WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

CCA and B, LLC v. Domain Administrator, Liquid Web LLC

Case No. D2021-1528

1. The Parties

Complainant is CCA and B, LLC, United States of America (“United States” or “U.S.” or “USA”), represented by The Sladkus Law Group, United States.

Respondent is Domain Administrator, Liquid Web LLC, United States.

2. The Domain Name and Registrar

The disputed domain name <elf-on-the-shelf.com> (the “Domain Name”) is registered with eNom, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2021. On May 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. That same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 26, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on May 26, 2021.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 17, 2021. The Center received an email communication from Respondent on May 28, 2021. The Center notified the commencement of Panel appointment process on July 1, 2021.

The Center appointed Harrie R. Samaras as the sole panelist in this matter on July 8, 2021. 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

Complainant is a family owned and operated publishing company, founded by Carol Aebersold with her daughters, Chanda Bell and Christa Pitts. In 2005, Aebersold and Bell coauthored a children’s book entitled “The Elf on the Shelf: A Christmas Tradition.” Since that time, Complainant has continuously published, marketed, and sold this book alongside a line of Christmas elf dolls, and related products. Complainant maintains registrations for its trademarks and copyrights in more than 25 nations throughout the world including its first registration, U.S. Trademark Registration No. 3,533,459, issued on November 18, 2008 for THE ELF ON THE SHELF Mark (the “Mark”).

Complainant has continuously used the Mark in commerce throughout the United States and the world since October 1, 2005 in connection with the manufacture, distribution, sale, marketing, and advertising of its Christmas Scout Elf dolls, doll clothing and accessories, children’s book, and other activity books. It has authorized distributors based in several countries, offering these products for sale worldwide online, and including sales in retail stores in Australia, Ireland, North America, and the United Kingdom. Complainant’s products, and the officially licensed products, are sold in more than 10,000 stores throughout North America and online worldwide.

“The Elf on the Shelf: A Christmas Tradition” book has appeared annually on USA Today, Publisher’s Weekly and The Wall Street Journal’s Best-Selling Books lists as early as 2009. Complainant also maintains a large social media presence (e.g., official Facebook, Google, Twitter, Instagram, and Pinterest pages). In the past several years, the brand expanded its catalogue of titles with “The Elf on the Shelf: A Birthday Tradition,” as well as with THE ELF ON THE SHELF branded book “Elf Pets: A Reindeer Tradition” and the motion picture “An Elf’s Story” available on DVD and Blu-Ray. Clothing for the Christmas Scout Elf doll is sold under the brand THE ELF ON THE SHELF Claus Couture Collection, and Complainant also offers more than 100 different licensed products using THE ELF ON THE SHELF Mark, including personal care products, jewelry, and clothing.

Additionally, Complainant owns the domain name <elfontheshelf.com> which hosts Complainant’s website, allows consumers to purchase THE ELF ON THE SHELF products, and also provides information and a blog.

The Domain Name was registered November 10, 2020. The Domain Name resolves to a landing page depicting Complainant’s copyrighted Scout Elf dolls and a few short holiday themed phrases.

Complainant’s undersigned counsel sent a cease and desist letter to the Registrar and to Respondent through the online WhoIs contact form provided by the Registrar, and attempted to follow up with both to effect a voluntary transfer of the Domain Name. A person from Liquid Web replied to Complainant’s counsel and advised him to file a complaint under the Policy. When Complainant’s counsel asked for the Domain Name registrant‘s name and contact information to request transfer of the Domain Name, Liquid Web advised that “It needs to be addressed with the registrar, not the registrant.”

5. Parties’ Contentions

A. Complainant

The Mark is easily recognizable within the Domain Name. The Domain Name <elf-on-the-shelf.com> incorporates the substantial majority of THE ELF ON THE SHELF Mark, except the first “the”. And although the Domain Name includes the term “.com”, the addition of this nondistinctive term does not negate the confusing similarity of the Domain Name. The Domain Name is likely to attract Internet users to it because of Respondent’s use of Complainant’s THE ELF ON THE SHELF Mark in the Domain Name. Such use is likely to mislead a consumer into believing that the Domain Name is authorized by or associated with Complainant when it is not.

Complainant did not authorize Respondent (or anyone else) to register the Domain Name or otherwise use its Mark in any manner. Moreover, Complainant has no affiliation, association, or connection, past or present, with Respondent. Further, on information and belief, Respondent did not make any preparations to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services before receiving notice of this dispute. Indeed, the Domain Name was registered November 10, 2020, however, as of the date of this filing, the Domain Name is comprised of only a landing page which depicts Complainant’s copyrighted Scout Elf dolls (without Complainant’s prior authorization in violation of its rights under the U.S. Copyright Act), and a few short holiday themed phrases.

On information and belief, Respondent has not been commonly known by the Domain Name. Complainant is the sole owner of the Mark and has never encountered another person or company validly claiming to have rights in the Mark. Finally, Respondent likely intends to commercially benefit from the Domain Name by diverting consumers from Complainant. The Domain Name conveys a false association or connection with Complainant and, on information and belief, Respondent is likely warehousing it for the holiday season to approach when it will likely begin selling either counterfeit imitations of Complainant’s THE ELF ON THE SHELF brand products or low-quality alternatives intended to compete with Complainant’s products. Each holiday season Complainant faces similar scenarios, as infringers attempt to capitalize on the goodwill associated with Complainant’s registered marks during the Christmas season.

Respondent has no rights or legitimate interests in the Domain Name, which incorporates the Mark. The Domain Name improperly leverages the goodwill associated with Complainant’s well-known Mark to attract Internet users and divert them from Complainant’s own website and THE ELF ON THE SHELF branded goods. Under these circumstances, there is no conceivable good faith use of the Mark or the Domain Name by Respondent. At the very least, Respondent knew or should have known before registering the Domain Name that it was either identical or confusingly similar to the Mark because of the notoriety of Complainant’s goods sold under the Mark.

Further, a combination of factors indicates bad faith use here. First, Complainant’s Mark is extremely well known worldwide. Next, Respondent’s true identity is concealed by its privacy service. Notably, before commencing this proceeding, the undersigned counsel attempted to contact both the registrant and the Registrar to notify them of Complainant’s rights in the Mark and request voluntary transfer of the Domain Name as well as identification of the anonymous registrant using both email and the fillable online forms. Finally, the Domain Name is being passively held and resolves only to a single landing page bearing Complainant’s Mark and an image of its copyrighted Scout Elf dolls. In light of the foregoing, Respondent registered and has used the Domain Name in bad faith.

B. Respondent

Respondent did not reply to the merits of Complainant’s contentions. On May 28, 2021, Respondent wrote to the Center, stating: “Thank you for your email. Liquid Web will comply with whatever judgment/ruling in this case. Is there anything additional/separate that we need to do outside of that?”

6. Discussion and Findings

A. Identical or Confusingly Similar

Based on Complainant’s U.S. Trademark Registration No. 3,533,459, issued on November 18, 2008, for THE ELF ON THE SHELF Mark, the Panel concludes that Complainant has rights in the Mark.

The Panel also finds that the Domain Name is confusingly similar to the Mark. The Domain Name <elf-on-the-shelf.com> incorporates the entirety of Complainant’s THE ELF ON THE SHELF Mark but for the first “the.” Where a domain name incorporates the dominant portion of a complainant’s mark, this is sufficient to establish that the domain name is identical or confusingly similar for purposes of the Policy. See Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105. Not including the word “the” in the Mark does not prevent a finding of confusing similarity.

Further, the Top-Level Domain (“TLD”) of a domain name is generally disregarded when determining whether a domain name is identical or confusingly similar for purposes of the Policy. See, e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.

For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

It is uncontested that Complainant has not licensed or otherwise authorized Respondent or anyone else to register the Domain Name. Likewise, Complainant maintains that it does not have any affiliation, association, or connection, past or present, with Respondent. And Complainant alleges that Respondent has not been commonly known by the Domain Name. Complainant maintains that it is the sole owner of the Mark and has never encountered another person or company validly claiming to have rights in the Mark.

Complainant further claims that Respondent did not make any preparations to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services before receiving notice of this dispute. It points out that the Domain Name was registered November 10, 2020, however when this proceeding commenced, the Domain Name resolved to a landing page depicting Complainant’s copyrighted Scout Elf dolls (without authorization to use them) and a few short holiday themed phrases. Complainant asserts that “[w]here the ‘disputed domain name currently resolves to an inactive website’ and ‘[n]othing in the record indicates that Respondent is using or seeking to use the disputed domain name in connection with the sale of bona fide goods or services,’ Complainant has established a prima facie case of Respondent’s lack of rights or legitimate interests in the disputed domain name.’” CCA&B, LLC, v. Contact Privacy Inc. Customer 1243158618 / Chris Cunningham, WIPO Case No. D2018-2302.

Finally, Complainant alleges that Respondent is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain because it believes that Respondent is likely warehousing the Domain Name waiting for the holiday season to approach and then it will likely begin selling either counterfeit imitations of Complainant’s THE ELF ON THE SHELF branded products or low-quality alternatives intended to compete with Complainant’s products.

Insofar as Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests to the Domain Name (Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261), this shifts the burden to Respondent to show evidence that it has rights or legitimate interests in the Domain Name. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. Respondent has failed to adduce any evidence to shoulder its burden. Thus, Complainant’s facts, without contrary evidence from Respondent, are sufficient to permit a finding in Complainant’s favor on this issue. Alcoholics Anonymous World Services, Inc. v. Lauren Raymond, WIPO Case No. D2000-0007.

The Panel therefore holds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Respondent registered the Domain Name November 10, 2020, many years after Complainant began using the Mark and obtained its first trademark registration in 2008. Given Complainant’s widespread and long-standing use of the Mark worldwide, the Panel finds it is highly unlikely Respondent was unaware of the Mark when it registered the Domain Name. Respondent’s bad faith registration is also evidenced by the fact that Respondent has not shown any rights or legitimate interests in the Domain Name and the Domain Name: (1) was formed by simply removing the word “the” from Complainant’s Mark; (2) is exactly the same as Complainant’s registered domain name <elfontheshelf.com> with the addition of hyphens; (3) is confusingly similar to Complainant’s Mark; and (4) resolves to a webpage showing Complainant’s copyrighted Elf figures. On the uncontroverted evidence, the Panel finds that Respondent registered the Domain Name in bad faith.

There is also no evidence Respondent has actually used or contemplated a good faith use of the Domain Name. Respondent is using the Domain Name that incorporates Complainant’s well-known Mark for a landing page depicting Complainant’s copyrighted Scout Elf dolls and a few short holiday themed phrases. There is no plausible reason for Respondent’s selection of a confusingly similar Domain Name in which Respondent has no rights or legitimate interests other than as a deliberate attempt to profit unfairly from confusion with the Mark. See, Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273 (“the incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith”).

For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <elf-on-the-shelf.com> be transferred to Complainant.

Harrie R. Samaras
Sole Panelist
Date: July 22, 2021