URS FINAL DETERMINATION
Dr. Seuss Enterprises, L.P. v. Gerd Umrath / Waren Treuhand GmbH et al.
Claim Number: FA2108001961014
DOMAIN NAME
<lorax.shop>
PARTIES
| Complainant: Dr. Seuss Enterprises, L.P. of San Diego, CA, United States of America | |
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Complainant Representative: DLA Piper LLP (US)
Ryan C. Compton of Washington, DC, United States of America
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| Respondent: LoRaX GmbH Gerd Umrath of Krefeld, Germany | |
REGISTRIES and REGISTRARS
| Registries: GMO Registry, Inc. | |
| Registrars: 1API GmbH |
EXAMINER
| 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. | |
| Ahmet Akguloglu, as Examiner |
PROCEDURAL HISTORY
| Complainant Submitted: August 25, 2021 | |
| Commencement: August 25, 2021 | |
| Response Date: September 8, 2021 | |
| 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"). |
RELIEF SOUGHT
| Complainant requests that the domain name be suspended for the life of the registration. |
STANDARD OF REVIEW
| Clear and convincing evidence. |
FINDINGS and DISCUSSION
| Procedural Findings: | ||
| Multiple Complainants: The Complaint does not allege multiple Complainants. | ||
| Multiple Respondents: The Complaint does not allege multiple Respondents. | ||
| Findings of Fact: Dr. Seuss Enterprises, L.P. (“DSEâ€), the Complainant, is the creator of the well-known children’s book character “The Lorax†and owns several trademark registrations for the mark LORAX (the “DSE Markâ€) in the USA. The Complainant claims that the domain name “lorax.shop†used by the Respondent is essentially identical to their LORAX trademark which aggravates the likelihood of confusion. Furthermore, the Complainant alleged that the Respondent has no right to use the aforementioned mark since the Complainant has not licensed nor permitted respondent for the use of DSE trademark. Complainant also asserted the bad faith of the Respondent considering that they own exclusive rights in the DSE trademark and federal registrations for the DSE trademark. Respondent, Gerd Umrath / Waren Treuhand GmbH, replied that; they have registered the trademark ‘’Lorax’’ in 3 categories. Respondent also stated that they are willing to trade their already existing products, which are at the moment sold under a different name. In addition, to strengthen their defense, the Respondent has submitted their “Lorax†trademark registration and “Lorax GmBh†trade registry as the response evidence. |
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URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, 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: Determined: Finding for Complainant It is clear that the Complainant has met its burden by clear and convincing evidence that the domain name is identical to the word marks ‘’Lorax’’ for which the Complainant holds valid registrations and that are in current use. [URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name. Determined: Finding for Respondent The Complainant has stated that they have not authorized the Respondent for use of the ‘’Lorax’’ and trademark. However, the Respondent has submitted their trade name registration at the German trade registry gazette for “Lorax GmbHâ€. Moreover, the Respondent has presented the registration form of the trademark “Lorax†to the German Patent and Trademark Office. Regarding the aforementioned form, it has been noticed that the applicant Herr Hans-Werner Siebeneicher does not match the name of the Respondent. Although the name of the applicant and the name of the Respondent do not match, it has been determined that the address of the applicant matches the address of the Respondent. In conclusion, due to the fact that the Respondent has a registered trade name it is possible to say that the Respondent has legitimate right and interest over the disputed domain name.
[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
Determined: Finding for Respondent According to the Respondent’s statements and submitted evidences it is clear that they have a legitimate right to use the disputed domain name. Additionally, even though the Claimant argues that the Respondent has bad faith, the Claimant did not submit any clear evidence to prove the bad faith. It is known that the Claimant also needs to submit clear evidence on the usage of the website (such as screenshot of the website) but the relevant evidence submitted by the Complainant only shows that the disputed web site cannot be reached. In this respect, the Examiner finds that the bad faith of the Respondent is not proven by the Claimant. FINDING OF ABUSE or MATERIAL FALSEHOOD The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods. The Examiner finds as follows:
DETERMINATION
After reviewing the parties submissions, the Examiner determines that the Complainant
has NOT demonstrated all three elements of the URS by a standard of clear and convincing
evidence; the Examiner hereby Orders the following domain name(s) be returned to
the control of Respondent:
|
Ahmet Akguloglu
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