Dr. Seuss Enterprises, L.P. v. WhoisGuard, Inc.
Claim Number: FA2001001877616
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: WhoisGuard, Inc. / WhoisGuard Protected of Panama, PA.
Respondent Representative: None
REGISTRIES and REGISTRARS
Registries: DotSpace Inc.
Registrars: NameCheap, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Examiner in this proceeding.
Terry F. Peppard, as Examiner.
Complainant submitted: January 3, 2020
Commencement: January 6, 2020
Default Date: January 22, 2020
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") to give to Respondent notice of the commencement of this proceeding and an opportunity to answer and defend against the Complaint filed herein.
Complainant requests that the domain name <grinch.fun> be suspended for the life of the registration.
Clear and convincing evidence.
Notwithstanding that Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make out a case, proven by clear and convincing evidence, for each of the following three elements of the Procedure in order to obtain a determination that a domain name should be suspended:
i. that the registered domain name is identical or confusingly similar to a word mark for which the Complainant holds a valid national or regional registration that is in current use;
ii. that the registrant (Respondent) has no legitimate right to or interest in the domain name; and
iii. that the domain name was registered or is being used by the registrant (Respondent) in bad faith.
In its Complaint, Complainant shows that it holds a valid registration for the trademark GRINCH, which is on file with the United States Patent and Trademark Office as Registry No. 2,328,812, first registered on March 14, 2000, in International Class 025 [T-shirts, shirts, tops, sweaters, hats, headwear, aprons, and sweatshirts], registration renewed as of January 27, 2010, and that the same mark is in current use. Respondent does not dispute any of this.
Respondent also does not deny that the publicly available WHOIS record reflects that Respondent registered the domain name <grinch.fun> on December 21, 2019.
Further facts pertinent to our inquiry are set out below under the appropriate headings.
IDENTITY OR CONFUSING SIMILARITY
There is no dispute the challenged domain name is confusingly similar to Complainant’s GRINCH trademark, or that Complainant holds a valid registration for that mark and that it is in current use. Accordingly, we so find.
REGISTRANT’S RIGHTS OR INTERESTS
Complainant secured trademark protection for its GRINCH trademark in the year 2000, while Respondent obtained registration for its <grinch.fun> domain name much later, in 2019. As a consequence, Complainant’s rights in its mark are senior in time to any claim Respondent might have made for rights to or interests in the domain name. Moreover, Complainant asserts, without objection from Respondent, that Respondent has no business relationship with Complainant and that Complainant has not licensed or otherwise authorized Respondent to use the GRINCH mark.
In addition, the record reflects that Respondent is identified only as WhoisGuard, Inc., and there is nothing in the record to indicate that Respondent has been commonly known by the <grinch.fun> domain name.
To this the Complaint adds that the only use to which the <grinch.fun> domain name has been put by Respondent is that it redirects Internet users to a website displaying links to other websites unrelated to the business of Complainant, which tends to create confusion among such users as to the possibility of Complainant’s association with the domain name. In light of these contentions, none of which is contested by Respondent, we may comfortably presume that Respondent profits from the use made of the domain name, whether by the receipt of click-through fees or otherwise. We conclude, therefore, that Respondent has shown no rights to or legitimate interests in the disputed domain name.
BAD FAITH REGISTRATION OR USE
Under the Policy, essentially the same considerations, described above, that make it clear that Respondent has no rights to or legitimate interests in the <grinch.fun> domain name are also pertinent to an analysis of the question whether the domain name has been registered or is being used in bad faith. We may, however, also take into account that it is evident from the facts before us that Respondent knew of Complainant and its rights in the GRINCH mark when Respondent registered the domain name. We may, in addition, take account of the fact that there is nothing in the record to suggest that Respondent is making a bona fide offering of goods or services by means of the domain name or that its use of the domain name is a legitimate non-commercial or fair use. Accordingly, we determine that Respondent’s use of the domain name is disruptive of Complainant’s business and that Respondent both registered and now uses the domain name in bad faith.
Upon review of Complainant’s submissions, and in light of our findings, we determine that Complainant has adequately demonstrated all three required elements of the URS Procedure to a standard of clear and convincing evidence. It is, therefore, Ordered that the domain name <grinch.fun> be SUSPENDED for the duration of its registration.
Terry F. Peppard, Examiner
Dated: January 23, 2020
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