Dr. Seuss Enterprises, L.P. v. Johnson Zhang
Claim Number: FA2108001961216
Complainant is Dr. Seuss Enterprises, L.P. (“Complainant”), represented by Ryan C. Compton of DLA Piper LLP, District of Columbia, USA. Respondent is Johnson Zhang (“Respondent”), Singapore.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dr-seuss.com>, registered with Realtime Register B.V..
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 26, 2021; the Forum received payment on August 26, 2021.
On August 26, 2021, Realtime Register B.V. confirmed by e-mail to the Forum that the <dr-seuss.com> domain name is registered with Realtime Register B.V. and that Respondent is the current registrant of the name. Realtime Register B.V. has verified that Respondent is bound by the Realtime Register B.V. 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 September 1, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 21, 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@dr-seuss.com. Also on September 1, 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 September 23, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant is a children’s entertainment company, offering multiple products and educational and entertainment services. Complainant has rights in the DR. SEUSS marks through its registration with multiple trademark agencies, including the United States Patent and Trademark Office (“USPTO”) (e.g., Registration No. 2,715,958, registered on May 13, 2003). See Compl. Annex C. Respondent’s <dr-seuss.com> domain name is identical or confusingly similar to Complainant’s DR SEUSS mark, as it incorporates the mark in its entirety, only adding a hyphen and the “.com” generic top-level domain (gTLD).
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not authorized or licensed Respondent to use the DR SEUSS mark, nor is Respondent commonly known by the disputed domain name. Further, Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as the disputed domain name resolves to an inactive website.
Respondent registered and uses the <dr-seuss.com> domain name in bad faith. Respondent uses the domain name to resolve to an inactive website and Respondent had actual notice of Complainant’s rights in the DR SEUSS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1.Complainant is a United States company that is a leading children’s entertainment company providing a number of consumer products and various educational and entertainment services.
2. Complainant has established its trademark rights in the DR. SEUSS mark through its registration of the mark with multiple trademark agencies, including the United States Patent and Trademark Office (“USPTO”) (e.g., Registration No. 2,715,958, registered on May 13, 2003).
3. Respondent registered the <dr-seuss.com> domain name on August 5, 2021.
4. Respondent has caused the disputed domain name to resolve to an inactive website.
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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the DR SEUSS mark through its registration of the mark, and many other marks for DR SEUSS, with multiple trademark agencies, including the USPTO (e.g., Registration No. 2,715,958, registered on May 13, 2003). See Compl. Annex C. Past panels have agreed that registering a trademark with multiple trademark agencies throughout the world, including the USPTO, is sufficient to establish rights in the mark. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”); see also Bittrex, Inc. v. Domain Privacy Services, FA 1786849 (Forum June 15, 2018) (finding Complainant has trademark rights in the BITTREX mark through registration of the mark with the EUIPO and the USPTO.). Therefore, the Panel finds Complainant has proved its rights in the DR SEUSS mark.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s DR SEUSS mark. Complainant argues that the <dr-seuss.com> domain name is virtually identical or alternatively confusingly similar to Complainant’s mark because Respondent incorporates the mark in its entirety, only adding a hyphen and the “.com” gTLD. Merely adding a hyphen and a gTLD is not sufficient to differentiate a mark and disputed domain name for the purposes of Policy ¶ 4(a)(i). See ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug. 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). As the Panel agrees, it finds that the disputed domain name is confusingly similar to the DR SEUSS mark under Policy ¶ 4(a)(i) as it is virtually identical to the mark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s famous DR SEUSS mark and to use it in its own domain name;
(b) Respondent registered the <dr-seuss.com> domain name on August 5, 2021;
(c) Respondent has caused the disputed domain name to resolve to an inactive website;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends Respondent lacks rights and legitimate interests in the <dr-seuss.com> domain name as it is not authorized to use the DR SEUSS mark and it is not commonly known by the disputed domain name. To determine whether a Respondent is commonly known by a disputed domain name, WHOIS information may be used under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 174112 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interest in the dispute domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Additionally, lack of authorization to use a mark constitutes a further showing that a respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Here, the WHOIS information for the disputed domain name lists “Johnson Zhang” as the registrant and there is no information that suggests Complainant authorized Respondent to use the DR SEUSS mark in any way. See Amend. Compl. Annex O. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues Respondent does not use the disputed domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii) because the disputed domain name resolves to an inactive website. Using a disputed domain name to present an inactive website is not a bona fide offering of goods and services or legitimate noncommercial or fair use. See CrossFirst Bankshares, Inc. v Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”); see also Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). In this case, Complainant provides a screenshot of the resolving, inactive website. See Compl. Annex E. The Panel therefore finds that the inactive holding of the website does not constitute a bona fide offering of goods and services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent acts in bad faith because the disputed domain name disrupts Complainant’s business by creating confusion to users about the association between Complainant and Respondent. Past panels have found that the use of a similar domain name to confuse users and disrupt complainant’s business constitutes bad faith under Policy ¶ 4(b)(iii). See Love City Brewing Company v. Anker Fog / Love City Brewing Company, FA 1753144 (Forum Nov. 27, 2017) (Finding that Respondent disrupts Complainant’s business by pointing Internet users to an expired webpage. This may create the perception that Complainant is closed, never existed, or is not a legitimate business. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iii).); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Here, Respondent appropriates the mark in its entirety to redirect users to an inactive website which clearly must be for an entirely improper purpose. See Compl. Annex E. Therefore, the Panel finds this activity disrupts Complainant’s website and hence its business and constitutes bad faith under Policy ¶ 4(b)(iii).
Secondly, Complainant also submits that Respondent had actual and/or constructive notice of Complainant’s rights in the mark. Complainant submits that because Respondent incorporates Complainant’s mark and domain in its entirety, Respondent had actual knowledge of Complainant’s rights. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). That view has been taken and applied in many prior UDRP decisions. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); 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 the Panel determines actual knowledge is evident in the present case, the Panel finds Respondent acted in bad faith per Policy ¶ 4(a)(iii) when registering and using the disputed domain name.
Complainant has thus made out the third of the three elements that it must establish.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dr-seuss.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 27, 2021
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