DD IP Holder LLC v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2004001893418
Complainant is DD IP Holder LLC (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dunkindpnuts.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret) as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 23, 2020; the Forum received payment on April 23, 2020.
On April 27, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <dunkindpnuts.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 28, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 18, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@dunkindpnuts.com. Also on April 28, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 22, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, DD IP Holder LLC, is a franchised chain of coffee and baked goods shops. Complainant has rights in the DUNKIN’ DONUTS mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 748,981, registered Apr. 30, 1963). Respondent’s <dunkindpnuts.com> domain name is confusingly similar to Complainant’s DUNKIN’ DONUTS mark because it is a minor misspelling of the mark that simply substitutes a “p” for the “o” in the word “donuts” and adds a generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <dunkindpnuts.com> domain name. Respondent is not commonly known by Complainant’s marks or the disputed domain name. Further, Respondent fails to use the disputed domain name for any bona fide offering of goods or services, or for any legitimate noncommercial or fair use. Instead, Respondent uses the domain to redirect users to a website for purposes of installing malware on users’ computers.
Respondent registered and used the <dunkindpnuts.com> domain name in bad faith. Respondent has displayed a long-standing pattern of bad faith registration of infringing domain names. Additionally, Respondent uses the disputed domain name to redirect Internet users to a page that attempts to install malware on users’ computers. Finally, Respondent had actual notice of Complainant’s rights in the DUNKIN’ DONUTS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, DD IP Holder LLC, is a franchised chain of coffee and baked goods shops. Complainant has rights in the DUNKIN’ DONUTS mark based on registration with the USPTO (e.g. Reg. No. 748,981, registered Apr. 30, 1963). Respondent’s <dunkindpnuts.com> domain name is confusingly similar to Complainant’s DUNKIN’ DONUTS mark.
Respondent registered the <dunkindpnuts.com> domain name on January 27, 2020.
Respondent does not have rights or legitimate interests in the <dunkindpnuts.com> domain name. Respondent uses the domain to redirect users to a website for purposes of installing malware on users’ computers.
Respondent registered and used the <dunkindpnuts.com> domain name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the DUNKIN’ DONUTS mark based on registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in that mark under Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).
Respondent’s <dunkindpnuts.com> domain name is confusingly similar to Complainant’s DUNKIN’ DONUTS mark because it is a minor misspelling of the mark that simply substitutes a “p” for the “o” in the word “donuts” and adds a gTLD.
Respondent does not have rights or legitimate interests in the <dunkindpnuts.com> domain name under Policy ¶ 4(c)(ii). Respondent is not commonly known by Complainant’s marks or the disputed domain name. Evidence that a registrant name that differs greatly from the disputed domain name may be used to show that respondent is not commonly known by the domain name per Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). The WHOIS information of record identifies the registrant of the disputed domain name as “Carolina Rodrigues / Fundacion Comercio Electronico.” Therefore, the Panel finds that Respondent lacks rights or legitimate interests in the domain name
Respondent fails to use the <dunkindpnuts.com> domain name for any bona fide offering of goods or services, or for any legitimate noncommercial or fair use. Instead, Respondent uses the domain to redirect users to a website for purposes of installing malware on users’ computers. See Google Inc. v. Gridasov, FA 474816 (Forum July 5, 2005) (finding that the respondent’s use of a disputed domain name “that attempts to download malicious computer software into the computers of those who visit the website . . . [which] may annoy or harm the users in some way . . . is harmful to Complainant as the users may assume that Complainant has some affiliation with the harmful content. Such use of a website that is presumably intended to jeopardize the goodwill Complainant has created in its mark is not, therefore, a use in connection with a bona fide offering of goods or services or a legitimate or fair use of the domain names pursuant to Policy ¶¶ 4(c)(i) or (iii).”).
Respondent registered and used the <dunkindpnuts.com> domain name in bad faith. Respondent has displayed a long-standing pattern of bad faith registration of infringing domain names. A history of UDRP decisions against a respondent may act as evidence of bad faith under Policy ¶ 4(b)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). Complainant notes that over 200 UDRP cases have been successfully been brought against Respondent and provides examples of these decisions. Therefore, the Panel finds bad faith pursuant to Policy ¶ 4(b)(ii).
Additionally, Respondent’s use of the <dunkindpnuts.com> domain name to install malware on users’ computers shows bad faith under Policy ¶ 4(a)(iii). See Asbury Communities, Inc. v. Tiffany Hedges, FA 1785054 (Forum June 18, 2018) (“The Panel here finds that Respondent [installation of malware] further support the conclusion that Respondent registered and used the <asburymethodistvillage.com> domain name in bad faith under Policy ¶ 4(a)(iii)”). Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith
Finally, Respondent had actual notice of Complainant’s rights in the DUNKIN’ DONUTS mark prior to registration of the domain name. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”); see also InfoSpace, Inc. v. Greiner, FA 227653 (Forum Mar. 8, 2004) (“Respondent’s domain name is a simple and popular variation of a trademark commonly used by typosquatters – the addition of the “www” prefix to a known trademark, in this case the DOGPILE mark. Therefore, the Panel finds bad faith registration and use under Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dunkindpnuts.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret), Panelist
Dated: June 7, 2020
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