DD IP Holder LLC v. Direct Privacy - 9e816 / Savvy Investments, LLC Privacy ID# 1026358
Claim Number: FA1901001826468
Complainant is DD IP Holder LLC (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Direct Privacy - 9e816 / Savvy Investments, LLC Privacy ID# 1026358 (“Respondent”), Wyoming, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dunkindonut.com>, registered with DNC Holdings, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on January 23, 2019; the Forum received payment on February 1, 2019.
On January 24, 2019, DNC Holdings, Inc. confirmed by e-mail to the Forum that the <dunkindonut.com> domain name (the Domain Name) is registered with DNC Holdings, Inc. and that Respondent is the current registrant of the name. DNC Holdings, Inc. has verified that Respondent is bound by the DNC Holdings, Inc. 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 February 5, 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@dunkindonut.com. Also on February 5, 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 28, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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
Complainant, DD IP Holder LLC, owns rights in the DUNKIN’ DONUTS mark, which represents its world famous franchised chain of coffee and baked goods shops. Complainant has rights in the DUNKIN’ DONUTS mark based upon its registration of that mark with the trademark authorities of the United States, the European Union, China and Japan. Copies of the registration certificates issued for the mark by these countries are attached to the Complaint as Exhibit E. Respondent’s Domain Name is confusingly similar to Complainant’s mark because it incorporates the mark in its entirety, merely omitting the letter “s,” and adding the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the Domain Name. It is not commonly known by the Domain Name and is not using it in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Rather, Respondent uses the Domain Name to host pay-per-click links to entities not related to Complainant, some of which are Complainant’s competitors.
Respondent registered and uses the Domain Name in bad faith. Respondent attempts to attract, for commercial gain, users to its web site by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of its web site, which features competing pay-per-click links. Respondent had actual knowledge of Complainant’s rights in the DUNKIN’ DONUTS mark prior to registering the disputed domain name. Further, Respondent has failed to respond to Complainant’s cease-and-desist demand letters. Finally, Respondent is a recognized cybersquatter who has engaged in a pattern of bad faith registration and use of domain names that are confusingly similar to trademarks in which it has no rights, as demonstrated by a number of adverse UDRP decsions.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 provides that in order to obtain an order cancelling or transferring a domain name, Complainant must prove each of the following three elements:
(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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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. 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 as follows with respect to the matters at issue in this proceeding.
Complainant has rights in the DUNKIN’ DONUTS mark based upon its registration of that mark with the governmental trademark authorities in China (Reg. No. 749,853 on June 7, 1995), and Japan (Reg. No. 3,325,312 on June 20, 1997). See, Complaint Exhibit E.[i] Registration of a mark with a governmental trademark authority is sufficient to establish a complainant’s rights in that mark for purposes of Policy ¶ 4(a)(i). Lilly A/S v. yiyi chen, FA 1704586 (Forum Jan. 5, 2017) (“Until March 23, 2016, the EUIPO was known as the Office for Harmonization in the Internal Market. Registration of a mark with the EUIPO (or any other similar governmental authority) is sufficient to establish rights in the mark.”).
Respondent’s Domain Name is confusingly similar to Complainant’s mark. It incorporates that mark in its entirety, merely omitting the apostrophe and the letter “s,” and adding the “.com” gTLD. These changes are not sufficient to distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Lockheed Martin Corporation v. toyosei maruyama, FA 1620489 (Forum July 7, 2015) (“Simply removing the letter ‘s’ from a mark in the creation of a domain name still creates a confusingly similar domain name.”), Macy’s Retail Holdings, Inc. and its subsidiary Macy's West Stores, Inc. v. jiangchunyuan, FA 1685126 (Forum Sept. 6, 2016) (holding that “removal of an apostrophe and addition of the gTLD “.com,” are not relevant to a confusing similarity analysis”).
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the DUNKIN’ DONUTS mark, in which Complainant has substantial and demonstrated rights.
Rights or Legitimate Interests
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to respondent of the dispute, respondent has used or has made 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; or
(ii) respondent (as an individual, business or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or
(iii) respondent is making a 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.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) it is not using the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use because it is using the name to divert Internet traffic to its web site, which features pay-per-click links to other entities, some of which compete with Complainant, and (ii) it is not commonly known by the Domain Name. These allegations are supported by competent evidence.
Complaint Exhibit F is a screen shot of the web site resolving from the Domain Name. It contains links to services some of which are unrelated to Complainant’s business and some of which compete directly with Complainant, such as coffee and franchises. Respondent’s web site consists of classic pay-per-click pages displaying links which divert visitors—likely Complainant’s customers and potential customers—to other web sites which are not associated with Complainant and, in some instances, may be owned by its competitors. UDRP Panels have found that leading consumers who are searching for a particular business to a site where the same or similar services provided by others are listed is neither a bona fide offering of goods and services as contemplated by Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use as contemplated by Policy ¶ 4(c)(iii). Health Level Seven International, Inc. v. McCarragher, FA 1723981 (Forum Apr. 28, 2017) (“Respondent’s domain name resolves to a page hosting pay-per-click advertising for Respondent’s commercial gain. The Panel therefore finds that Respondent has failed to use <hl7community.org> for a bona fide offering of goods or services, or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).”); Homer, TLC Inc. v. Lorna Kang, FA 573872 (Forum Nov. 22, 2005) (“Respondent’s use of a domain name that is identical to Complainant’s mark to divert Internet users to third-party websites for Respondent’s own commercial gain does not constitute a bona fide offering ... or a legitimate noncommercial or fair use ....”); 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).”).
The information furnished to Forum by the registrar lists the registrant of this Domain Name as “Direct Privacy – 9e816,” and the registrant organization as “Savvy Investments, LLC Privacy ID#1026358.” Neither of these names bears any resemblance to the Domain Name. UDRP panels have consistently held that evidence of a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). The Panel is satisfied that Respondent has not been commonly known by the Domain Name for the purposes of Policy ¶ 4(c)(ii).
Complainant has made its prima facie case. On the evidence presented, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of your web site or location or of a product of service on your web site or location.
The evidence of Respondent’s use of the Domain Name set forth above in the rights and legitimate interests analysis also supports a finding of bad faith use and registration of that domain, based upon the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, Respondent is clearly using the Domain Name to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web site, as described in Policy ¶ 4(b)(iv). Respondent is obtaining commercial gain from its use of the Domain Name and the resolving web site. When a visitor to this web site clicks on one of the links which appear there, Respondent receives compensation from the various website owners who are forwarded from the site. Most likely, Respondent receives compensation based upon the number of hits the web site owners get from being linked to Respondent’s web site. AllianceBernstein LP v. Texas International Property Associates - NA NA, Case No. D2008-1230 (WIPO, 2008), and Brownells, Inc. v. Texas International Property Associates, Case No. D2007-1211 (WIPO, 2007), (finding in similar cases that a respondent intentionally attempted to attract internet searchers for commercial gain). Respondent’s use of the Domain Name is commercial also because the various companies forwarded from the web sites benefit from the subsequent interest and purchases of those who visit the sites. UDRP Panels have held that there only needs to be commercial gain sought by some party for the use to be commercial. Focus Do It All Group v. Athanasios Sermbizis, Case No. D2000-0923 (WIPO, 2000) (finding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial).
Incorporated into the Amended Complaint paragraph V. (c) is a chart listing six UDRP administrative proceedings in which the respondents were ordered to transfer domain names they had registered. The respondents were all named “Savvy Investments LLC” followed by privacy ID number. Complainant argues that these respondents were all the same person as the Respondent in this case. All of the respondents in the cases listed, however, have different privacy ID numbers, and all of those numbers are different from the privacy ID number of the Respondent in this case. A history of adverse UDRP rulings against a respondent has been held to constitute evidence of bad faith registration and use within the meaning of Policy ¶ 4(b)(ii). Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“Complainant has provided evidence that Respondent has a history of UDRP and USDRP decisions decided against it. This establishes bad faith within the meaning of Policy ¶ 4(b)(ii).”). In this case, however, it appears that Savvy Investments LLC is the name of a privacy service, and that each of its customers is identified by its own privacy ID number. Because the privacy ID numbers of the respondents in the listed cases are different from each other and from that of the Respondent in this case, it is by no means certain that the Respondent here is the same person as any of those named as respondent in the listed cases. In fact, it seems more likely that all of the relevant respondents are different persons. Accordingly, the Panel rejects Complainant’s argument that the Respondent here has engaged in a pattern of bad faith registrations of domain names.
According to the WHOIS report submitted as Complaint Exhibit B, the Domain Name was created in January 2002. That Exhibit also contains information showing that at various times the Domain Name was owned by parties named “Site Admin” and “Future Movie Name.” See, Complaint Exhibits B-2 and B-3. There is no evidence of when the Domain Name may have been acquired by Respondent. That date, however, would necessarily have been after January 2002. Given Complainant’s fame and its long-standing, world-wide use of its DUNKIN’ DONUTS mark to market its services, even as of 2002, it is clear that Respondent had actual knowledge of Complainant’s mark when it acquired the Domain Name, and it is fair to infer that when it did so it intended to use the Domain Name in connection with the pay-per-click scheme it now uses. Indeed, it is evident that Respondent acquired it precisely because it does contain Complainant’s mark and would likely attract Internet traffic to its site. The Policy recognizes that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name has often been held to evidence bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name), AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). There is no reason to treat the acquisition of an infringing domain name with full knowledge of the rights of the holder of the relevant trademark any differently than the registration of a new domain name under the same circumstances.
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dunkindonut.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
Dated: March 4, 2019
[i] The U.S. and E.U. registrations for the mark are in the name of Dunkin’ Donuts of America, Inc., and Dunkin Donuts, Incorporated. There is no evidence of these registrations ever having been assigned to Complainant or of any other basis for Complainant to claim an interest in them. The Chinese and Japanese registrations are in the name of Complainant.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page