DUNN’S FAMOUS INTERNATIONAL HOLDINGS INC. v. Tim Chang / Accounting & Tax Planning
Claim Number: FA1901001823971
Complainant is DUNN’S FAMOUS INTERNATIONAL HOLDINGS INC. (“Complainant”), represented by Frederick Pinto of 99 Prince Street, Suite 701, Canada. Respondent is Tim Chang / Accounting & Tax Planning (“Respondent”), represented by James Plotkin of Caza Saikaley LLP, Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dunnsexpress.co>, registered with Godaddy.Com, Llc, Godaddy.Com, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Michael A. Albert, Robert A. Fashler and Dennis A. Foster (Chair) as Panelists.
Complainant submitted a Complaint to the Forum electronically on January 7, 2019; the Forum received payment on January 7, 2019.
On January 8, 2019, Godaddy.Com, Llc, Godaddy.Com, Inc. confirmed by e-mail to the Forum that the <dunnsexpress.co> domain name is registered with Godaddy.Com, Llc, Godaddy.Com, Inc. and that Respondent is the current registrant of the name. Godaddy.Com, Llc, Godaddy.Com, Inc. has verified that Respondent is bound by the Godaddy.Com, Llc, Godaddy.Com, Inc. registration agreement and has thereby agreed to resolve domain name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 10, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 25, 2019 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@dunnsexpress.co. Also on January 10, 2019, 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.
A timely Response was received and determined to be complete on February 22, 2019.
A timely Additional Submission from Complainant was received and determined to be complete on February 27, 2019. Also, Respondent filed a timely Additional Submission, which was received and determined to be complete on March 4, 2019.
On March 4, 2019, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Michael A. Albert, Robert A. Fashler and Dennis A. Foster (Chair) as Panelists.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
- Complainant is the franchiser of one of Montreal’s most iconic delicatessens, recognized for its unique and famous smoked-meat sandwiches in Canada. Complainant has conducted business under its DUNN FAMOUS and DILLON DUNN marks in Canada, as well as the MONTREAL’S ORIGINAL DUNNS FAMOUS DEPUIS/SINCE 1927 mark. Complainant also does business through its <dunnsfamous.com> domain name.
- The disputed domain name, <dunnsexpress.co>, is identical, or at least confusingly similar, to Complainant’s marks. The name includes the dominant term of the marks, "Dunns," while adding the generic, descriptive term, "express," and a “.co” country code top-level domain (“ccTLD”). Those additions do not prevent confusing similarity between the name and marks.
- Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not authorized, licensed, or otherwise permitted to use Complainant’s DUNNS marks in any way and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or in a legitimate noncommercial or fair use manner. Rather, Respondent uses the disputed domain name to pass itself off as Complainant in order to offer competing and/or counterfeit goods.
- Respondent registered and uses the disputed domain name in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, internet users to the disputed domain name where Respondent passes itself off as Complainant to directly compete with it.
B. Respondent
- Respondent is an agent for a company in the restaurant franchising business. That company entered into a franchise agreement (the "MFA") in December 2017 with Ina and Stanley Devine (the "Devines"), who are currently in litigation with Complainant.
- As the Policy is intended to address only "easy cases" of abusive domain name registration and use, the UDRP is not the correct forum for this dispute. Moreover, the current complex court case between Complainant and the Devines is the appropriate forum, if any, to address this dispute, and only adds to the conclusion that this UDRP case should not proceed.
- Respondent makes no contentions as to Policy ¶ 4(a)(i).
- Respondent has rights and legitimate interests in the disputed domain name. Complainant has failed to make a prima facie case that Respondent lacks those rights and interests, as Complainant submitted evidence that supports Respondent’s legitimate use.
- Respondent uses the disputed domain name in connection with a franchising business under Complainant’s DUNN FAMOUS mark, which Respondent was allowed to do contractually under the MFA with the Devines. Further, the brick and mortar operations associated with Respondent were planned, constructed, and opened prior to filing of the Complaint.
- Respondent did not register or use the disputed domain name in bad faith. Respondent is neither attempting to pass itself off as Complainant nor using the disputed domain name to disrupt Complainant’s business. As Complainant does not even operate in Ontario, Respondent’s use of the domain name has actually built up the goodwill of Complainant’s business.
- Furthermore, Complainant’s omissions in its Complaint regarding ongoing litigation and the fact that its sophisticated IP attorney was well aware of Respondent’s bona fide use of the disputed domain name supports a finding of reverse domain name hijacking. The Panel may note that the disputed domain name was registered on November 16, 2017.
C. Complainant's Additional Submission
- On November 1, 2018, Complainant entered into a settlement agreement with the Devines (the "Settlement Agreement") that, among other things, recognized Complainant as the sole and exclusive owner of all rights in any marks that include the terms, "Dunns" or "Dunn's" (individually and collectively, the "DUNNS marks"). The Settlement Agreement also invalidated any agreement, including the MFA, in which the Devines sought to license to a third party the right to use the DUNNS marks in commerce.
- Complainant also registered on June 4, 2017 the domain names, <dunnsexpress.com> and <dunnsexpress.ca>, which redirect to Complainant's <dunnsfamous.com> domain name.
- Complainant believes that the UDRP is the correct venue to resolve rights in the disputed domain name. Respondent was not a party to the court action that was the subject of the Settlement Agreement.
- As made clear in the Settlement Agreement, Respondent has no rights or legitimate interests in the disputed domain name, as Respondent cannot legitimately conduct a competitive business under that name. Moreover, Respondent is not a director or owner of the company that is the signatory to the MFA. Also, Complainant sent several formal communications to Respondent that asserted Complainant's exclusive rights in the DUNNS marks and contained warnings of infringement.
- As Respondent colluded with the Devines in the attempt to misappropriate rights from Complainant in the DUNNS marks, Respondent registered and is using the disputed domain name in bad faith.
- The Complaint is not an attempt at reverse domain name hijacking. The Complaint is designed to counter abusive domain name registration, since Complainant has shown that Respondent has no rights or legitimate interests in the disputed domain name and that it was registered and is being used in bad faith.
D. Respondent's Additional Submission.
- Respondent was unaware of the Settlement Agreement until receiving Complainant's Additional Submission in these proceedings. However, the Settlement Agreement does not necessarily invalidate the MFA.
-The cease-and-desist letters sent from Complainant to Respondent fail to mention the disputed domain name, but contain references only to the underlying trademark dispute concerning the Devines. However, the letters demonstrate that Complainant recognized Respondent as an agent for the company who is a party to the MFA.
- The Settlement Agreement aside, Respondent has rights and legitimate interests in the disputed domain name because Respondent had the bona fide belief that he had rights under the MFA to offer goods and services through that name. Much money was expended by the company that Respondent represented in marketing those goods and services.
- The Settlement agreement, which post-dated the MFA, does not mitigate Respondent's claim that the disputed domain name was neither registered nor is being used in bad faith. It means only that Respondent may have a claim against the Devines, who may have conceded that they did not have the right to enter licensing and/or franchising agreements regarding the DUNNS marks.
Complainant is a well-established Canadian company that offers franchising licenses to entities who wish to operate delicatessens in connection with Complainant's trademarks. Complainant has conducted business under its trademarks that are registered with the Canadian Intellectual Property Office (“CIPO”), including DUNNS FAMOUS & design (e.g., Reg. No. TMA724615; registered Sept. 25, 2009) and DILLON DUNN & design (e.g., Reg. No. TMA878250; registered May 20, 2014). It has also registered the MONTREAL’S ORIGINAL DUNNS FAMOUS DEPUIS/SINCE 1927 & design mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,585,324, registered Mar. 10, 2009).
The disputed domain name, <dunnsexpress.co>, is owned by Respondent, who registered the name on November 16, 2017. The disputed domain name resolves to a website that suggests the offering of delicatessen goods and services under license from Complainant.
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.
Preliminary Issue: Business/Contractual Dispute Outside the Scope of the UDRP
Respondent contends that this dispute should be considered outside the scope of a UDRP proceeding. He asserts that the Policy should be employed to address only "easy cases" of abusive domain name registration and use. Respondent’s position apparently is that because his registration and use of the disputed domain name arose in connection with various business and contractual elements involving Complainant and third parties, another forum should be used to settle this dispute.
While the Panel agrees that the Policy was designed to address fairly clear-cut cases of abusive registration and use of domain names (so-called "cyber-squatting"), that design allows for the determination by a certified arbitration panel of when cyber-squatting occurs and when it does not, based upon a relatively reduced amount of evidential submission and examination. In this case, the business/contractual relations involved were not directly between Complainant and Respondent and, given that their contact before the instant filing appears to have been fairly limited, the Panel finds that said business/contractual relations do not prevent the Panel from rendering a decision under the Policy.
Complainant has furnished evidence to the Panel of Complainant's trademark registrations for the marks, DUNNS FAMOUS & design and DILLON DUNN & design, with the CIPO. Also, Complainant has submitted evidence of its MONTREAL’S ORIGINAL DUNNS FAMOUS DEPUIS/SINCE 1927 & design trademark registration with the USPTO. As a result, the Panel accepts that Complainant has the rights in those marks required under Policy ¶ 4(a)(i). See Midnite Air Corp. v. MailingNX EXPRESS, FA 1788299 (Forum June 25, 2018) ("Complainant’s ownership of a USPTO trademark registration for the MNX trademark evidences its rights in such mark for the purposes of Policy ¶4(a)(i)."); see also The Toronto-Dominion Bank v. Party Night Inc., FA 155908 (Forum June 5, 2003) ("Complainant has established rights in the TD CANADA TRUST family of marks through proof of registration of those marks with the CIPO.").
The Panel can determine swiftly that the disputed domain name, <dunnsexpress.co>, is not identical to any of Complainant's marks. In its filings, Complainant refers to those marks as the "DUNNS marks." Although DUNN is primarily a surname, Complainant asserts that the trademarks enjoy longstanding use, promotion and commercial success, and are, in fact, iconic. Complainant provided some evidence consistent with that assertion. Respondent has not disputed the distinctiveness of the DUNNS Marks. Accordingly, the Panel accepts that the DUNNS Marks, and in particular the word DUNNS, are distinctive. In the Panel's opinion, DUNNS is the most dominant non-descriptive element in each mark. The latter element is also the primary, and only non-descriptive, term found in the disputed domain name. In that name, the descriptive "express" term is added to "dunns." A consensus of prior UDRP panels have found that the addition of common, descriptive terms to established marks in domain names has not been sufficient to avoid confusing similarity between those domain names and the respective marks. Moreover, the inclusion of a ccTLD, such as ".co," is not relevant in this comparison. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant's marks. See Garmin Switzerland GmbH v. Nayab Ali, FA 1793278 (Forum July 19, 2018) (finding <garminexpress.net> to be confusingly similar to the GARMIN mark); see also Hoffmann-La Roche Inc. v. Private Whois, D2012-0413 (Wipo May 25, 2012) (finding <accutaneexpress.com> to be confusingly similar to the ACCUTANE mark); see also Wicked Weasel Pty Ltd v. Kulich / GS, FA 1604785 (Forum Apr. 23, 2015) (“The addition of a ccTLD to a registered trademark is not sufficient to overcome a finding of confusing similarity under a Policy ¶4(a)(i) analysis.”).
Accordingly, the Panel finds that Complainant has succeeded in proving that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights.
In order to shift the burden to produce evidence to Respondent, Complainant must establish a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. See 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”); see also Adv'd Intern'l Marketing Corp. v. AA-1 Corp, FA 1406896 (Forum Nov. 2, 2011).
Complainant has convinced the Panel that the disputed domain name is confusingly similar to Complainant's DUNNS marks, and Complainant has asserted—and the surrounding facts and circumstances of this case support—that it granted Respondent no authority to use those marks in any manner. Consequently, the Panel accepts that Complainant has presented such a prima facie case, which Respondent must rebut through submission of pertinent evidence.
In line with the criteria listed in Policy ¶ 4(c)(i), Respondent contends that it has rights and legitimate interests in the disputed domain name, resulting from the name's use in Respondent's "bona fide offering of goods and services" relating to the delicatessen business. Respondent cites the MFA agreement between its client and the Devines as granting Respondent the authority to use the name in this manner.
Complainant counters that such use of the disputed domain name is inconsistent with Policy ¶ 4(c)(i) because said authority emanating from the MFA and Devines was in reality never legitimately granted, as explained and agreed to in the Settlement Agreement between Company and the Devines.
The facts of this case are complex and the record before the panel is insufficient to reach a definitive conclusion on the issue of rights or legitimate interests. However, the Panel need not reach a conclusion on this issue given our conclusion on the third element discussed below.
Complainant contends that Respondent registered the disputed domain name in bad faith, going so far as to allege some sort of collusion between Respondent and the Devines to infringe upon Complainant's trademark rights. While the Settlement Agreement would appear to be consistent with the proposition that the Devines might never have had the authority to license or franchise any operations in connection with Complainant's marks, in which case any executed license and/or franchise agreements to that effect -- including the MFA -- would be of questionable validity, Complainant does not establish sufficient basis for concluding that Respondent, or the company for which he acted as an agent, was aware of such circumstance at the time of disputed domain name registration.
Moreover, the fact that Respondent registered the disputed domain name prior to execution of the MFA does not indicate bad faith at all; it indicates merely a proper business decision based upon the expectation of a successful conclusion to a business deal that would allow for the licensed marketing of delicatessen products and services. Finally, the Panel can find no clear evidence in the record that Respondent in any way colluded with the Devines to in some way harm Complainant or otherwise usurp its rights. Based upon this analysis, the Panel cannot conclude that the disputed domain name was registered in bad faith.
Since the Panel cannot find that the disputed domain name was registered in bad faith, the Panel will forego any consideration or determination as to whether the disputed domain name was or is being used in bad faith.
Accordingly, the Panel finds that Complainant failed to prove that the disputed domain name has been registered and is being used in bad faith.
Reverse Domain Name Hijacking
Respondent has requested that the Panel issue a finding of Reverse Domain Name Hijacking against Complainant. As discussed above however, and as Respondent’s own argument on the merits suggests, the facts are complex and this proceeding is not structured in a manner that lends itself readily to the full and precise sorting out of all the information that a court might have before it in deciding upon the parties’ motivations. The Panel concludes that there is insufficient clarity as to these issues for the Respondent to meet his burden of proof of persuading the Panel that Reverse Domain Name Hijacking occurred.
The Complainant having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <dunnsexpress.co> domain name REMAIN WITH Respondent.
Michael A. Albert, Panelist Robert A. Fashler, Panelist
Dennis A. Foster, Chair
Dated: March 18, 2019
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