DD IP Holder LLC v. Robert Stewart / HUSH IP LLC
Claim Number: FA1901001824543
Complainant is DD IP Holder LLC (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Robert Stewart / HUSH IP LLC (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dunkindomuts.com>, registered with Key-Systems GmbH.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 10, 2019; the Forum received payment on January 22, 2019.
On January 14, 2019, Key-Systems GmbH confirmed by e-mail to the Forum that the <dunkindomuts.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 January 23, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 12, 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@dunkindomuts.com. Also on January 23, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On February 15, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <dunkindomuts.com> domain name is confusingly similar to Complainant’s DUNKIN DONUTS mark.
2. Respondent does not have any rights or legitimate interests in the <dunkindomuts.com> domain name.
3. Respondent registered and uses the <dunkindomuts.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, DD IP Holder LLC, operates coffee shops and sells coffee and related products internationally under its DUNKIN and DUNKIN DONUTS marks. Complainant holds a registration for the DUNKIN DONUTS mark with the United States Patent and Trademark Office (“USTPO”) (Reg. No. 748,901, registered Apr. 30, 1963).
Respondent registered the <dunkindomuts.com> domain name on March 6, 2016, and uses it to resolve to a website featuring pay-per-click links, including for Complainant’s competitors.
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 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 (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.”).
The Panel finds that Complainant has rights in the DUNKIN’ DONUTS mark under Policy ¶ 4(a)(i) based upon its registration of the mark with the USTPO. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
Respondent’s <dunkindomuts.com> domain name includes the DUNKIN DONUTS mark, changes a single letter, and adds a gTLD. These changes do not distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Omaha Steaks International, Inc. v. DN Manager / Whois-Privacy.Net Ltd, FA 1610122 (Forum July 9, 2015) (“The domain name differs from the mark only in that the domain name substitutes the letter ‘a’ in the word ‘steak’ with the letter ‘c’ and adds the generic Top Level Domain (‘gTLD’) ‘.com.’ These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.”). The Panel finds that Respondent’s <dunkindomuts.com> domain name is confusingly similar to Complainant’s DUNKIN DONUTS mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 lacks rights and legitimate interests in the <dunkindomuts.com> domain name and is not common known by the domain name. Respondent is not authorized to use Complainant’s DUNKIN DONUT mark. The WHOIS information of record identifies Respondent as “Robert Stewart / HUSH IP LLC.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name and thus lacks rights and legitimate interests in the <dunkindomuts.com> domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
Complainant further claims that Respondent fails to use the <dunkindomuts.com> domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair user under Policy ¶ 4(c)(iii) because Respondent uses the disputed domain name for pay-per-click links that direct users to Complainant’s competitors. Using a disputed domain name to display competing pay-per-click links generally fails to confer rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii). See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel finds that Respondent’s use of the <cheepcaribbean.com> name to promote links in competition with Complainant’s travel agency services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).”). Complainant provides a screenshot of Respondent’s resolving website, as well as the third party websites that the links direct to, including a link to the “Keurig” website, a direct competitor of Complainant. Complainant also argues that Respondent fails to make a bona fide offering or a legitimate noncommercial or fair use because Respondent attempts to divert users. Attempting to use a complainant’s mark to intentionally confuse and divert Internet users is not a bona fide offering or a legitimate noncommercial or fair use under the Policy. See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). The Panel finds that Respondent’s use of the disputed domain name fails to constitute a bona fide offering or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent engages in a pattern of bad faith registration based on prior adverse UDRP history. If a respondent has prior proceedings that resulting in findings of bad faith, this may evidence a pattern under the policy. See Sanlam Life Insurance Limited v. Syed Hussain / Domain Management MIC, FA 1787219 (Forum June 15, 2018) (finding bad faith per Policy ¶ 4(b)(ii) where the complainant provided evidence the respondent owned various domain names infringing on famous third-party marks; and also that the respondent had been ordered to transfer domain names in previous UDRP decisions). Complainant provides a list of cases where previous Panels have ordered Respondent to transfer domain names (e.g., The Toronto-Dominion Bank v. Robert Stewart / HUSH IP LLC, FA1819810 (Forum Jan. 7, 2018)). The Panel finds that this evinces a pattern of bad faith registration under Policy ¶ 4(b)(ii).
Complainant argues that Respondent registered and uses the <dunkindomuts.com> domain name in bad faith by using it to provide pay-per-click ads for directly competitive services. Using a domain name to provide pay-per-click links to competing services for commercial gain can evince bad faith under Policy ¶ 4(b)(iv). American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”). Accordingly, the Panel finds that Respondent registered and uses the <dunkindomuts.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant argues that it has extensively used its famous DUNKIN DONUTS mark internationally for many years and Respondent registered the disputed domain name to intentionally trade off the fame of Complainant’s mark. The Panel agrees and finds that Respondent had actual knowledge of Complainant’s rights in the DUNKIN DONUTS mark prior to registering the <dunkindomuts.com> domain name, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii). See Coachella Music Festival, LLC v. ALEXANDER DE ALMEIDA LOPES, FA 1705267 (Forum Jan. 9, 2017) (finding the respondent had actual knowledge of the complainant’s COACHELLA mark when it registered and used the <coachellastuff.com> domain name—and thus did so in bad faith—because the complainant presented adequate evidence that its mark was well-known and famous).
The Panel finds that Complainant has satisfied 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 <dunkindomuts.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: February 16, 2019
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