Dr. Seuss Enterprises, L.P. v. WhoisGuard, Inc.
Claim Number: FA2011001921121
Complainant: Dr. Seuss Enterprises, L.P. of San Diego, California, United States of America.
Complainant Representative: DLA Piper LLP of Washington, District of Columbia, United States of America.
Respondent: WhoisGuard, Inc. of Panama, Panama, International, PA.
Respondent Representative: «cFirstName» «cMiddle» «cLastName»
REGISTRIES and REGISTRARS
Registries: XYZ.COM LLC
Registrars: NameCheap, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
Jonathan Agmon, as Examiner.
Complainant submitted: November 18, 2020
Commencement: November 19, 2020
Default Date: December 4, 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") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Complainant, Dr. Seuss Enterprises, L.P. (“DSE”) is a renowned global children’s entertainment brand. Complainant is the creator of the iconic children’s book How the Grinch Stole Christmas! featuring the character “Grinch” along with many other well-known works and associated characters.
Complainant owns several trademark registrations for the mark GRINCH (the “Mark”) in the United States.
Complainant asserts the following against the Respondent:
1. The registered domain name is identical or confusingly similar to a word or mark [URS 1.2.6.1]: for which the Complainant holds a valid national or regional registration and that is in current use;
2. Registrant has no legitimate right or interest to the domain name [URS 1.2.6.2];
3. The domain name was registered and are being used in bad faith [URS 1.2.6.3] such as: Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor.
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires 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(s) is/are 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.
Determined: Finding for Complainant
Complainant is the owner of the U.S. trademark registration (Registration No. 2328812) for the word mark “GRINCH” which was registered on March 14, 2000.
The domain name includes Complainant's mark in its entirety together with the gTLD ".monster". As is well known, the fictional character “Grinch” in the Complainant’s story is a green-furred, pear shaped tall creature having a cat like face and a Grinchy frown. It is depicted as a mean-tempered avocado green monster that is intent on stopping Christmas from coming. It is therefore the position of the Panel, that in the particular circumstances of this case, the gTLD “.monster” would therefore be ignored for the purpose of assessing if the disputed domain name is identical or confusingly similar to the Complainant’s mark. Accordingly, the addition of the gTLD “.monster” does not serve to avoid the confusing similarity between the Complainant’s registered mark and the disputed domain name.
[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
Determined: Finding for Complainant
Complainant has not authorized Respondent to use its GRINCH Mark. The Respondent is not commonly known by the registered domain name. The Respondent has not filed a Response which would further provide evidence indicating what rights it has to the disputed domain name.
[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith. a. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; c. Registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant's web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of Registrant's web site or location or of a product or service on that web site or location.
Determined: Finding for Complainant
Complainant provided evidence showing a webpage of the disputed domain name which appears to provide links that redirect Internet users to third party websites affiliated with Complainant’s business. The website links identify the websites as related to children’s books, Christmas ornaments and “Grinch Inflatables” among others. The evidence provided clearly shows that the Respondent is attempting to attract internet users looking for Complainant’s goods, and purposefully misleading users as to the source of the website. The Panel notes that such behavior is prohibited by the Policy much like Grinch’s trick of making a quick Santy Claus hat and a coat, disguising Max as a reindeer to take all the Whos presents and staff them up the tree. By using Complainant’s trademark in the disputed domain name and hiding the identity of the website provider, Respondent is purposefully misleading users as to the source, sponsorship, or endorsement of the offerings under the domain name. The evidence provided clearly shows that the Respondent was targeting the Complainant and Internet users familiar with Grinch and his unacceptable behavior of deception, telling fibs and leaving nothing but hooks and some wire. Given the clear and convincing evidence filed by the Complainant, it is the Panel’s conclusion that the disputed domain name was registered and is being used in bad faith to disrupt the business of the Complainant and creating a likelihood of confusion with the Complainant’s mark and that Complainant has complied with URS 1.2.6.3 (c).
After reviewing the Complainant’s submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration.
<grinch.monster>
Jonathan Agmon, Examiner
Dated: December 08, 2020
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