national arbitration forum

 

DECISION

 

Dunkin’ Brands, Inc. v. Paydues Inc / Domain Administrator

Claim Number: FA1209001461017

 

PARTIES

Complainant is Dunkin’ Brands, Inc. (“Complainant”), represented by Sheldon H. Klein of Gray, Plant, Mooty, Mooty & Bennett, P.A., Washington, D.C., USA.  Respondent is Paydues Inc / Domain Administrator (“Respondent”), New Mexico, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <dunkindonutsfranchise.net>, <dunkindonutsfranchise.org>, and <baskinrobbinsfranchise.net>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 31, 2012; the National Arbitration Forum received payment on September 4, 2012.

 

On September 5, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <dunkindonutsfranchise.net>, <dunkindonutsfranchise.org>, and <baskinrobbinsfranchise.net> 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 September 6, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 26, 2012 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@dunkindonutsfranchise.net, postmaster@dunkindonutsfranchise.org, and postmaster@baskinrobbinsfranchise.net.  Also on September 6, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On October 1, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant Dunkin’ Brands, Inc. is the parent company of the companies that franchise the famous DUNKIN’ DONUTS® restaurants and BASKIN-ROBBINS® ice creams shops. These brands, which are also used by and through franchisees/licensees, together comprise one of the most famous restaurant franchise systems in the world, with approximately 14,450 store locations worldwide – over 9,100 of which are located throughout the United States. Complainant is also the parent company of the companies that are the registrants and owners of record of the well-known marks DUNKIN’ DONUTS® and BASKIN-ROBBINS® and of the domain names <dunkindonuts.com>, <baskinrobbins.com>, <dunkinfranchising.com>, and others, which resolve to the official web sites for these franchises.[1]   Complainant is thus the beneficial owner of said marks and domain names, and all use of the marks inures to Complainant’s benefit.

 

Complainant’s marks are the subject of numerous registrations in the United States Patent and Trademark Office and worldwide.  Among those registrations are:

 

        DUNKIN’ DONUTS®  – U.S. Reg. No. 748,901;

 

        BASKIN-ROBBINS® – Reg. No.  1,371,672.

 

Complainant’s domain name <dunkindonuts.com> was registered on July 13, 1995; Complainant’s domain name <dunkinfranchising.com> was registered on December 10, 2004; and Complainant’s domain name <baskinrobbins.com> was registered on July 29, 1995.  Complainant operates web sites at www.dunkindonuts.com, www.dunkinfranchising.com, and www.baskinrobbins.com, through which it promotes and sells its goods and services under the marks DUNKIN’ DONUTS® and BASKIN-ROBBINS®. 

 

Respondent

 

Without any knowledge of, or authorization by, Complainant, on or about July 7, 2011, <dunkindonutsfranchise.net> and <baskinrobbinsfranchise.net> were registered in the name of Paydues Inc and, on or about April 13, 2011, <dunkindonutsfranchise.org> was also registered in the name of Paydues Inc.  Currently, the WHOIS records accessible via the website of the registrar of all three domain names, GoDaddy.com, LLC, at www.godaddy.com, continue to list “Paydues Inc” as the registrant of all three domain names.  However, Complainant has been advised that the registrar WHOIS records available to the National Arbitration Forum (“NAF”) currently reflect the following information for the registrant of <dunkindonutsfranchise.org>:

 

“Registrant Name: Domain Administrator

Registrant Organization: Paydues Inc”

Accordingly, upon the advice of NAF, the respondent in this action has been named “Paydues Inc / Domain Administrator,” which encompasses both Paydues Inc and Domain Administrator (hereinafter, collectively, “Respondent,”), and thus covers the registrant(s) of all three domain names which are the subject of this proceeding.

 

On information and belief, “Domain Administrator” is neither a person nor a legal entity. Paydues Inc does not appear to be a current registered business entity in any state.  The last known business registered under the name Paydues Inc has been inactive since 2007. The websites operated at the subject domains have a photograph and description of an individual named “Jason Rager.”  Rager is held out as the operator of the sites.  On information and belief, although Paydues Inc, an apparent non-entity, is the owner of record of the domain names at issue here, the true perpetrator of these acts is either Rager or one or more associates of his.  Since Paydues Inc (or Paydues Inc / Domain Administrator) is the registered owner of the domain names, we will continue to refer to Paydues Inc (“Respondent”) in this complaint as if it were an entity.

 

Respondent uses the domain names at issue for commercial gain by falsely marketing itself as being affiliated with Complainant.  Id.  Respondent displays the DUNKIN’ DONUTS® and BASKIN-ROBBINS® logos on the sites and implies that the sites and “Jason Rager” are affiliated with Complainant.  Id.  Respondent offers to provide information to consumers about Complainant’s franchises and states, inter alia,  that the websites are “Your Home for Dunkin Donuts Franchises,” and: “If you seek a rewarding opportunity and have the qualifications, drive and commitment to open your own franchise business, your first step is to apply today.  Submit your information below, and we will contact you once we receive your completed application.” Id.  The information submission page, however, does not go to Complainant but, rather, to Respondent or its associates.  This is false and deceptive, as neither Respondent nor Jason Rager is affiliated with Complainant, and neither are authorized or licensed to use Complainant’s trademarks.

 

Respondent does not provide any authorized goods or services related to Complainant or its marks.  Rather, Respondent collects information from unwary consumers who access the sites and provide their personal identification and contact information, including financial information.  On information and belief, Respondent also profits from sales of publications and software containing “franchise tips” to those consumers.  . On further information and belief, Respondent also provides consumers’ contact information to third parties, who then solicit those consumers to provide franchise and financial advice.  Id.  At least some of the consumers providing their personal information on these website forms are or will be under the mistaken impression that they are communicating with a representative of Complainant.

 

This is not the first time Respondent and/or Rager have infringed a franchisor’s registered trademarks.  Complainant is currently aware of 14 other UDRP actions that franchisors have brought against Respondent.  In each instance, the complainant trademark owner prevailed and the panel transferred the domains at issue.[2]   In each of these cases, Respondent misappropriated nationally known franchisors’ trademarks and logos and created websites similar in form and function to the ones at issue here.

 

Some of the other UDRP panels have found that Respondent operates a spamming and phishing scheme and sells the personal contact information that consumers provide to it to spammers.  See, e.g., PFIP, LLC v. Paydues Inc, FA1110001411907 (Nat. Arb. Forum Nov. 25, 2011) (finding that Respondent “intentionally uses [c]omplainant’s marks to lure Internet users into providing their personal information. . . . Likewise, it is evident that Respondent is engaged in a “phishing” scheme in order to profit from the misuse of Internet users’ personal information as alleged in the [c]omplaint.”); Famous Dave’s of America, Inc. v. Paydues Inc, NAF Case No. 1420191 (NAF Jan. 23, 2012) (“The Panel infers that Respondent derives a financial gain from the operation of its website such that Respondent seeks to realize a commercial gain from the confusion it creates as to Complainant’s affiliation with the disputed domain name. This type of business model has been held to violate the Policy and shows bad faith under ¶4(b)(iv).”).

 

Respondent and Rager have also been sued in United States federal court.  See Fastsigns Int’l Inc. v. Rager et al, No. 3:12-cv-00154 (N.D. Tex. 2012).  In that lawsuit, plaintiff Fastsigns has alleged that Respondent and Rager are using the FASTSIGNS marks “to divert Internet users from Fastsigns’ authorized website and to attract those Internet users to the website found at FastsignsFranchise.net, so Defendants can collect personal information from such users and attempt to sell them products unaffiliated with Fastsigns.”  Respondent has defaulted in the case.

Complainant is also aware of scores of other sites, not yet the subject of a UDRP complaint or other legal action, in which Respondent and/or Rager misappropriate franchisors’ trademarks.  A blog post at http://www.rdc3.com/blog/2011/09/04/jason-rager-franchise- spammer/ describes Respondent’s phishing and spamming activities and lists over 80 websites operated by Rager which are nearly identical to those at issue here but involve other franchisors.  Many of these sites are still live.

 

On July 25, 2012, counsel for Complainant sent Respondent an email requesting that it immediately cease and desist operating the sites and that it transfer the domains to Respondent. (Ex. M.)  Respondent failed to respond to the cease and desist email.  On the same date, Complainant sent the company hosting the domains a takedown notice.   The hosting company complied, which explains why the sites at issue are now dark.

 

Legal Grounds

 

[a.]      The Domain Names <dunkindonutsfranchise.net>,

<dunkindonutsfranchise.org>, and <baskinrobbinsfranchise.net> Are Confusingly Similar To Complainant’s Marks DUNKIN’ DONUTS® And BASKIN-ROBBINS®.

 

Respondent’s domain names <dunkindonutsfranchise.net>, <dunkindonutsfranchise.org>, and <baskinrobbinsfranchise.net> are confusingly similar to Complainant’s DUNKIN’ DONUTS® and BASKIN-ROBBINS® marks because they contain Complainant’s marks and simply add the descriptive word “franchise” to the end of them.  The mere addition of a generic or descriptive word to a registered mark does not negate the confusing similarity of Respondent’s domain names, pursuant to ICANN Policy ¶4(a)(i) and basic trademark law principles.  See, e.g., Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to complainant’s mark HARRY POTTER failed to distinguish the domain name from the mark); Google Inc. v. Amcore & Company For Sale Domains $250 or Best Offer, FA 0405000267534 (Nat. Arb. Forum, June 21, 2004) (the addition of generic or descriptive terms such as “pages” and “me” “does not negate the confusing similarity”); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”).  Clearly, Internet users trying to reach or learn more about Complainant are likely to be confused when visiting Respondent’s websites at www.dunkindonutsfranchise.net, www.dunkindonutsfranchise.org, and www.baskinrobbinsfranchise.net, because Respondent’s well-known marks are the only distinctive portions of each domain name and URL.

 

The services offered by Respondent via its pirate websites – assistance in evaluating and purchasing a DUNKIN’ DONUTS® or BASKIN-ROBBINS® franchise, are obviously closely related to the franchising services offered by Complainant under its marks for many years.  This factor strongly supports a finding of likelihood of confusion.

 

The intentional and deceptive nature of Respondent’s conduct – which is calculated to cause confusion – is obvious.  Consumer confusion is virtually guaranteed since Respondent purposely and knowingly uses Complainant’s marks in Respondent’s domain names and within Respondent’s website content, together with the word “franchise,” in connection with offering franchise-related services.  Complainant is a franchise system.  The use of the term “franchise” heightens the risk that consumers will believe that the websites at www.dunkindonutsfranchise.net, www.dunkindonutsfranchise.org, and www.baskinrobbinsfranchise.net are owned and operated by Complainant (or are at least sanctioned by Complainant).

 

Moreover, on its sites, Respondent solicits consumers to “Request Dunkin Donuts Franchise Info” or “Request Baskin Robbins Franchise Info” and to “take the first step” in submitting an application by submitting information - to Respondent! Consumers seeking to possibly become franchisees of Complainant are thus redirected and will instead receive information and spam emails from Respondent and its associates, rather than from Complainant.

 

Intentional deceptive conduct by an accused infringer is a very strong factor in the likelihood of confusion analysis.

 

[b.]       Respondent Has No Rights or Legitimate Interest in the Subject

Domain Names.

 

Respondent has no rights or legitimate interest in the domain names

<dunkindonutsfranchise.net>, <dunkindonutsfranchise.org>, and <baskinrobbinsfranchise.net>.  Respondent owns no federally registered trademarks for “DUNKIN’ DONUTS FRANCHISE” or “BASKIN-ROBBINS FRANCHISE” or “DUNKIN’ DONUTS” or “BASKIN-ROBBINS.”

 

Respondent is not in any way affiliated with the Complainant, nor is Respondent licensed or authorized to use Complainant’s DUNKIN’ DONUTS® and BASKIN-ROBBINS® marks. That Complainant has no relationship with Respondent supports a prima facie showing that Respondent does not have any rights or legitimate interest in the <dunkindonuts.com>, <dunkinfranchising.com>, and <baskinrobbins.com> domain names.  See Croatia Airlines d.d. v. Modern Empire Internet, Ltd., D2003-0455 (WIPO Aug. 21, 2003) (a complainant that has no relationship whatsoever with respondent and has never authorized respondent to sue the domain name at issue will support a prima facie showing that respondent does not have rights or interests in the domain name under Policy 4(a)); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that “it would be unconscionable to find that a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business); MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the MSNBC mark where respondent attempted to profit using complainant’s mark by redirecting Internet traffic to its own website); Am. Online, Inc. v. Tencent Comm. Corp., FA93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of complainant’s mark “as a portal to suck surfers into a site sponsored by [respondent] seems hardly legitimate”).

 

In addition, Respondent does not use the domain names in connection with a bona fide offering of goods and services under the Policy.  Rather, the websites at www.dunkindonutsfranchise.net, www.dunkindonutsfranchise.org, and www.baskinrobbinsfranchise.net attempt to solicit personal information from individuals who may be interested in becoming franchisees of Complainant.  In doing so, Respondent is diverting prospective franchisees from Complainant’s own site and franchise salespeople.  It is noteworthy that Respondent displays Complainant’s own trademarked logos on Respondent’s web sites, creating a high likelihood that consumers will believe the sites are affiliated with Complainant. This is not fair use, nor is it legitimate. It is, actually, blatant and bold trademark piracy.  See True Value Co. v. Jucco Holdings, FA 0604000684382 (Nat. Arb. Forum June 1, 2006) (finding that the diversion of Internet traffic to complainant’s competitors is not use in connection with a bona fide offering of goods and services, nor is it a legitimate noncommercial or fair use of a domain name).

 

[c.]       Respondent Intentionally Registered and Is Using the Domain Names

<dunkindonutsfranchise.net>, <dunkindonutsfranchise.org>, and

<baskinrobbinsfranchise.net> in Bad Faith.

 

Respondent’s registration of<dunkindonutsfranchise.net>, <dunkindonutsfranchise.org>, and <baskinrobbinsfranchise.net> in 2011, and its use of Complainant’s trademarked logos on the sites, demonstrates that Respondent knew of Complainant’s rights in the marks DUNKIN’ DONUTS® and BASKIN-ROBBINS®, and therefore acted in bad faith when registering the domain names.  Respondent’s domain names are confusingly similar to Complainant’s well- known and famous registered trademarks DUNKIN’ DONUTS® and BASKIN-ROBBINS®, which Complainant registered decades before Respondent registered <dunkindonutsfranchise.net>, <dunkindonutsfranchise.org>, and <baskinrobbinsfranchise.net>. The domain names in dispute are confusingly similar to Complainant’s marks because they wholly incorporate those marks , with the addition of the descriptive word “franchise.”

 

Respondent perpetuated the confusion by displaying Complainant’s trademarked logos on Respondent’s web sites www.dunkindonutsfranchise.net, www.dunkindonutsfranchise.org, and www.baskinrobbinsfranchise.net.  (See Ex. H.) This use of Complainant’s logos demonstrates that Respondent had actual notice of Complainant’s pre-existing marks.  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with complainant’s well known marks, thus creating a likelihood of confusion strictly for commercial gain).  Further, due to Complainant’s previously issued federal trademark registrations, Respondent had at least constructive notice of Complainant’s rights in the marks at the time it registered the domain names.  See 15 U.S.C. §1072 (“[r]egistration of a mark on the principal register. . . shall be constructive notice of the registrant’s claim of ownership thereof”).  See also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with United States Patent and Trademark Office was adequate to establish rights pursuant to paragraph 4(a)(1) of the Policy).

 

Notice of trademark rights prior to registering a confusingly similar domain name constitutes bad faith. See Complexions Rx, Inc. v. Julie Hogan, D2002-0484 (WIPO July 19, 2002) (the owner of the trademark registration for COMPLEXIONS RX was able to show that the registrant of <complexionrx.com> registered the domain name in bad faith because she was operating a directly competing business at that site and had constructive notice of complainant’s trademark rights).

 

Respondent’s use of confusingly similar domains is also in bad faith because the use infringes Complainant’s rights in its marks and is done with the intent to divert traffic away from Complainant and toward Respondent.  Respondent infringes Complainant’s marks by the very act of using the marks and displaying Complainant’s logos on its sites for the purpose of profiting off of Complainant’s trademarks, goodwill, and reputation.

 

In Two Men and a Truck Int’l, Inc. v. Jason Rager/Paydues Inc, D2011-1312 (WIPO Aug. 31, 2011), Respondent created a website very similar to the ones at issue here.  There, as here, Respondent used the franchisor’s trademarked name in the domain name and merely added the word “franchise” to the domain.  Respondent also offered a form in that case for potential customers to complete to get further information about the franchisor, just as it has done in this case. The franchisor argued that Respondent conducted a “parasitic exploitation of the Complainant’s valuable goodwill and reputation for commercial gain, in bad faith and in violation of the Policy.”  The panel agreed, holding:

 

The Respondent has not provided any explanation why it would be entitled to register a Domain Name equivalent to the Complainant’s trade mark with only a generic term added which reflects the business in which the Complainant operates.  Further, the Panel is of the view that the site attached to the Domain Name using the Complainant’s trade mark and offering services unrelated to the Complainant is confusing on the facts.  The use of the trade marks on the site shows that the Respondent must be well aware of the Complainant, its trade mark and its services. In the absence of a Response from the Respondent, considering the fame of the Complainant and the material attached to the Domain Name, the Panel is satisfied that the Complainant has shown that the Respondent registered the Domain Name in bad faith and has used the Domain Name to attract Internet traffic to its site for commercial gain by creating a likelihood of confusion that its website is connected to the Complainant. As such the Domain Name has been registered and used in bad faith and the third element of the Policy has been satisfied.

 

The panel upheld Two Men and a Truck’s complaint and transferred the domain name from Respondent to the franchisor.  Here, virtually identical facts exist, and the same result is warranted; the domains should be transferred.

 

Similarly, in the previously mentioned decision in PFIP, LLC v. Paydues Inc, the panel found that the website at issue there, www.planetfitnessfranchise.net, was created and used in bad faith.  Specifically, the panel held:

 

We also note that Complainant contends, without objection from Respondent, that Respondent’s <planetfitnessfranchise.net> domain name resolves to a website that contains Complainant’s marks while purporting to offer a “Planet Fitness Franchise Toolkit” and a free gift if users enter their names, mailing addresses, telephone numbers and e-mail addresses.  In the circumstances here presented, we may presume that Respondent uses this information to profit by sending spam e-mails to Internet users that enter their information believing they are on a website sponsored by Complainant.  Thus Respondent’s website intentionally uses Complainant’s marks to lure Internet users into providing their personal information.  Such use has been found not to constitute 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), and we agree.

 

***

 

Likewise, it is evident that Respondent is engaged in a “phishing” scheme in order to profit from the misuse of Internet users’ personal information as alleged in the Complaint.  This demonstrates that Respondent’s registration and use of the domain is in bad faith under Policy ¶4(a)(iii).  See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith

registration and use where a respondent used a contested domain name to redirect Internet users to a website that imitated a complainant’s website fraudulently to acquire personal information from that complainant’s clients); see also HOPE Worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that a respondent registered and used a domain name in bad faith because it redirected Internet users to a website that imitated the complainant’s website to fraudulently acquire personal information from the complainant’s prospective associates).

 

The panel transferred the domain.  Id.  The www.planetfitnessfranchise.net website that Respondent set up in that case was nearly identical to the ones at issue here.

 

It is evident that Respondent knew of Complainant’s intellectual property rights in the marks DUNKIN’ DONUTS® and BASKIN-ROBBINS® when it registered the domain names at issue.  Respondent has a pattern and practice of misusing franchisors’ trademarks to create confusion in the marketplace and profit off of this deception with innocent consumers. Respondent’s registration of <dunkindonutsfranchise.net>, <dunkindonutsfranchise.org>, and <baskinrobbinsfranchise.net> was in bad faith and for the purpose of exploiting the good will associated with Complainant’s marks to divert Internet traffic to its website for commercial gain. See TPI Holdings, Inc. v. Jason Guida, D2000-0269 (WIPO May 23, 2000) (finding bad faith registration and use where respondent took steps intended to confuse users with respect to respondent’s web site’s source, affiliation or sponsorship with, or endorsement by complainant); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”).

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(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.

 

DISCUSSION

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 Complainant to prove each of the following three elements to obtain an order transferring or cancelling a domain name:

 

(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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Identical and/or Confusingly Similar

Complainant contends it has rights in the DUNKIN’ DONUTS mark (Reg. No. 748,901 registered April 30, 1963) and BASKIN-ROBBINS mark (Reg. No. 1,371,672 November 19, 1985) because they have been registered with the United States Patent & Trademark Office (“USPTO”).  Such registrations with the USPTO are normally sufficient for Complainant to establish rights in the marks under Policy ¶4(a)(i).  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).

 

Complainant argues the <dunkindonutsfranchise.net> and <dunkindonutsfranchise.org> domain names are confusingly similar to the DUNKIN’ DONUTS mark.  The domain names at issue contain the entire DUNKIN’ DONUTS mark, absent the space and the apostrophe from the mark, in addition to the descriptive term “franchise” and the generic top-level domain (“gTLD”) “.net” or “.org.”  Complainant claims the word “franchise” is descriptive because it describes Complainant’s franchise services.  The Panel finds the changes and additions to Complainant’s mark are not sufficient to distinguish the disputed domain names from the mark.  See LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that the omission of an apostrophe did not significantly distinguish the domain name from the mark); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.  Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”).  Therefore, the Panel finds Respondent’s <dunkindonutsfranchise.net> and <dunkindonutsfranchise.org> domain names are confusingly similar to the DUNKIN’ DONUTS mark.

 

Complainant argues the <baskinrobbinsfranchise.net> domain name is confusingly similar to the BASKIN-ROBBINS mark.  The disputed domain name removes the hyphen from the mark, adds the descriptive term “franchise,” and the gTLD “.net.”  These are not sufficient changes to distinguish this domain name from Complainant’s mark.  Therefore, the Panel finds the <baskinrobbinsfranchise.net> domain name is confusingly similar to the BASKIN-ROBBINS mark under Policy ¶4(a)(i).  See Ritz-Carlton Hotel Co. v. Club Car Executive Transp., D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in the domain names is not sufficient to differentiate the domain names from the mark); see also Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶4(a)(i) because the appended term related directly to the complainant’s business); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

 

The Panel finds Policy ¶4(a)(i) satisfied.

 

Rights or Legitimate Interests

Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Complainant contends Respondent is not affiliated or connected with Complainant in any way.  The Panel notes the WHOIS information identifies the disputed domain names’ registrant as “Paydues Inc / Domain Administrator,” which is not the same as the <dunkindonutsfranchise.net>, <dunkindonutsfranchise.org>, and <baskinrobbinsfranchise.net> domain names.  Therefore, the Panel finds Respondent is not commonly known by the disputed domain names under Policy ¶4(c)(ii).  See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶4(c)(ii) based on the WHOIS information and other evidence in the record).

 

Complainant argues Respondent is not using 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), because Respondent is attempting to “solicit personal information from individuals who may be interested in becoming franchisees of Complainant.”  Complainant submitted documentary evidence similar websites resolve from the disputed domain names.  Each website contains commentary on becoming a franchisee and also includes an information section which asks for an Internet user’s name, address, phone numbers, and how much money they would have to invest in a franchise.  The websites feature a “Franchise Toolkit,” written by a person identified as “Jason Rager,” whom Complainant asserts has been involved in many court cases involving franchisor rights.  Complainant believes Respondent profits from the collection of personal information and from sales of software containing “franchise tips.”  Respondent is also committing fraud by claiming to be affiliated with Complainant.  Committing fraud can hardly be the source of Respondent acquiring rights to Complainant’s marks.  Respondent is not using 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).  See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. 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).”); see also Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).

 

The Panel finds Policy ¶4(a)(ii) satisfied. 

 

Registration and Use in Bad Faith

Complainant contends, albeit not in its Policy ¶4(a)(iii) section, Respondent has been involved in 14 other UDRP actions.  See PFIP, LLC v. Paydues Inc, FA 141907 (Nat. Arb. Forum Nov. 25, 2011); see also Famous Dave’s of Am., Inc. v. Paydues Inc., FA 1420191 (Nat. Arb. Forum Jan. 23, 2012).  Respondent is entitled to defend each and every case brought against it.  That fact alone is not sufficient to support a finding of bad faith registration and use, absent preventing Complainant from using its trademark in a domain name (something that hasn’t happened here).

 

Complainant contends Respondent is using Complainant’s mark, logos, and other company information in order to elicit personal information from individuals who wish to become franchisees of Complainant’s businesses.  This is a classic case of phishing (a species of fraud).  Complainant’s screenshots show Respondent is using the disputed domain names to offer franchise information about Complainant’s businesses while asking for personal information.  This Panel finds Respondent is using the disputed domain name for a phishing scheme in which Respondent collects personal information from Internet users and uses such information for Respondent’s benefit.  This finding is sufficient to determine Respondent registered and is using the disputed domain names in bad faith under Policy ¶4(a)(iii).  See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”).

 

Complainant also argues Respondent had knowledge of Complainant’s rights in the DUNKIN’ DONUTS and BASKIN-ROBBINS marks prior to registering the disputed domain names.  Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds Respondent had actual knowledge of Complainant's mark and rights (especially since Respondent was using Complainant’s logo and referring to Complainant’s business model).  This is an additional ground to support the Panel’s determination Respondent registered the disputed domain names in bad faith under Policy ¶4(a)(iii).  See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").

 

The Panel finds Policy ¶4(a)(iii) satisfied. 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <dunkindonutsfranchise.net>, <dunkindonutsfranchise.org>, and <baskinrobbinsfranchise.net> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Houston Putnam Lowry, Chartered Arbitrator, Panelist

Dated: Tuesday, October 16, 2012