Warner Bros. Entertainment Inc. v. Privacy service provided by Withheld for Privacy ehf
Claim Number: FA2110001971029
Complainant: Warner Bros. Entertainment Inc. of Burbank, United States of America.
Complainant Representative:
Respondent: Withheld for Privacy Purposes / Privacy service provided by Withheld for Privacy ehf of Reykjavik, Capital Region, International, IS.
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: October 28, 2021
Commencement: October 29, 2021
Default Date: November 15, 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") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
According to the Complainant, Warner Bros. Entertainment Inc., wholly owns the subsidiary, Hanna-Barbera Productions, Inc and its Scooby-Doo trademark. Complainant states that it has been using the Scooby-Doo trademark continuously for various broadcasting, media and entertainment services since as early as 1969. Numerous other facts in relation to the use of the Scooby-Doo trademark were made by Complainant without any supporting evidence.
Complainant provided a single trademark registration for the Scooby-Doo trademark, namely, U.S. Registration No. 2902799 for “SCOOBY-DOO” registered on November 16, 2004.
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: 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.
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 owns the rights in the “SCOOBY-DOO” registered trademark. The disputed domain name is <scoobnb-doo.xyz>. The Panel finds that the disputed domain name is confusingly similar to the Complainant’s nationally registered trademark. The Complainant has satisfied the first element of the URS.
[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
Determined: Finding for Respondent
Under the URS, the Complainant is held to high standard of proof of clear and convincing evidence. Contrary to the UDRP, the URS is a unique process, to be used in the most blatant domain name cybersquatting with a short 500-words limit for the Complaint. The Complainant must within the limits of the URS explain each of the three elements necessary to be satisfied under the URS. In the present case, Complainant failed to provide any explanation, why Registrant has no legitimate right or interest to the disputed domain name. Failing to completely argue the second element, the Complainant failed to meet the necessary requirements of URS 1.2.6.2.
[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 Respondent
Having failed to meet URS 1.2.6.2, the Examiner is not required to discuss the third element.
The Complainant cites with agreement Virgin Enterprises Limited v. Lawrence Fain, Claim Number: FA1402001545807, where the Examiner stated that “the URS process is a narrow one and is “without prejudice to the Complainant… proceed[ing] with an action in [a] court of competent jurisdiction or under the UDRP,” URS, para. 8.5, where the record may be more fully developed and the factual and legal arguments not constrained by, among other things, the 500-word limit for URS complaints.”
After reviewing the Complainant’s submissions, the Examiner determines that
the Complainant has failed to demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Complaint is dismissed without prejudice and the Examiner hereby Orders the following domain name be RETURNED to the control of Respondent:
<scoobnb-doo.xyz>
Jonathan Agmon, Examiner
Dated: November 17, 2021
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