WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr. Seuss Enterprises, L.P. v. Chris Saunders dba New Ventures
Case No. D2003-0409
1. The Parties
Complainant is Dr. Seuss Enterprises, L.P., La Jolla, California, United States of America, represented by Seyfarth Shaw of United States of America.
Respondent is Chris Saunders dba New Ventures, Basseterre, Saint Kitts and Nevis.
2. The Domain Name and Registrar
The disputed domain name is . The registrar is Computer Service Langenbach GmbH dba J.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 28, 2003. On May 28, 2003, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba J a request for registrar verification in connection with the domain name at issue. On May 30, 2003, J transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing and technical contact.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 5, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was June 25, 2003. On June 26, 2003, Complainant submitted an amendment to the Complaint. The Amendment was sent to Respondent by e-mail and courier on that day. The due date for Response was extended to July 16, 2003. Respondent did not submit any response. Accordingly, the Center notified Respondent�s default on July 17, 2003.
The Center appointed Joan Clark as the sole panelist in this matter on July 25, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complaint states that Complainant, Dr. Seuss Enterprises, L.P., owns the trademarks and service marks "THE CAT IN THE HAT", "CAT IN THE HAT" and variations thereof, referred to as the "CAT IN THE HAT Marks". The Complaint further states that the CAT IN THE HAT Marks were first used in 1957, in connection with a series of books authored by Theodore Geisel or Dr. Seuss, and a second series published in 1958. The Complaint states that these books are world-famous and that its common law rights in and to the CAT IN THE HAT Marks accrued no later than 1958.
In addition to its common law rights in the CAT IN THE HAT Marks, Complainant owns several United States registrations of its CAT IN THE HAT Marks, including CAT IN THE HAT registered October 15, 2002, for entertainment services including live children's interactive television shows; CAT IN THE HAT registered June 1, 1999, for clothing articles and apparel including T-shirts; THE CAT IN THE HAT's learning library registered May 16, 2000, for typed drawing; and CAT IN THE HAT registered January 29, 1998, for typed drawing.
The Complaint states that Complainant has continuously used its CAT IN THE HAT Marks on and in connection with the numerous goods and services identified in the registrations since at least as early as 1993. Further, the Complaint states that the CAT IN THE HAT Marks have become well-known in the United States and throughout the world.
The Complaint also states that at the time of Dr. Seuss' death in 1991, the book, THE CAT IN THE HAT, written in 1957, along with forty-five other children's books by Dr. Seuss, had sold more than 200 million copies, that these books have been translated into fifteen different languages, and that the "CAT IN THE HAT" character has become one of the world's most popular licensed properties.
According to the records of the registrar J for the domain name in dispute, , this domain name was created on April 11, 2002, and is due to expire April 11, 2004. Its owner or registrant is Chris Saunders, Respondent herein.
Evidence produced by Complainant reveals that on October 9, 2002, Mr. Kenneth Wilton of the law firm Seafarth Shaw representing Complainant Dr. Seuss Enterprises, L.P. forwarded a letter by e-mail to Mr. Chris Saunders, advising that Dr. Seuss Enterprises, L.P. was the owner of all right, title and interest in and to the CAT IN THE HAT character and mark. Mr. Wilton, while acknowledging that Respondent had not yet linked the domain name to an active website, stated that neither the registration nor any future active use of the domain name had been authorized by his client and that registration and use of the domain name were an infringement of his client's rights and requested that Mr. Saunders agree to transfer the domain name to Complainant herein.
He further stated that if Mr. Saunders agreed immediately to transfer the domain name and take the steps necessary to complete the transfer, Complainant would be willing to reimburse him for his registration fee and recommend that no further action be taken with regard to this matter.
By letter dated the following day October 10, 2002, forwarded by e-mail to Mr. Wilton, Mr. Saunders declared that he registered the domain name to build a website for the viewing and using by his nephews due to their enjoyment of the CAT IN THE HAT cartoons and books. He apologized for not taking into account any "copyright or legal infringements" by so doing. In his letter, Mr. Saunders also stated he was prepared to transfer the domain name immediately, adding that if it were possible it would be preferable if he could exchange the domain name for any CAT IN THE HAT paraphernalia for his nephews (e.g. book, T-shirt, etc.). He concluded that, if this were unacceptable, then reimbursement of his registration fee would be "fine" and added that his intentions were not to infringe Complainant's copyrights.
Further correspondence between Mr. Wilton and Mr. Saunders ensued in which Mr. Wilton enquired as to the ages of Mr. Saunders' nephews, in the hope he could convince Complainant to forward copies of the books and T-shirts to Respondent. To this, Mr. Saunders replied that his nephews were aged five and seven, and gave an address in Ontario where the merchandise could be sent. At the same time, the parties discussed how the transfer of the domain name could be effected, Mr. Saunders declaring, in his e-mail of October 17, 2002, that he awaited Mr. Wilton's instructions to begin the process of transferring the domain name.
In a subsequent letter of November 19, 2002, forwarded by Mr. Wilton by e-mail to Mr. Saunders, Mr. Wilton advised that he had been provided with some merchandise and two shirts, "that should make your nephews happy". However he continued he was unable to decipher how one transfers a domain name on J. In the same letter, Mr. Wilton asked Mr. Saunders if he were willing to transfer the domain name to another registrar, so that the parties could complete the transfer.
The next letter in the correspondence provided by Complainant is a letter sent by Mr. Wilton by e-mail to Mr. Saunders dated November 26, 2002, explaining that a proposed transfer had been denied by the registrar J, but suggesting a method which he admitted was "not an easy process" by which the domain name could be transferred. Mr. Wilton stated this was "by far the most cumbersome process" he could imagine and suggested another option would be for Mr. Saunders to provide him with his login and password for J.
The next letter in the series of correspondence between the parties is one dated December 26, 2002, sent to Mr. Saunders by Mr. Wilton, stating that he had received a form from the registrar J that would seem to have the effect of allowing the transfer. He enquired as to where he could send the form in order that Mr. Saunders could sign it and return it to Mr. Wilton. In the alternative, he suggested that Mr. Saunders print out the attached form and mail it to Mr. Wilton.
The material produced by Complainant reveals no further correspondence between the parties. Since there is no Response from Respondent nothing has been produced on his behalf. The evidence is not clear as to whether Complainant's lawyer in fact forwarded the merchandise and T-shirts requested to the address provided by Mr. Saunders in return for the transfer of the domain name, Mr. Saunders having agreed that such transfer should take place.
5. Parties� Contentions
A. Complainant
Complainant urges that the domain name in dispute is identical or confusingly similar to Complainant's marks, that Respondent has no rights or legitimate interests in respect of the domain name, and that the domain name has been registered and is being used in bad faith. As a result, the Complaint requests that the domain name be transferred to Complainant.
B. Respondent
Respondent did not reply to Complainant�s contentions. However, the Panel has noted that Respondent did not object, according to the correspondence submitted by Complainant, and in fact agreed to the transfer of the domain name to Complainant, subject either to reimbursement of the registration fee or provision of some "merchandise (books) and T-shirts" for Respondent's young nephews.
6. Discussion and Findings
Rule 15(a) of the Rules provides that a complaint shall be decided on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy states that in order to be successful, Complainant has the burden of proving that all three elements are present in the Complaint, namely:
(i) that the domain name is identical or confusingly similar to Complainant's trademark or service mark; and
(ii) that Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of registration and use of a domain name in bad faith but are not limitative.
Paragraph 4(c) of the Policy sets out three illustrative circumstances each of which, if proven, shall demonstrate Respondent's rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) above.
A. Identical or Confusingly Similar
The Panel has no hesitation in finding that the domain name in dispute, , is virtually identical and certainly confusingly similar to several trademarks of Complainant. The only differences are the fact that, in the domain name, the text preceding ".com" has no spaces between the words and, furthermore, the addition of ".com" itself of course does not appear in Complainant's trademarks. As several decisions have already noted, the suffix ".com" or another suffix indicating the domain name level is not sufficient to avoid confusion. The Panel also finds that the mere running together of the words "the cat in the hat", without spaces between the words, being itself the normal way in which a domain name is written, is insufficient to avoid confusion.
Accordingly, the Panel finds that the domain name in dispute is virtually identical and certainly confusingly similar to Complainant's trademarks, and the condition of element (A) has been met.
B. Rights or Legitimate Interests
The Panel further concludes that Respondent has no rights or legitimate interests in respect of the domain name. Respondent has admitted in the correspondence produced by Complainant that he created the domain name for the use of his young nephews, and stated his intentions were not to infringe the Complainant�s "copyrights" and that he was prepared to transfer the domain name to Complainant. In the Panel�s view these statements constitute an implicit admission by Respondent that he had no rights or legitimate interests in the domain name.
Furthermore, with reference to the examples set forth in paragraph 4(c) of the Policy, Respondent has not made any use or demonstrable preparation to use the domain name in connection with the bona fide offering of goods or services. He has not been commonly known by the domain name, and he has not made a legitimate non-commercial or fair use of the domain name. There is in fact no evidence that Respondent has made any use of the domain name other than to register it.
The Panel concludes that Respondent has no rights or legitimate interests in respect of the domain name, and the condition of element (B) has been satisfied.
C. Registered and Used in Bad Faith
The third criterion relates to bad faith. Four examples are given in paragraph 4(b) of the Policy as evidence of the registration and use of a domain name in bad faith. These examples, however, are not limitative.
The first example concerns the registration or acquisition of the domain name primarily for the purpose of selling, renting or otherwise transferring it to Complainant or its competitor for valuable consideration in excess of the registrant's documented out-of-pocket costs directly related to the domain name.
The Complainant in this case argues that Respondent "first offered to transfer the domain name at issue in exchange for merchandise in excess of the cost of registration". This is not consistent with the evidence. First of all, there is no indication of the cost of registration, secondly Respondent agreed to transfer the domain name in return for some books and a couple of T-shirts (clearly not of an exorbitant value), and thirdly, if that were not acceptable, Respondent agreed to accept his registration fee instead.
The several months' delay while the parties were trying to effect transfer of the domain name would not seem to be the fault of Respondent initially, although the last correspondence is an e-mail letter from Mr. Wilton to Respondent suggesting a way in which the domain name might be transferred, to which Respondent does not appear to have replied.
The fact that Respondent declared he was willing to transfer the domain name in return for either his registration fee or some books and T-shirts for his young nephews is not consistent with an intention of Respondent to register the domain name primarily for the purpose of selling it for a valuable consideration in excess of the cost of registration.
The other examples in paragraph 4(b) do not apply to Respondent: there is no evidence that he registered the domain name in order to prevent Complainant from reflecting the mark in a corresponding domain name, having engaged in a pattern of such conduct; there is no indication he registered the domain name primarily for the purpose of disrupting Complainant's business; and there is no indication that, by using the domain name, he intentionally attempted to attract for commercial gain internet users to his website by creating a likelihood of confusion with Complainant's marks. There is no evidence that Respondent made any use of the domain name other than to register it.
As noted, the examples given in paragraph 4(b) are not limitative. Respondent has acknowledged in his letter of October 10, 2002:
"The reason I have registered thecatinthehat domain name was to build a website for the viewing and using by my nephews due to their enjoyment of the cat in the hat cartoons and books. I apologize for not taking into account any copyright or legal infringement by doing this.
I am prepared to transfer the domain name immediately. If it is possible it would be preferabl[e] if I could exchange the domain name for any cat in the hat paraphernalia for my nephews (e.g. book, t-shirt, etc.). If this {is} unacceptable reimbursement of my registration fee would [be] fine.
My intentions were not [to] infringe on your clients copyrights and I once again apologize if this has caused you or your client any und[ue] concern."
It is clear from the foregoing that Respondent knew of "the cat in the hat cartoons and books". They were sufficiently popular or well-known for them to be a source of interest to his nephews, so much so that Respondent was prepared to create a website for this purpose. One might suppose that Respondent intended to place the characters in the Cat in the Hat books on the website, to be viewed by his young nephews. There is no indication that he did this.
The difference between the examples given under paragraph 4(b) of the Policy and the conduct of Respondent in this case is that the evidence does not show any intention or mens rea of Respondent to act in a way damaging to Complainant.
In this case, Respondent's lack of good faith in registering the domain name stems from his prior knowledge that The Cat In The Hat was known in cartoons and books and his implicit admission that he did not own the rights to such a name evidenced by his apology for not taking account of "any copyright or legal infringement" and his declared readiness to transfer the domain name to Complainant.
Because of Respondent's prior knowledge of Complainant's trademark and his implicit admission that he had no rights or legitimate interest in the domain name, the Panel concludes that the domain name in dispute was registered in bad faith.
It remains to consider whether the conduct of Respondent following registration of the domain name in bad faith should be viewed as use of the domain name in bad faith. According to the evidence Respondent did not create a website and made no active use of the domain name since its registration on April 11, 2002, until Mr. Wilton�s letter to Respondent on November 9, 2002, seven months later. In his response to Mr. Wilton Respondent agreed to the transfer of the domain name to Complainant but the transfer was not carried out.
Paragraph 4(b) of the Policy lists, without limitation, four circumstances which, if present, "shall be evidence of the registration and use of the domain name in bad faith." These examples recognize that a passive holding of a domain name registration can, in certain circumstances, constitute using the domain name in bad faith. The concept of a domain name being used in bad faith is not limited to positive action. (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; CUX, Inc. v. Domain Names Available, WIPO Case No. D2000-0972).
In the present case the Panel concludes that Respondent�s passive holding of the domain name following its registration in bad faith constitutes a use in bad faith of the domain name, preventing as it does the legitimate owner from registering the same domain name.
Accordingly, the Panel has found that the condition of element (C), registration and use in bad faith, has been satisfied.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4 of the Policy and 15 of the Rules, the Panel orders that the domain name, , be transferred to Complainant.
Joan Clark
Sole Panelist
Dated: August 5, 2003
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