DD IP Holder LLC v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA1903001835047
Complainant is DD IP Holder LLC (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dunlindonuts.com>, registered with Media Elite Holdings Limited.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 20, 2019; the Forum received payment on March 20, 2019.
On March 22, 2019, Media Elite Holdings Limited confirmed by e-mail to the Forum that the <dunlindonuts.com> domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the name. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 March 22, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 11, 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@dunlindonuts.com. Also on March 22, 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 12, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant is one of the world’s largest franchised chains of coffee and baked goods shops. Complainant has rights in the DUNKIN’ DONUTS mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 748,901, registered Apr. 30, 1963). See Compl. Ex. E. Respondent’s <dunlindonuts.com> domain name is confusingly similar to Complainant’s DUNKIN’ DONUTS mark as the domain name incorporates the mark in its entirety, while misspelling the mark and adding a “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <dunlindonuts.com> domain name. Respondent is not authorized to use Complainant’s DUNKIN’ DONUTS mark 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 a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to redirect users to a rotating series of third-party websites, either to install malware or commercially benefit from unrelated pay-per-click links.
Respondent registered and uses the <dunlindonuts.com> domain name in bad faith. Respondent has engaged in a pattern of bad faith registration as Respondent has a history of adverse UDRP decisions. Respondent also attempts to attract, for commercial gain, users to the disputed domain name where it generates revenue from unrelated pay-per-click links. Respondent’s bad faith is further demonstrated by its use of the domain name to install malware. Respondent also failed to respond to Complainant’s cease and desist letters. Finally, Respondent had actual knowledge of Complainants rights in the DUNKIN’ DONUTS mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is one of the world’s largest franchised chains of coffee and baked goods shops.
2. Complainant has established its trademark rights in the DUNKIN’ DONUTS mark through its registrations of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 748,901, registered Apr. 30, 1963).
3. Respondent registered the <dunlindonuts.com> domain name on March 23, 2009.
4. Respondent uses the disputed domain name to redirect users to a rotating series of third-party websites, either to install malware or commercially benefit from unrelated pay-per-click links.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the DUNKIN’ DONUTS mark based upon registration of the mark with the USPTO (e.g., Reg. No. 748,901, registered Apr. 30, 1963). See Compl. Ex. E. Registration of a mark with the USPTO is sufficient to establish rights in that mark. 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). The Panel therefore holds that Complainant’s registration of the DUNKIN’ DONUTS mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s DUNKIN’ DONUTS mark. Complainant argues Respondent’s <dunlindonuts.com> domain name is confusingly similar to the DUNKIN’ DONUTS mark, as the name the disputed domain name contains a misspelling of the mark, merely replacing the letter “k” and a “l,” and adds a “.com” gTLD. The Panel also notes that the disputed domain name also removes an apostrophe from the mark. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Klein Tools, Inc. v chenxinqi, FA 1617328 (Forum July 6, 2018) (finding that the <klentools.com> domain name is confusingly similar to the KLEIN TOOLS mark as it contains the entire BANK OF AMERICA mark and merely omits the letter “l” and adds the “.com” generic top-level domain (“gTLD”)); see also SPTC, Inc. and Sotheby’s v. Kathleen Kim, FA 1734152 (Forum July 14, 2017) (“Respondent’s <sotheebys.com> domain name is identical or confusingly similar to Complainant’s mark because it merely appends the gTLD “.com” to a misspelled version of Complainant’s SOTHEBY’S mark, less the apostrophe.”). The Panel therefore determines that the <dunlindonuts.com> domain name is confusingly similar to the DUNKIN’ DONUTS mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s DUNKIN’ DONUTS trademark and to use it in its domain name, effecting a slight misspelling of the mark that does not negate the confusing similarity with Complainant’s trademark;
(b) Respondent registered the <dunlindonuts.com> domain name on March 23, 2009;
(c) Respondent uses the disputed domain name to redirect users to a rotating series of third-party websites, either to install malware or commercially benefit from unrelated pay-per-click links;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <dunlindonuts.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the DUNKIN’ DONUTS mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. 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).”). The WHOIS information of record identifies the registrant of the at-issue domain name as “Domain Administrator / Fundacion Privacy Services LTD” or “Carolina Rodrigues,” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <dunlindonuts.com> domain name;
(f) Complainant argues Respondent’s lack of rights or legitimate interests in the <dunlindonuts.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends Respondent uses the disputed domain name to redirect users to a rotating series of third-party websites (“Automatic Rapid Redirection to Malware”), where Respondent distributes malicious software and generates click-through revenue from unrelated links. Use of a disputed domain name to either generate click-through revenue and/or 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).”); see also Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”). Complainant provides screenshots of the disputed domain name’s resolving websites which either shows that domain name resolves to Complainant’s website, a fake Adobe Flash Player update page, or a classic pay-per-click website. See Compl. F2-F7. The Panel agrees and finds that Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or for a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent’s registration of the <dunlindonuts.com> domain name 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 precedent, and such a pattern can indicate bad faith per Policy ¶ 4(b)(ii). 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 includes a list of prior UDRP cases where Respondent, Carolina Rodrigues, has been ordered to transfer ownership of domain names. See Compl. Ex. H. The Panel therefore determines that the registration and use of the <dunlindonuts.com> domain name is part of a pattern and is evidence of Respondent’s bad faith per Policy ¶ 4(b)(ii).
Secondly, Complainant contends that Respondent’s bad faith is indicated by its use of the <dunlindonuts.com> domain name to link to third party websites. Use of a domain name to resolve to a page of third-party links can demonstrate a respondent’s bad faith per Policy ¶ 4(b)(iv). See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). The Panel recalls that Complainant contends the domain name occasionally resolves to a webpage displaying links to third party websites, as the disputed domain name is part of a rotating series of webpages. See Compl. Ex. F3-F4. The Panel therefore finds that Respondent has registered and used the domain name in bad faith per Policy ¶ 4(b)(iv).
Thirdly, Complainant argues Respondent’s bad faith is demonstrated by its use of the <dunlindonuts.com> domain name to install malware on users’ computers. Use of a disputed domain name to distribute harmful software may indicate bad faith under Policy ¶ 4(a)(iii). See Asbury Communities, Inc. v. Tiffany Hedges, FA 1785054 (Forum June 18, 2018) (“The Panel here finds that Respondent [installation of malware] further support the conclusion that Respondent registered and used the <asburymethodistvillage.com> domain name in bad faith under Policy ¶ 4(a)(iii)”). Complainant provides screenshots of the disputed domain name’s resolving websites which either shows that domain name resolves to Complainant’s website, a fake Adobe Flash Player update page, or a classic pay-per-click website. See Compl. F2-F7. Complainant contends that these webpages are being used to download harmful software of users’ computers. Id. The Panel agrees and finds that Respondent’s use of the disputed domain name constitutes bad faith per Policy ¶ 4(a)(iii).
Fourthly, Complainant also contends that in light of the fame and notoriety of Complainant's DUNKIN’ DONUTS mark, it is inconceivable that Respondent could have registered the <dunlindonuts.com> domain name without actual knowledge of Complainant's rights in the mark. The Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name. Actual knowledge is adequate evidence of 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 agrees and finds that Respondent had actual knowledge of Complainant’s rights in the mark and thus registered the name in bad faith.
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the DUNKIN’ DONUTS mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dunlindonuts.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 14, 2019
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