DR. SEUSS ENTERPRISES, L.P. v. WhoisGuard, Inc.
Claim Number: FA2009001913406
Complainant: DR. SEUSS ENTERPRISES, L.P. of San Diego, California, United States of America.
Complainant Representative:
Complainant Representative: DLA Piper LLP (US) of Washington, District of Columbia, United States of America.
Respondent: WhoisGuard, Inc. / WhoisGuard Protected of Panama, International, PA.
REGISTRIES and REGISTRARS
Registries: DotOnline Inc.
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.
Flip Jan Claude Petillion, as Examiner.
Complainant submitted: September 23, 2020
Commencement: September 24, 2020
Default Date: October 9, 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.
The Complainant, Dr. Seuss Enterprises, L.P., is the creator of iconic children’s books such as How the Grinch Stole Christmas!, Horton Hears a Who! and other children’s works. The Complainant owns a U.S. word mark for the sign WHOVILLE, registered under No. 4,772,912 in relation to clothing.
Respondent registered the disputed domain name <whoville.online> on September 7, 2020. It appears that depending on the web browser used, the disputed domain name either redirects to a web page containing a short disclaimer regarding sponsored listings on the page, or to a registrar parking page containing pay-per-click links including terms related to the Complainant’s children’s book business.
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
The record makes clear that the Complainant "holds a valid national or regional registration and that [it] is in current use". The Examiner finds that the second-level portion of the disputed domain name is identical to the Complainant’s WHOVILLE registered trademark. As the top level domain is irrelevant in assessing identity or confusing similarity, the new gTLD “.ONLINE” is of no consequence here (Facebook Inc. v. Radoslav, Claim Number: FA1308001515825). As the registered domain name is identical to a word mark for which the Complainant holds a valid national or regional registration that is in current use, the Examiner considers that the Complainant has satisfied the first element of the URS in accordance with paragraph 1.2.6.1 of the URS.
[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
Determined: Finding for Complainant
The Complainant has not authorized the Respondent to use its registered WHOVILLE trademark. The Respondent has not submitted any evidence to prove that he or she is commonly known under the disputed domain name. There is no evidence about rights or legitimate interest in WHOVILLE and the disputed domain name, or evidence about a fair use either. The use of a domain name to host a parked page comprising sponsored links does not represent a bona fide offering of goods or services where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark (see section 2.9 of WIPO Overview 3.0). In addition, the Panel notes that the disputed domain name is identical to the Complainant’s WHOVILLE trademark, which carries a high risk of implied affiliation (see section 2.5.1 of WIPO Overview 3.0). The Respondent does not contest the arguments of Complainant. Therefore, the Examiner finds that the second element for the Complainant to obtain the suspension of a domain name under URS 1.2.6.2 has also been proven.
[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;
or
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; or
c. Registrant registered the domain name primarily for the purpose of
disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract
for commercial gain, Internet users to Registrant’s web
site 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 Registrant’s web site or location or of a
product or service on that web site or location.
Determined: Finding for Complainant
The Complainant claims that the Respondent registered the disputed domain name in an attempt to disrupt the business of the Complainant. However, in the Examiner’s view, there is no clear and convincing evidence showing that this was the primary purpose of the Respondent.
That being said, the Examiner observes that the Respondent uses the disputed domain name for a parking page, sometimes displaying pay-per-click links generating click-through-revenue. Some of these links relate to the Complainant’s business. While the intention to earn click-through-revenue is not in itself illegitimate, the Examiner finds that the use of the disputed domain name that is identical to the Complainant’s trademark to obtain click-through-revenue constitutes bad faith use (see Mpire Corporation v. Michael Frey, WIPO Case No. D2009-0258; L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623). The fact that the pay-per-click links are automatically generated by a third party cannot discharge the Respondent of any responsibility for the content appearing on the website connected to the disputed domain name under its control (see section 3.5 of the WIPO Overview 3.0). This indicates that the disputed domain name is used to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant's WHOVILLE trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
Given the distinctive character of Complainant's WHOVILLE trademark and the fact that the disputed domain name is identical to this trademark, the Examiner finds that the Respondent must have had the Complainant's trademark in mind when registering the disputed domain name. Moreover, Examiner finds that it is difficult to imagine any future good faith use of the disputed domain name by the Respondent. Additionally, the use of a privacy service by the Respondent further indicates that the Respondent has purposely intended to avoid being notified of a UDRP proceeding filed against it, which further supports an inference of bad faith.
The Respondent did not file any response to contest the above. Therefore, the Examiner finds that the third element for the Complainant to obtain the suspension of a domain name under URS 1.2.6.3 has been proven.
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 name be SUSPENDED for the duration of the registration.
<whoville.online>
Flip Jan Claude Petillion, Examiner
Dated: October 13, 2020
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