national arbitration forum

 

DECISION

 

Dunkin’ Brands Group, Inc., DD IP Holder LLC, and BR IP Holder LLC v. Giovanni Laporta / yoyo.email

Claim Number: FA1407001568547

 

PARTIES

Complainants are Dunkin’ Brands Group, Inc., DD IP Holder LLC, and BR IP Holder LLC (“Complainants”), represented by Steven M. Levy, Pennsylvania, USA.  Respondent is Giovanni Laporta / yoyo.email (“Respondent”), United Kingdom.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <dunkindonuts.email> and <baskinrobbins.email>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that he or she 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.

 

Michael Albert as Panelist.

 

PROCEDURAL HISTORY

Complainants submitted a Complaint to the National Arbitration Forum electronically on July 8, 2014; the National Arbitration Forum received payment on July 14, 2014.

 

On July 8, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <dunkindonuts.email> and <baskinrobbins.email> 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 July 15, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 4, 2014 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@dunkindonuts.email, and postmaster@baskinrobbins.email.  Also on July 15, 2014, 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 August 4, 2014.

 

An Additional Submission was received on August 11, 2014. Supplemental Rule 7 states that additional submissions  must be received “within five (5) calendar days after the Response was submitted or the last day the Response was due” to be considered timely, and that “[t]he Panel may use its discretion in determining whether to consider any late additional submissions.” According to Supplemental Rule 7, this Additional Submission appears untimely and therefore need not be considered. In any event, a review of the contents indicates that the Additional Submission would not have influenced the Panel’s decision.

 

On August 8, 2014, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Michael Albert 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.

 

RELIEF SOUGHT

Complainants request that the domain names be transferred from Respondent to Complainants.

 

PARTIES' CONTENTIONS

A. Complainant

Rights in the Marks and Confusing Similarity

Complainants are the parent company and subsidiary companies that do business under the DUNKIN’ DONUTS and BASKIN-ROBBINS marks. Both marks have been registered with the United States Patent and Trademark Office ("USPTO") DUNKIN’DONUTS: (Reg. No. 748,901 registered April 30, 1963); BASKIN-ROBBINS: (Reg. No. 1,371,672 registered Nov. 19, 1985). Both of these <dunkindonuts.email> and <baskinrobbins.email> domain names are nearly identical to the respective marks, other than the addition of a gTLD and the removal of punctuation.

 

Rights and Legitimate Interests

Respondent has no rights or legitimate interest in the domain name. First, Respondent is not known by either domain name. Second, Respondent’s allegedly planned service is not a bona fide offering of goods or services under Policy ¶4(c)(i). Instead, Respondent’s plan is commercial, not a “free public service.” Complaint at 9. Furthermore, Respondent’s disputed domain names threaten to infringe upon, tarnishe, or dilute the DUNKIN’ DONUTS and BASKIN ROBBINS Marks by creating a risk of confusion as to sponsorship or affiliation of the disputed domain name. Respondent’s registration and planned future use of the disputed domain names further has potential to harm Complainants’ brand reputation because Complainants cannot engage in quality control of the product with which its name is associated. In addition, the fact that the domain names do not currently resolve to any website indicates both a lack of legitimate interest and the possibility that visitors could get the mistaken impression “that Complainants had either gone out of business or were simply not devoting attention to their online services.” Complaint at 11.

 

Respondent’s use of the domain names are not legitimate; instead, it reflects an intent to force trademark owners to use Respondent’s services through the registration of domain names identical to their trademarks. Complaint at 9. These trademarks are being used in a trademark sense to capitalize on their trademark value, which does not give rise to legitimate rights or interests.

 

Complainants note that multiple previous URS proceedings, which require a higher standard of proof than this forum, found no legitimate interests.

 

Registration and Use in Bad Faith

Complainants argue that Respondent had notice of Complainants’ rights in their respective marks, given the fame and extensive use of the marks worldwide and online; this shows that Respondent intended to divert internet traffic from Complainants’ websites. While Respondent is not yet actively using the domains, passive holding can still constitute use in bad faith. See, e.g., Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (WIPO Feb. 18, 2000).

 

Respondent’s pattern of registering trademarked .email domain names suggests a pattern of conduct designed to deprive trademark owners from reflecting their marks in a corresponding domain name. Numerous other cases have found that other domains involved in Respondent’s business plan were registered in bad faith, which shows a pattern of bad-faith conduct.

 

B. Respondent

Rights in the Marks and Confusing Similarity

Respondent concedes that Complainants have trademark rights in the Marks, and does not appear to contest the fact that the disputed domain names are identical or confusingly similar to the Marks. Response at 5.

 

Rights and Legitimate Interests

Respondent asserts that it intends to use the contested domains to offer a new email service “focused on email[] sending verification, receipt verification, email routing, [and] email security.” Response at 2. It is true that Respondent registered many generic and trademarked terms on the .email gTLD, but the intent was to “use each brand.email as a non-public email server which would easily capture and segment the data for verifying the sending and, potentially, receipt of emails sent to particular companies for customers using his service.” Response at 2-3. The intended use of the trademarked domain names will be a back-end mechanism of  “accomplish[ing] a number of verified email administrative and technical goals in ways that would be invisible to consumers or any other third parties.” Response at 3.

 

Respondent has registered “over 4,000 domain names” on the .email registry and is preparing to use them in connection with a bona fide offering of goods and services through its certified email business. This business plan constitutes preparation to “make a fair use of the domain name without ‘intent for commercial gain to misleadingly divert consumers or tarnish the trademark or service mark at issue’,” because use of the domain name will be invisible to the public. Response at 8.

 

Respondent argues that “[t]he assertion that there might be another ways [sic] to run an email certification service without registering a brand.email domain name to run a back-end server which tracks email sending and receipt data is irrelevant,” but takes no position on whether or not this assertion is correct. Response at 7-8.

 

Respondent concedes that it has not acquired trademark rights of any kind in the domain, as it takes the position that it is not using the domain in any trademark sense, Response at 7, which “makes it impossible to find violation of the UDRP.” Response at 4. To support this contention, Respondent stresses the fact that its proposed use of the domain name would not be directly visible to consumers, preventing any likelihood of confusion. Response at 4.

 

 

Registration and Use in Bad Faith

Respondent argues that Complainants have made no showing that Respondent has attempted to sell the domain name, has registered any other of Complainants’ marks, is a competitor of Complainants, or has diverted Complainants’ customers. Response at 9. Until Respondent’s business model is actually in operation, any UDRP complaint is premature; without any current use of the subject domains, it is impossible that Respondent has used them in bad faith. Response at 3- 4. Respondent acknowledges prior adverse UDRP and URS decisions, but argues that they were incorrectly decided.

 

Complainants bear the burden of showing registration and use in bad faith. Response at 13. Here, Complainants’ allegations of bad faith are unsubstantiated and “shear [sic] speculation.” Response at 10. Prior UDRP panel decisions “are not evidence” and have not properly taken into account the bad faith element. Response at 10.

 

Respondent notes that Complainants had an opportunity to register the domain during the sunrise period after the .email TLD came into existence, and that Respondent therefore could not have registered the domain name to prevent the owner of the trademark from using it. Response at 11-12. Respondent argues that its non-public-facing use of the domain name makes it “impossible” for consumers to be diverted or misled as to sponsorship. Response at 12. Finally, Respondent argues that its email system will be purely optional, and that Complainants and other trademark holders will not be obliged to join the system. Response at 14.

 

C. Additional Submissions

 

Complainants’ Additional Submission summarized various prior decisions holding that Respondent’s domains violate the URS and the URDP. In accordance with these prior decisions, Complainants also emphasize Respondent’s unclear business plans and lack of stated rationale for registering trademarked domain names and the lack of identifiable fair use.

 

DISCUSSION AND FINDINGS

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 Complainants 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 Complainants have 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.

 

Identical and/or Confusingly Similar

 

Complainants provide extensive documentation of their rights in the DUNKIN’ DONUTS and BASKIN ROBBINS Marks.  Complainants are the parent company and the subsidiary companies that do business under the DUNKIN’ DONUTS and BASKIN-ROBBINS marks. Both marks have been registered with the United States Patent and Trademark Office ("USPTO") DUNKIN’DONUTS: (Reg. No. 748,901 registered April 30, 1963); BASKIN-ROBBINS: (Reg. No. 1,371,672 registered Nov. 19, 1985). Both of these <dunkindonuts.email> and <baskinrobbins.email> domain names are nearly identical to the respective marks.

 

Respondent does not dispute the fact that the contested domain names are identical or confusingly similar to marks owned by Complainants. The Panel therefore finds that the requirement of Policy ¶4(a)(i) has been met.

 

Rights or Legitimate Interests

 

Respondent is correct that Complainants bear the initial burden of making a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii); the burden then shifts to Respondent to show its rights or legitimate interests.  See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must 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...”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that prima facie case can be made by a showing that Respondent is not known by the marks or authorized to use them). Because the Complaint successfully sets forth a prima facie case, the burden has shifted to Respondent to demonstrate its rights or legitimate interests.

 

Respondent has failed to meet its burden under Policy ¶4(a)(ii).  Respondent does not argue that it has ever been known by the domain name under Policy ¶4(c)(ii); its arguments as to a bona fide offering of services under Policy ¶4(c)(i) and fair use under ¶4(c)(iii) are insufficient. As such, Respondent has demonstrated none of the rights or legitimate interests identified in Policy ¶4(c), nor any other persuasive rights or legitimate interests in respect of the domain name.

 

i.              Respondent’s proposed use of the domain name is not a bona fide offering of goods or services

 

Policy ¶4(c)(i) allows a demonstration of rights or legitimate interests through a showing that “before any notice to you of the dispute, your use of, or demonstrable 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.” Although Respondent is not actively using the domain names, it has offered some evidence of preparations to use it in connection with its “certified email” business.

 

Given that the .email gTLD was made available for registration relatively recently, the Panel is disinclined to rule on the sufficiency of Respondent’s preparations under Policy ¶4(c)(i).  Regardless of whether Respondent’s evidence of demonstrable preparations is sufficient, however, the Panel finds that Policy ¶4(c)(i) is not satisfied: even if implemented, Respondent’s business would not constitute a bona fide offering of services under the Policy.

 

 A bona fide offering of services does not encompass all possible uses of a domain name to offer goods and services; if so, all domain registrants who used trademarked domain names for their services would effectively escape the Policy. Several requirements distinguish bona fide offerings of goods and services from impermissible use. First, to constitute a bona fide offering of services, Respondent’s proposed use of the contested domains must not be in bad faith under Policy ¶4(a)(iii). See, e.g., Pfizer Inc. v. Websites, WIPO Case No. D2004-0730 (WIPO Oct. 17, 2004) (“In determining whether an offering of goods or services is bona fide under Paragraph 4(c)(i), the dispositive question is whether the use of the disputed domain name in connection with the offering otherwise constitutes bad faith registration or use of the domain name under Paragraph 4(a)(iii)”). As the Panel concludes that Respondent’s use of the website does constitute bad faith under Policy ¶4(a)(iii), any offering of services would not be bona fide under Policy ¶4(c)(i).^[1]

 

In addition, as discussed further below, Respondent’s proposed use of the website does not resemble other business models constituting bona fide offerings of goods or services. A bona fide offering of goods or services typically must be offering the actual goods and services at issue, and only those goods, and must not run the risk of falsely suggesting a relationship between the registrant and the trademark owner. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No.D2001-0903 (WIPO Nov. 6, 2001). In all other cases, use of a trademarked domain name to “capitalize on the trademark value of the terms” does not give rise to legitimate rights or interests. Elorg Co., LLC and The Tetris Co., LLC v. 0x90, NAF Claim No. 114355 (2002). 

 

Here, Respondent does not sell the goods and services whose trademarks it plans to use, and admits that the value of the domains to its business model derives from their association with the companies that own the trademarks. Furthermore, Respondent has admitted that part of its business plan involves asking trademark holders to join its service; registering domain names with “the good faith intent that perhaps these entities would like to join [Respondent’s] portal network” is not a bona fide offering of goods or services. Viacom Int’l, Inc., Paramount Pictures Corp., & Blockbuster Inc. v. TVdot.net, Inc. f/k/a Affinity Multimedia, WIPO Case No. D2000-1253 (WIPO Jan. 16, 2001).

 

For the reasons above, the Panel finds that Respondent’s proposed business plan is not a bona fide offering of goods or services.

 

ii.             Respondent’s proposed use of the domain name is neither noncommercial nor fair use.

 

Respondent asserts that its business plan falls under Policy ¶ 4(c)(iii), “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” While Respondent’s intended use of the site is clearly commercial, Respondent argues that it intends to use the mark in a manner invisible to consumers, not to misleadingly divert consumers or tarnish the mark. This argument is insufficient.

 

In most cases, the use of a domain name for commercial purposes will not support a claim of fair use. See, e.g., The Professional Golfers’ Ass’n of Am. (PGA) v. Provisions, LLC, WIPO Case No. D2004-0576 (WIPO Sep. 13, 2004) (“[U]sing the Complainant’s trademark… to derive income is a commercial use under the Policy, not a fair use.”) In some cases, respondents have successfully proven fair use on a commercial website; however, respondents in such cases have identified specific forms of commercial fair use, such as nominative fair use, under which their activities fall. See, e.g., Frederick M. Nicholas, Adm’r, The Sam Francis Estate v. Magidson Fine Art, Inc., WIPO Case No. D2000-0673 (WIPO Sep. 27, 2000).  Here, Respondent has never identified any other form of “fair use” that might apply to its proposed business model. Nominative fair use requires a showing that the mark has been used only so far as actually necessary; in this case, as in previous cases, Respondent does not identify any specific reason that use of trademarked domain names is necessary to its email service. See Beiersdorf AG v. yoyo.email et al, NAF Claim Number FA1407001571112 (2014) (rejecting Respondent’s implicit argument of nominative fair use because of a lack of showing of necessity). Based on this record, the Panel cannot find nominative fair use, or any other form of fair use.

 

Finally, as discussed in more detail below, the Panel finds that Respondent’s proposed business model does appear to pose a risk of misleadingly diverting consumers. Even if these domain names had been shown to be necessary to Respondent’s business model, the Panel would therefore find that Respondent’s use of the trademarked domain names would not fall under Policy ¶4(c)(iii).

 

Registration and Use in Bad Faith

Respondent does not contest the fact that it was on actual notice of Complainants’ marks, and (in fact) that it registered the domain name precisely because it corresponded to Complainants’ well-known trademarks.

 

However, Respondent has not articulated any reason why it was necessary to register trademarked domains in order to operate its proposed business, and (as noted in previous decisions) it appears that the business could be operated without the use of trademarked domain names. While it is not entirely clear why Respondent chose to operate its business using trademarked domain names, precedent makes it clear that bad faith can be inferred from the facts and circumstances; where the domain names “would have little value to Respondent unless there was to be some reliance on the prospect of confusion,” bad faith may safely be inferred. Pepperdine Univ. v. BDC Partners, Inc., WIPO Case No. D2006-1003 (WIPO Sep. 25, 2006).

 

Here, Respondent spent approximately $82,000 registering “over 4000” domain names (Response at 7, 16)), many of which appear to have been selected precisely because they were similar or identical to third party trademarks. Despite Respondent’s assertion that the registration of trademarked domain names was useful to “accomplish a number of verified email administrative and technical goals,” Respondent chose not to articulate a single specific goal that this large-scale registration served. This omission is particularly striking in light of the fact that Respondent has had at least eleven opportunities to present some rationale for its pattern of behavior, in the form of eleven separate UDRP and URS challenges.^[2] In at least five of these proceedings, adverse decisions noted Respondent’s lack of visible justification for its registration of trademark-containing domain names. See Beiersdorf AG v. yoyo.email et al, NAF Claim Number FA1407001571112 (2014) at 3; Lockheed Martin Corp. v. yoyo.email et al., NAF Claim Number FA1406001563665 (2014) at 6; Statoil ASA v. Giovanni Laporta, Yoyo.Email Ltd., WIPO Case No. D2014-0637 (WIPO July 16, 2014) (concurrence) at 9; Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton Int’l IP, LLC v. Giovanni Laporta / yoyo.email, WIPO Case No. D2014-0686 (WIPO July 1, 2014) at 7; Mejeriforeningen Danish Dairy Bd. v. Domain Manager, Yoyo.email, WIPO Case No. D2014-0730 (WIPO July 23, 2014) at 4. At least three of these adverse decisions predate the Response in this case. See Statoil, supra (July 16, 2014); Sheraton, supra (July 1, 2014); Mejeriforeningen, supra (July 23, 2014).

 

After this string of adverse decisions, Respondent was clearly on notice that it needed to provide some plausible necessity for registering thousands of trademarked domain names. Given the notable absence of alternative rationales presented here, the most reasonable explanation for Respondent’s insistence on purchasing a huge number of trademarked domain names at significant cost is that Respondent intends to benefit somehow from “the underlying value of Complainant’s trademark… [which] is grounded in the right of Complainant to use its mark to identify itself as a source of goods or services.” Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (WIPO May 1, 2000). Such behavior constitutes registration and use in bad faith.

 

It seems likely that Respondent hopes to “rent” (or otherwise commercially provide) the use of the domain name to the legitimate owners of the mark; that Respondent has registered the domain names in order to prevent the legitimate owners of the trademark or service mark from reflecting the mark in a corresponding domain name; and that it intentionally attempts to attract users to its web-based service in a manner that is likely to result in confusion with the complainants’ marks as to the source, sponsorship, affiliation, or endorsement of the service. Respondent’s proposed disclaimer is not enough to rebut this strong inference of bad faith use.

 

In addition, Respondent’s argument that (so far) it is merely stockpiling domains rather than actively using them is insufficient to avoid a finding of bad faith use. See Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (WIPO Feb. 18, 2000). In addition, this argument seems to be in tension with Respondent’s assertions that it is actively planning to use the domain names as soon as its business model becomes operational.

 

DECISION

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

 

Accordingly, it is Ordered that the <dunkindonuts.email> and <baskinrobbins.email> domain names be TRANSFERRED from Respondent to Complainants.

 

 

Michael Albert, Panelist

Dated:  August 25, 2014