Dr. Seuss Enterprises, L.P. v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA2104001941414
Complainant is Dr. Seuss Enterprises, L.P. (“Complainant”), represented by Ryan C. Compton of DLA Piper LLP (US), District of Columbia, USA. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <drseussenterprises.com>, registered with Media Elite Holdings Limited.
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.
Jeffrey J. Neuman as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 14, 2021; the Forum received payment on April 14, 2021.
On April 15, 2021, Media Elite Holdings Limited confirmed by e-mail to the Forum that the <drseussenterprises.com> domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the name. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 April 20, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 10, 2021 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@drseussenterprises.com. Also on April 20, 2021, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 13, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jeffrey J. Neuman as Panelist.
On May 17, 2021, Panelist issued an Interim Order requesting Complainant provide a “copy of the ‘website at the Domain Name’ that contained ‘an assortment of pay-per-click (PPC) links’” which was referenced, but not included, in Annex F of the Amended Complaint.
Complainant responded to the Interim Order on May 21, 2021 by submitting a new amended and restated Complaint and associated Annexes (“Second Amended Complaint”) containing a modified “About Respondent” section along with a new Annex F. Rather than depicting an assortment of pay-per-click links as alleged in the Amended Complaint, Complaint modified the applicable allegation stating that “As of May 21, 2021, there is no website directly hosted on the domain name. Instead, it appears that the domain name redirects to a number of seemingly random third-party domain names. A true and correct copy of one such third-party domain name dated as of May 21, 2021 is attached in Annex F.”
Although the Respondent did not respond to the Complaint or the Amended Complaint, the Panel issued a Second Interim Order giving Respondent until May 25, 2021 to respond to the new information in the Second Amended Complaint.
No response to the Second Interim Order was received from the Respondent.
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 leading children’s entertainment company. Complainant has rights in the DR. SEUSS mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,260.043 registered July 6, 1999). See Compl. Annex D. Respondent’s <drseussenterprises.com> domain name is virtually identical and confusingly similar to Complainant’s mark because it incorporates the DR. SEUSS mark in its entirety and merely adds the term “enterprises” and adds the “.com” generic top-level domain (“gTLD”)
Respondent has no rights or legitimate interests in the <drseussenterprises.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent any rights in the DR. SEUSS mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain name “redirects to a number of seemingly random third-party domain names.” See Second Amend. Compl. Annex F.
Respondent registered and uses the <drseussenterprises.com> domain name in bad faith. Respondent registered the disputed domain name in order to disrupt Complainant’s business and divert customers for commercial gain. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the DR. SEUSS mark.
B. Respondent
The disputed domain name was registered on March 8, 2021. However, Respondent failed to submit a Response in this proceeding.
1. Complainant has been using the DR. SEUSS mark as a pseudonym for Theodor Geisel and his successors in interest in connection with numerous books and characters since 1937. Complainant owns numerous registered trademarks, both domestically and internationally, all of which are valid and in full force and effect. See Amend. Compl. Annexes C and D.
2. Complainant’s corporate and trade name is Dr. Suess Enterprises, LP, which it began using in 1993. As a well-known global brand used in commerce for a myriad of products and services including books, toys and games, clothing apparel, computer games, greeting cards, etc., Complainant’s fame well pre-dates the registration of the disputed domain name, <drseussenterprises.com>, registered by Respondent on March 8, 2021.
3. The disputed domain name is identical or confusingly similar to the DR. SEUSS mark.
4. Complainant has not licensed or otherwise authorized Respondent to use its mark, nor is Respondent commonly known by the mark.
5. Complainant has established that the disputed domain name has been registered and 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 Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the DR. SEUSS mark based upon the registration with the USPTO (e.g., Reg. No. 2,260.043 registered July 6, 1999). See Second Amended Compl. Annex D. Registration of a mark with the USPTO is a valid showing of rights in a mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant also provides evidence of additional trademark registrations for the DR. SEUSS mark in numerous additional countries. See Second Amend. Compl. Annex C. Therefore, the Panel finds that the Complainant has rights in the DR. SEUSS mark under Policy ¶ 4(a)(i).
Complainant argues Respondent’s <drseussenterprises.com> domain name is identical or confusingly similar to Complainant’s DR. SEUSS mark as it contains the DR. SEUSS mark in its entirety and merely adds the term “enterprises” and the “.com” gTLD. Adding descriptive terms and a gTLD to a complainant’s mark may not sufficiently distinguish a disputed domain name from the mark under Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).
The Panel also agrees with Complainant that the “fact that the Disputed Domain Name incorporates the term ‘Enterprises’ only serves to increase the confusion between Complainant and the Domain Name given it is identical to” Complainant’s corporate/trade name. Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
In addition to demonstrating that that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, the Complainant must make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Once that prima facie case is made, the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends Respondent lacks rights or legitimate interests in the <drseussenterprises.com> domain name since Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in the DR. SEUSS mark. Where a response is lacking, relevant WHOIS information can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Domain Administrator,” and there is no other evidence to suggest that Respondent was authorized to use the DR. SEUSS mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant further argues that Respondent has no rights or legitimate interests in the domain name because it fails to use the disputed domain name in connection with a bona fide offering of goods or services; nor is it making a legitimate noncommercial or fair use of the disputed domain name. Rather, the domain name “redirects to a number of seemingly random third-party domain names.” See Second Amend. Compl. Annex F.
The screenshot provided by Complainant in the Second Amended Complaint shows that the domain name redirected to a DISH.COM job listing entitled “Polish Work At Home Customer Experience Representative”. This redirected webpage does not relate in any way to Complainant or its business. Nor does it redirect to a competitor of Complainant. On the flip side, the redirected webpage is not owned, administered or controlled by Respondent. Nor does the job listing contain any references to the term “DR SEUSS ENTERPRISES”, the term contained within in the disputed domain name. As Complainant alleges, the redirection appears to be random. This panel finds that the random usage of the disputed domain name is unlikely to represent either a (i) bona fide offering of goods or services envisaged under paragraph 4(c)(i) of the Policy, nor (ii) legitimate noncommercial or fair use of the Domain Name contemplated under paragraph 4(c)(ii) of the Policy. As such, the Panel finds that Complainant has met its burden to demonstrate that a Respondent lacks rights or a legitimate interest in the domain name.
As stated above, Complainant is the owner of the well-known DR. SEUSS brand which has been used as a pseudonym since 1937 by Theodor Geisel and his successors-in-interest in authorship for the numerous books and characters created by Theodor Geisel. The DR. SEUSS brand dates back to the publication of the first children’s book bearing the DR. SEUSS Marks in 1937 and is also used in connection with toys and games, clothing apparel, computer games, greeting cards, and Christmas ornaments. The DR. SEUSS mark is also associated with numerous well-known television shows and motion pictures as well as musicals inspired by the Dr. Seuss stories and characters, including The Cat in the Hat, How the Grinch Stole Christmas, The Lorax, Horton Hears A Who, and many others.
The Policy ¶ 4(b) provides a number of non-exclusive scenarios that constitute evidence of a respondent’s bad faith. Policy ¶¶ 4(b)(iii) and (iv) provide respectively that such evidence of use of in bad faith could include:
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on the respondent’s website or location.
Complainant argues that Respondent registered and uses the <drseussenterprises.com> domain name in bad faith because Respondent disrupts Complainant’s business and attempts to attract Internet users to its competing website for commercial gain. It also argues Respondent’s inactive holding of the <drseussenterprises.com> domain name is evidence of bad faith registration and use. Inactive holding of a disputed domain name can demonstrate bad faith registration and use per Policy ¶ 4(a)(iii). See State Farm Mutual Automobile Insurance Company v. Dr. Keenan Cofield, FA 1799574 (Forum Sept. 10, 2018) (finding bad faith under Policy ¶ 4(a)(iii) where “the domain name initially resolved to a web page with a “website coming soon” message, and now resolves to an error page with no content.”).
Although the Panel disagrees with Complainant that the domain name redirects users to a competing website, it is clear that the Domain Name attracts Internet users who are looking for the websites associated with the goods and services provided by Complainant under the DR. SEUSS Marks or Seuss Corporate Name. See Alamo Rent-A-Car Management, LP v. Yong Li (WIPO Case No. D2003-0535) (finding “it inconceivable that Respondent chose to include the word ‘alamo’ in the domain name without knowledge of complainant, complainant activities and the name and trademark under which Complainant is doing business. This is true even if the mark is not registered in the country of residence of respondent.”).
Similarly, it is clear that Respondent likely had actual knowledge about the Complainant and its rights to the DR. SEUSS mark at the time of registering the <drseussenterprises.com> domain name. First, the Disputed Domain name matches the exact corporate/trade name of the Complainant. The Complainant alleges that there is no other entity that is known by this name. Second, it argues that Respondent had actual or constructive knowledge of Complainant’s rights in the well-known DR. SEUSS Marks prior to registering the Domain Name given Dr. Seuss’s longstanding rights in and to its DR. SEUSS Marks.
The Panel agrees that Respondent must have had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name. It is inconceivable to the Panel that given the fame and notoriety of the DR. SEUSS books, movies, toys, games, etc. and the fact that the disputed domain name is an identical the corporate name of Complainant that Respondent wouldn’t have had actual knowledge of Complainant’s rights. Previous panels have presumed actual knowledge in cases that involve famous or well-known marks, especially where the disputed domain names contain the entire trademark. And, in such cases, that actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”) see also iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). As such, the Panel finds that Respondent did have actual knowledge of Complainant’s right in its mark, which supports a finding of bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <drseussenterprises.com> domain name be TRANSFERRED from Respondent to Complainant.
Jeffrey J. Neuman, Panelist
Dated: June 3, 2021
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