Dr. Seuss Enterprises, L.P. v. Speed Synergy Admin / Save The Grinch
Claim Number: FA2006001899174
Complainant is Dr. Seuss Enterprises, L.P. ("Complainant"), represented by Ryan C. Compton of DLA Piper LLP, District of Columbia, USA. Respondent is Speed Synergy Admin / Save The Grinch ("Respondent"), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <savethegrinch.com>, registered with Tucows Domains 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 5, 2020; the Forum received payment on June 5, 2020.
On June 8, 2020, Tucows Domains Inc. confirmed by email to the Forum that the <savethegrinch.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 June 12, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 2, 2020 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@savethegrinch.com. Also on June 12, 2020, the Written Notice of the Complaint, notifying Respondent of the email 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.
On June 30, 2020, the Forum received email correspondence apparently sent by Respondent, the content of which is set forth below.
Having received no formal response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 6, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 is a children's entertainment company. Complainant owns various rights associated with the works of Theodore Seuss Geisel, including Dr. Seuss books, films, and other properties. Complainant has used GRINCH and related marks in connection with the famous children's book How the Grinch Stole Christmas! and related goods and services since the book was published in 1957. Complainant owns registrations for GRINCH and related marks in the United States and other jurisdictions.
Respondent registered the disputed domain name <savethegrinch.com> via a privacy registration service in February 2020. The domain name is being used for a website that offers for sale various unauthorized merchandise branded with Complainant's GRINCH mark and associated caricature, with the GRINCH mark appearing in the same distinctive font as that used by Complainant. Complainant states that it has no business relationship with Respondent, and has not licensed or otherwise permitted Respondent to use its GRINCH marks; and that Respondent is not commonly known thereby.
Complainant contends on the above grounds that the disputed domain name <savethegrinch.com> is confusingly similar to its GRINCH mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. The email correspondence presumably submitted by Respondent stated as follows:
My name is Roman. I would like to get all of this cleared up. I did not receive any notices from them because it looks like they sent them to the wrong email address. I deleted the website As soon as I got this email from you. I would like to corporate with them. I don't know how all this works I understand that there is a dead line. If you could please reach out to me via phone that would be a big help my number is [omitted]
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <savethegrinch.com> incorporates Complainant's registered GRINCH trademark, adding the nondistinctive phrase "save the" (with the space omitted) and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Dr. Seuss Enterprises, L.P. v. Jorge Pizarro / Grinch, FA 1863104 (Forum Oct. 17, 2019) (finding <grinchcr.com> confusingly similar to GRINCH); UBS AG v. Benjamin Andel, FA 1713038 (Forum Mar. 2, 2017) (finding <ubs-save.com> confusingly similar to UBS); Canon Information Systems Research Australia Pty Ltd. v. Michael Marriner, D2011-0622 (WIPO May 30, 2011) (finding <savecisra.com> confusingly similar to CISRA). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and it is being used to promote unlicensed merchandise bearing the mark and obviously referring to Complainant's associated character. Such use is unlikely to give rise to rights or legitimate interests under the Policy. See, e.g., Microsoft Corp. v. John Casiano, FA 1706438 (Forum Jan. 17, 2017) (finding lack of rights or interests arising from use of domain name incorporating MINECRAFT mark for website promoting unauthorized MINECRAFT merchandise).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site 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 [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent used a privacy registration service to register a domain name incorporating Complainant's mark, and is using it for a website that promotes unauthorized merchandise bearing the mark and associated caricature, with the mark appearing in the same distinctive font as that used by Complainant. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Microsoft Corp. v. John Casiano, supra (finding bad faith in similar circumstances). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <savethegrinch.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: July 8, 2020
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