DECISION

 

Dr. Seuss Enterprises, L.P. v. Rebecca McQueen / Culturas Publications Inc.

Claim Number: FA2005001895373

 

PARTIES

Complainant is Dr. Seuss Enterprises, L.P. (“Complainant”), represented by Ryan C. Compton of DLA Piper LLP (US), District of Columbia, USA.  Respondent is Rebecca McQueen / Culturas Publications Inc. (“Respondent”), Ohio, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <elgrinch.com>, registered with eNom, LLC.

 

PANEL

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.

 

Steven M. Levy, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on May 8, 2020; the Forum received payment on May 8, 2020.

 

On May 8, 2020, eNom, LLC confirmed by e-mail to the Forum that the <elgrinch.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name.  eNom, LLC has verified that Respondent is bound by the eNom, LLC 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, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 1, 2020 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@elgrinch.com.  Also on May 12, 2020, 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.

 

The Forum received an email from Respondent in reply to its May 12, 2020 Written Notice of the Complaint. However, this did not consist of a response to the Complaint and so the Forum transmitted to the parties a Notification of Respondent Default.

 

On June 5, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant, Dr. Seuss Enterprises, L.P., is a children’s entertainment company. Complainant asserts rights in the trademarks GRINCH, THE GRINCH, EL GRINCH, and other GRINCH-formative marks through its use of such marks since 1957 and its registration of the marks with multiple trademark offices around the world dating back to 1993. Respondent’s <elgrinch.com> domain name, initially created in 2008, is confusingly similar to Complainant’s GRINCH marks as it fully incorporates the mark and merely adds the letters “e” and “l” along with the “.com” generic top-level domain.

 

Respondent lacks rights and legitimate interests in the <elgrinch.com> domain name. Respondent is not commonly known by the disputed domain name nor has Complainant authorized Respondent to use the GRINCH mark. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent used the domain name to resolve to a web page displaying an image of its La Prensa newspaper. After Complainant sent a demand letter to Respondent, the website was taken down and so Respondent currently makes no active use of the <elgrinch.com> domain name.

 

Respondent registered and uses the <elgrinch.com> domain name in bad faith. Respondent registered a confusingly similar domain name to Complainant’s mark in order to disrupt Complainant’s business and attract internet users to Respondent’s website for financial gain. Additionally, Respondent knew of Complainant’s rights in the GRINCH mark at the time of registration.

 

B. Respondent

Although Respondent failed to submit a formal Response in this proceeding, it did send an email to the Forum stating “The email holder At laprensa1@yahoo.com is not a valid email address for the listed parties. Rebecca McQueen has nothing to do with <elgrinch.com> and nor does Culturas Publications. Willing to sign over domain name if requested. Never been valid service to relevant parties”.

 

FINDINGS

Respondent has consented to a transfer of the disputed domain name to Complainant.

 

DISCUSSION

PRELIMINARY ISSUE: RESPONDENT’S CONSENT TO TRANSFER

The Forum received an email from Respondent after having served it with the Complainant. In it, Respondent consents to voluntarily transfer the <elgrinch.com> domain name to Complainant. As a result, the Panel finds that in a circumstance such as this, where Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the domain name to Complainant, the Panel may decide to forego the traditional UDRP analysis and order an immediate transfer of the <elgrinch.com> domain nameSee Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).

 

In its email to the Forum, Respondent states: “Willing to sign over domain name if requested”. Therefore, the Panel has determined that it is not necessary to analyze the present case under the elements of the UDRP and it may be ordered that the disputed domain name be transferred to Complainant upon the Respondent’s voluntary consent.

 

DECISION

The Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <elgrinch.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Steven M. Levy, Esq., Panelist

Dated:  June 8, 2020

 

 

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