Dr. Seuss Enterprises, L.P. v. Domains By Proxy, LLC et al.
Claim Number: FA2201001979992
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: Registration Private / Domains By Proxy, LLC of Tempe, Arizona, US.
Respondent Representative: «cFirstName» «cMiddle» «cLastName»
REGISTRIES and REGISTRARS
Registries: Charleston Road Registry Inc.
Registrars: GoDaddy.com, LLC
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Examiner in this proceeding.
Antonina Pakharenko-Anderson, as Examiner.
Complainant submitted: January 11, 2022
Commencement: January 12, 2022
Default Date: January 27, 2022
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.
Procedural Findings:
This complaint and findings relate to the single domain
<lorax.app>
No findings regarding multiple complainants or multiple respondents are made.
Findings of Fact
Complainant, Dr. Seuss Enterprises, L.P. (“DSE”) is a renowned global children’s entertainment brand. DSE is the creator of the iconic children’s book The Lorax, featuring the character “The Lorax” along with many other well known
works and associated characters. Moreover, DSE owns a number of trademark registrations for the mark LORAX in the United States. Complainant operates its official Internet web site at <Seussville.com> and has information about the character “The Lorax” and the book The Lorax https://www.seussville.com/characters/thelorax/.
Disputed domain name was registered on 2022-01-06.
The Respondent did not submit a Response.
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.
Identical or confusingly similar (URS 1.2.6.1.)
The Complainant has established that it has rights in the trademark LORAX at least since 2017. The Complainant trademark, therefore, was registered well before the registration of the disputed domain name (2022-01-06). Complainant has established worldwide rights in its DSE Mark. The domain name <lorax.app> is essentially identical to Complainant`s LORAX mark followed by the top level domain .app, which aggravates the likelihood of confusion because it would be the logical location of an online application for goods bearing the LORAX Mark (See 3M Company v. Kabir S Rawat, FA 1725079 (Forum May 9, 2017); Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other).
Therefore, the Examiner believes that the disputed domain name is identical to the Complainant’s trademark and consequently the Examiner finds that requirement set forth under Paragraph 1.2.6.1. of the URS Procedure has been satisfied.
No rights or legitimate interests (URS 1.2.6.2.)
The Complainant provided prima facie evidence that the Respondent does not have rights or legitimate interests in respect of the disputed domain name as it was never authorized to use it by the Complainant, the latter has not licensed or otherwise permitted Respondent to use the LORAX Mark or to apply for any domain name incorporating the DSE LORAX Mark. Moreover, because the term “LORAX” is a coined name that could not have been coincidentally adopted by
Respondent and Complainant owns exclusive rights in the DSE LORAX Mark and federal registrations for the DSE LORAX Mark, Respondent cannot establish legitimate rights in the Domain Name (See Burberry Limited v. Domains By Proxy, LLC, Case No. FA1609001694006 (Forum 2016) (lack of legitimate rights found where “Complainant has not granted any license or consent, express or implied, to use the BURBERRY Marks in a domain name”).
The Respondent, in the absence of any response, has not shown any facts or elements to justify rights or legitimate interests in the disputed domain name.
Based on the above, the Examiner finds that the Respondent lacks any rights or legitimate interests with respect to the disputed domain names as per the requirement set forth under Paragraph 1.2.6.2. of the URS Procedure.
Bad faith registration and use (URS 1.2.6.3.)
Complainant uses in commerce and owns the distinctive trademark LORAX. Since as early as 1971, Complainant and its predecessors-in-interest have continuously used the LORAX Mark in commerce and invested significant amounts of time, money, and effort in advertising and promoting the LORAX Mark. LORAX advertisements are seen and heard around the world. Complainant regularly licenses the LORAX Mark for use in connection with various goods and services. The LORAX Mark is easily recognizable to the public as originating from Complainant. As a result, the LORAX Mark and the goodwill associated therewith are of inestimable value to Complainant.
Complainant operates its official Internet web site at <Seussville.com> and has information about the character “TheLorax” and the book The Lorax at https://www.seussville.com/characters/thelorax/.
As confirmed by WIPO Overview 3.0 the mere registration of a domain name that is identical or confusingly similar to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith (par. 3.1.4).
The Respondent registered the disputed domain name years after the registration and use of the Complainant’s LORAX trademark. In consideration of the reputation achieved by such mark, it is clear that the Respondent was aware of the Complainant’s trademark when he registered the disputed domain name.
By creating confusion through its registration of a domain name wholly comprised of the DSE LORAX Mark, Respondent is attempting to disrupt the business of Complainant, which is the evidence of bad faith registration.
This finding leads to the obvious conclusion that the disputed domain name has been registered in bad faith.
Therefore, the Examiner finds that the requirement set forth under Paragraph 1.2.6.3. of the URS Procedure has been satisfied by the Complainant.
The Examiner finds that the Complaint was neither abusive nor contained material falsehoods.
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 names be SUSPENDED for the duration of the registration
<lorax.app>
Antonina Pakharenko-Anderson, Examiner
Dated: January 30, 2022
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