DD IP Holder LLC v. Tom Lialios / Deadly Grounds Coffee
Claim Number: FA2005001896381
Complainant is DD IP Holder LLC (“Complainant”), represented by Steven M. Levy of FairWinds Partners LLC, United States. Respondent is Tom Lialios / Deadly Grounds Coffee (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <sickofdunkin.com> and <sickofdunkindonuts.com> registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 14, 2020; the Forum received payment on May 20, 2020.
On May 18, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <sickofdunkin.com> and <sickofdunkindonuts.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 May 26, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 15, 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@sickofdunkin.com, postmaster@sickofdunkindonuts.com. Also on May 26, 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 June 22, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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 names be transferred from Respondent to Complainant.
A. Complainant
i) Complainant, DD IP Holder LLC, is a franchised chain of coffee and baked goods shops. Complainant has rights in the DUNKIN’ and DUNKIN DONUTS marks based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 748,901, registered Apr. 30, 1963; Reg. No. 4,290,078, registered Feb. 12, 2013). Respondent’s <sickofdunkin.com> and <sickofdunkindonuts.com> domain names are confusingly similar to Complainant’s DUNKIN’ and DUNKIN’ DONUTS marks because they simply add the term “sick of” and the “.com” generic top-level domain (“gTLD”) to the marks.
ii) Respondent does not have rights or legitimate interests in the disputed domain names because Respondent is not commonly known by the disputed domain names. Additionally, Respondent does not use the disputed domains for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domains to redirect Internet users to its own website where it offers competing products.
iii) Respondent registered and uses the disputed domain names in bad faith. Respondent disrupts Complainant’s business and attempts to attract Internet users to its competing website for commercial gain. Additionally, Respondent failed to respond to communications sent by Complainant. Finally, Respondent had actual knowledge of Complainant’s rights in the DUNKIN’ and DUNKIN’ DONUTS marks.
B. Respondent
Respondent did not submit a response.
1. The disputed domain name was registered on September 29, 2017.
2. Complainant has established rights in the DUNKIN’ and DUNKIN DONUTS marks based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 748,901, registered Apr. 30, 1963; Reg. No. 4,290,078, registered Feb. 12, 2013).
3. The resolving website of the disputed domain name diverts Internet users to Respondent’s own website where it offers products competitive with Complainant’s business.
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 asserts rights in the DUNKIN’ and DUNKIN DONUTS marks based upon registration with the USPTO (e.g., Reg. No. 748,901, registered Apr. 30, 1963; Reg. No. 4,290,078, registered Feb. 12, 2013). Registration of a mark with the USPTO is generally sufficient to establish rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Since Complainant provides evidence of registration of the DUNIKIN’ and DUNKIN’ DONUTS marks with the USPTO, the Panel finds that Complainant has rights in the marks under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain names are confusingly similar to Complainant’s DUNKIN’ and DUNKIN’ DONUTS marks because they simply add the term “sick of” and the “.com” gTLD to the marks. Addition of generic/descriptive terms and a gTLD is generally insufficient to overcome confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); see also Chevron Intellectual Property LLC v. andrew toro, FA 1487014 (Forum Apr. 11, 2013) (finding, “The affixation of negative terms does not defeat a finding of confusing similarity” where the respondent registered the domain <chevronthinkswerestupid.com>). Thus, the Panel finds that the disputed domain names are confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent does not have rights or legitimate interests in the disputed domain names since Respondent is not commonly known by the disputed domain names. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by a domain name under Policy ¶ 4(a)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). The WHOIS information of record notes “Tom Lialios / Deadly Grounds Coffee” as the registrant of the disputed domain names. See Compl. Ex. B. Thus, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent does not use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use, but rather redirects Internet users to its own website where it offers competing products. Use of a confusingly similar domain name to provide products or services directly competitive with a complainant’s business is not a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii). See Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant provides copies of selected pages from Respondent’s webpage and notes that Respondent offers coffee for sale, which is directly competitive with Complainant’s business. Therefore, the Panel agrees that Respondent does not use the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant contends that Respondent registered and uses the disputed domain names in bad faith by redirecting Internet users to Respondent’s webpage where it offers products in competition with Complainant. Use of a disputed domain name to offer competing goods or services can be evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum January 9, 2018) (finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)).; see also Hewlett-Packard Co. v. Ali, FA 353151 (Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). The Panel recalls that Complainant provides screenshots of Respondent’s website which diverts potential customers of Complainant’s business to Respondent’s website and offers products that compete with Complainant’s business. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶¶ 4(b)(iii) and/or (iv).
Complainant also claims that Respondent had actual knowledge of Complainant’s rights in the DUNKIN’ and DUNKIN’ DONUTS marks. Actual knowledge of a complainant’s rights in a mark may be shown by evidence such as the fame of the mark and the use the respondent makes of the mark under Policy ¶ 4(a)(iii). See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.”). The Panel infers, due to the notoriety of Complainant’s marks and the manner of use of the disputed domain names that Respondent had actual knowledge of Complainant’s marks before registering the disputed domain names, and finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sickofdunkin.com> and <sickofdunkindonuts.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: June 23, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page