner.
Complainant submitted: August 25, 2021
Commencement: August 26, 2021
Response Date: August 26, 2021
Response submitted: August 26, 2021
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
No multiple Complainants or Respondents and no multiple disputed domain names require dismissal.
Findings of Fact:
URS Procedure 1.2.6. requires the Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
[URS 1.2.6.1.] The registered domain name is identical or confusingly similar to a word mark:
(i) for which the Complainant holds a valid national or regional registration and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
The Complainant provided documentary evidence that it is registered owner of the United States trademark registration no. 2072896 “LORAX”, which was registered on June 17, 1997 for goods in classes 9 and 16 (hereinafter referred to as the “LORAX Mark”), as well as documents to show that the trademark is in current use.
The disputed domain name fully incorporates the LORAX Mark and is identical to such mark. It is well established that the specific top-level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name.
The Examiner finds that the disputed domain name is identical to the LORAX Mark and that the Complainant satisfied the elements of URS Procedure 1.2.6.1.
[1.2.6.2.] The Registrant has no legitimate right or interest to the disputed domain name.
The Complainant contends that the Respondent has no legitimate right or interest to the disputed domain name as the Complainant has not licensed or otherwise permitted the Respondent to use the LORAX Mark or to apply for any domain name incorporating the LORAX Mark. It further argues that the Respondent cannot establish legitimate rights in the disputed domain name because the term “LORAX” is a coined name that could not have been coincidentally adopted by the Respondent and that the Complainant owns exclusive rights in the LORAX Mark and federal registrations for the LORAX Mark.
The Respondent denies these assertions and states that it is also registrant of a trademark “LoRaX” in several categories, which constitutes own rights or legitimate interests. The Respondent, however, failed to provide an evidence with regard to this assertion. Instead, the Respondent provided evidence, that Mr. Gerd Umrath is CEO of a company Lorax GmbH, which operates in the field of trade and production of goods in the field of optics, hunting and shooting sports accessories. The company was created in 2014 and renamed to Lorax GmbH in July 2021.
With that in mind, it seems quite possible that the Respondent may invoke rights or legitimate interests in the disputed domain name, even though no connection of the disputed domain name with the Respondent Waren Treuhand GmbH has been proven. However, with a view to the findings below, the Examiner does not need to come to a decision on whether the Respondent might have a legitimate right or interest to the disputed domain name.
[1.2.6.3.] The disputed domain name was registered and is being used in bad faith.
The Complainant asserts that it owns exclusive rights in the LORAX Mark. Furthermore, it states that the Respondent is creating confusion through its registration of the disputed domain name wholly comprised of the LORAX Mark and is attempting to disrupt the Complainant’s business, which is evidence of bad faith registration.
The Respondent denies these assertions.
Given that the parties are active on different continents and the Complainant has not submitted any evidence with regard to a business activity at the domicile of the respondent in Switzerland, the Examiner assumes that there is already no proof of bad faith registration.
In addition, the Complainant has not provided sufficient evidence that the disputed domain name is being used in bad faith as well. At present, the disputed domain name is inactive. The Complainant stated that the disputed domain name was registered to disrupt the business of the Complainant. The Complainant failed to provide any evidence in support to its allegations. Previous URS decisions have held that the passive holding of a domain name could support, by clear and convincing evidence, that a domain name is being used in bad faith. However, passive holding does not per se lead in a finding of bad faith use. See Central Florida Educational Foundation, Inc. v. Domain Administrator / NameFind LLC et al., FA 1887839 (Forum, March 25, 2020); Netflix, Inc. v. Masterclass Media et al., FA 1639527 (Forum Oct. 2, 2015); Allianz SE v. Registrant of xn--49s296f.xn--3ds443g / Rich Premium Limited / Domain Administrator, FA 1579170 (Forum Oct. 1, 2014). On the contrary, passive holding is equal to active use in bad faith only under specific circumstances. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
The Complainant has not provided evidence that the Respondent used the disputed domain name in bad faith. Furthermore, the Complainant has not established that the Respondent’s nonuse of the disputed domain name equals bad faith use under the passive holding doctrine, first set out in Telstra Corporation Limited v. Nuclear Marshmallows and confirmed ever since. Rather, the Complainant merely asserted that the disputed domain name was registered to disrupt the business of the Complainant. In sum, after carefully considering the evidence, the Examiner finds that the evidence is not clear and convincing that the domain name is being used in bad faith. Given that the URS is not intended for use in any proceedings with open questions of fact, but only clear cases of trademark abuse, the Examiner finds that the Complainant has not satisfied the elements of URS Procedure 1.2.6.3.
No abuse or material falsehood.
After reviewing the Complainant’s submissions, the Examiner determines that the Complainant has NOT demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name be RETURNED to the control of Respondent.
<lorax.blog>
Given that the Complainant owns rights in the LORAX Mark and that the neither the company name Lorax GmbH not any trademark related information has been available on the Respondent’s website, the Examiner finds the Complaint was NOT brought in an abuse of the administrative proceeding or with material falsehoods.
Mr. Peter Müller, Examiner
Dated: August 30, 2021
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