Dunkin’ Brands Group, Inc. / DD IP Holder LLC / BR IP Holder LLC v. Milen Radumilo
Claim Number: FA1903001833038
Complainant is Dunkin’ Brands Group, Inc. / DD IP Holder LLC / BR IP Holder LLC (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Milen Radumilo (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <dukindonuts.com> and <baskinrobbinsicecream.com>, registered with ChocolateChipDomains, LLC; Domaining Oro, LLC.
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 March 7, 2019; the Forum received payment on March 11, 2019.
On March 8, 2019, ChocolateChipDomains, LLC and Domaining Oro, LLC confirmed by e-mail to the Forum that the <dukindonuts.com> and <baskinrobbinsicecream.com> domain names are registered with ChocolateChipDomains, LLC and Domaining Oro, LLC and that Respondent is the current registrant of the names. ChocolateChipDomains, LLC and Domaining Oro, LLC have verified that Respondent is bound by the ChocolateChipDomains, LLC and Domaining Oro, LLC registration agreements 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 March 12, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 1, 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@dukindonuts.com, postmaster@baskinrobbinsicecream.com. Also on March 12, 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 April 2, 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 names be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <dukindonuts.com> and <baskinrobbinsicecream.com> domain names are confusingly similar to Complainant’s DUNKIN’ DONUTS and BASKIN-ROBBINS marks.
2. Respondent does not have any rights or legitimate interests in the <dukindonuts.com> and <baskinrobbinsicecream.com> domain names.
3. Respondent registered and uses the <dukindonuts.com> and <baskinrobbinsicecream.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is one of the largest franchised chains offering coffee and baked goods under the DUNKIN’ DONUTS mark, and ice cream under the BASKIN-ROBBINS mark. Complainant holds registrations for the DUNKIN’ DONUTS mark (Reg. No. 748,901, registered Apr. 30, 1963) and the BASKIN-ROBBINS mark (Reg. No. 1,371,672, registered Nov. 19, 1985) with the United States Patent and Trademark Office (“USPTO”).
Respondent registered the <dukindonuts.com> domain name on March 10, 2017, and the <baskinrobbinsicecream.com> domain name on May 11, 2016, and uses them to offer software services that install malware on the computers of users who visit the associated webpages.
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.”).
Preliminary Issue: Multiple Complainants
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are three Complainants in this matter: Dunkin’ Brands Group, Inc., DD IP Holder LLC, and BR IP Holder LLC. Complainants DD IP Holder LLC and BR IP Holder LLC are subsidiary business entities of Complainant Dunkin’ Brands Group Inc.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
The Panel finds that there is a sufficient nexus between the Complainants, and elects to treat them as a single entity in this proceeding; thus, the Complainants will be collectively referred to as “Complainant.”
The Panel finds that Complainant’s registration of the DUNKIN’ DONUTS and BASKIN-ROBBINS marks with the USPTO is sufficient to establish rights in the marks under Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark).
Respondent’s <dukindonuts.com> and <baskinrobbinsicecream.com> domain names incorporate one of Complainant’s marks in each of the domain names, omitting the letter “n” in DUNKIN’, omitting the hyphen and adding the generic term “ice cream” to BASKIN-ROBBINS, and adding the “.com” gTLD to both domain names. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See MTD Products Inc. v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (“Respondent arrives at each of the disputed domain names by merely misspelling each of the disputed domain names and adding the gTLD ‘.com.’ This is insufficient to distinguish the disputed domain names from Complainant’s trademark.”). Accordingly, the Panel finds that Respondent’s <dukindonuts.com> domain name is confusingly similar to Complainant’s DUNKIN’ DONUTS mark and its <baskinrobbinsicecream.com> domain name is confusingly similar to Complainant’s BASKIN-ROBBINS 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 has no rights or legitimate interests in the <dukindonuts.com> and <baskinrobbinsicecream.com> domain names, as Respondent is not commonly known by the domain names, nor has Complainant authorized Respondent to use the DUNKIN’ DONUTS or BASKIN-ROBBINS mark in any way. The WHOIS information of record identifies the registrant of the disputed domain names as “Milen Radumilo.” The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the <dukindonuts.com> or <baskinrobbinsicecream.com> domain names. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”).
Complainant further argues that Respondent’s lack of rights or legitimate interests in the <dukindonuts.com> and <baskinrobbinsicecream.com> domain names is demonstrated by its failure to use the domain names to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends that Respondent uses the disputed domain names to offer software downloads, which actually install malware. Use of a disputed domain name to distribute malware is not indicative of any rights or legitimate interests under Policy ¶¶ 4(c)(i) or (iii). See Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii).”). Complainant provides screenshots of the disputed domain names’ resolving website which prompts users to install Adobe software, but malware is installed instead. The Panel finds that this use is not a bona fide offering of goods or services or for a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent’s registration of the <dukindonuts.com> and <baskinrobbinsicecream.com> domain names is part of a pattern of bad faith registration and use of domain names. A pattern of bad faith registration can be established by a showing of prior adverse UDRP cases. See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). Complainant provides a list of prior UDRP cases where Respondent, Milen Radumilo, has been ordered to transfer ownership of domain names to the trademark holders. The Panel thus finds that the registration and use of the <dukindonuts.com> and <baskinrobbinsicecream.com> domain names is part of a pattern and is evidence of Respondent’s bad faith under Policy ¶ 4(b)(ii).
Complainant further argues Respondent’s bad faith is demonstrated by its use of the <dukindonuts.com> and <baskinrobbinsicecream.com> domain names to distribute malware. The Panel agrees and finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv). See United States Postal Service v. Dursun BAYRAK, FA 1788459 (Forum June 24, 2018) (“Respondent uses the at-issue domain name to reference various third party websites designed to distribute malware and perpetrate phishing schemes. For instance, on arrival at one of these websites visitors are presented with a notifications pretending to be from tech support that indicates that there are issues with the visitor’s PC that requires a payment to be fixed. Another pop-up window declares that ‘your computer has alerted us that it has been infected with a trojan and spyware’ and that personal information has been stolen. Fraudulent tech support services are offered to fix the contrived problems. Respondent’s use of the domain name is thus disruptive to Complainant’s business and indicates Respondent’s bad faith per Policy ¶¶ 4(b)(iii) and (iv), and otherwise.”).
Complainant also contends that, in light of the fame and notoriety of Complainant's DUNKIN’ DONUTS and BASKIN-ROBBINS marks, it is inconceivable that Respondent could have registered the <dukindonuts.com> and <baskinrobbinsicecream.com> domain names without actual knowledge of Complainant's rights in the mark. The Panel agrees and finds bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
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 <dukindonuts.com> and <baskinrobbinsicecream.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 3, 2019
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