DD IP Holder LLC v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2008001908363
Complainant is DD IP Holder LLC (“Complainant”), represented by Steven M. Levy of FairWinds Partners LLC, Pennsylvania, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shopatdunkin.com>, registered with GoDaddy.com, LLC.
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 13, 2020; the Forum received payment on August 14, 2020.
On August 17, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <shopatdunkin.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 August 18, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 8, 2020 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@shopatdunkin.com. Also on August 18, 2020, 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 September 11, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
The Complainant is a franchised chain of coffee and baked goods shops. Complainant has rights in the DUNKIN’ trademark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,290,078, registered Feb. 12, 2013). Respondent’s <shopatdunkin.com> domain name is confusingly similar to Complainant’s DUNKIN’ trademark because it simply add the term “shop at” and the “.com” generic top-level domain (“gTLD”) to the trademark.
Respondent does not have any rights or legitimate interests in the <shopatdunkin.com> domain name because Respondent is not commonly known by the disputed domain name. Additionally, Respondent doesn’t use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain to redirect Internet users to a third-party website that attempts to distribute malware.
Respondent registered and uses the <shopatdunkin.com> domain name in bad faith. Respondent offers the domain name for sale at a price that far exceeds out-of-pocket registration costs. Additionally, Respondent has engaged in a long-standing pattern of bad faith domain name registrations. Further, Respondent’s use of the disputed domain name to aid in the distribution of malware evidences bad faith. Finally, Respondent had actual knowledge of Complainant’s rights in the DUNKIN’ trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 748,901 DUNKIN’ DONUTS (word), registered April 30, 1963 for restaurant services;
No. 1,159,354 DUNKIN’ DONUTS (fig), registered June 30, 1981 for goods in class 30; and
No. 4,290,078 DUNKIN’ (word), registered February 12, 2013 for services in class 43.
The Complainant is also the owner of the following European Union Trade Mark registration:
No. 000095380 DUNKIN’ (fig), registered January 20, 1999 for goods and services in classes 29, 30 and 42.
The disputed domain name was registered on May 26, 2020.
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 Complainant asserts rights in the DUNKIN’ trademark based upon the registration with the USPTO, as well as registration with the EUIPO. Registration of a trademark with the USPTO is generally sufficient to establish rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides evidence of registration of the DUNIKIN’ trademark with the USPTO (e.g., Reg. No. 4,290,078, registered Feb. 12, 2013), and the EUIPO (e.g., Reg. No. 000095380, registered Jan. 20, 1999). Thus, the Panel finds that Complainant has rights in the trademarks under Policy ¶ 4(a)(i).
Respondent’s <shopatdunkin.com> domain name is confusingly similar to Complainant’s DUNKIN’ trademark because it simply add the term “shop at” and the “.com” gTLD to the trademark. Addition of generic/descriptive terms and a gTLD is generally insufficient to overcome confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). 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.”). In this case, the generic added words only instruct the customer to shop at something that looks like the Complainant’s shops. Thus, the Panel finds that the disputed domain name is identical or confusingly similar to Complainant’s trademarks under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 does not have rights or legitimate interests in the <shopatdunkin.com> domain name because Respondent is not commonly known by the disputed domain name. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by a domain name under Policy ¶ 4(a)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). The WHOIS information of record notes “Carolina Rodrigues / Fundacion Comercio Electronico” as the registrant of the disputed domain name. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent doesn’t use the <shopatdunkin.com> domain for any bona fide offering of goods or services or legitimate noncommercial or fair use and instead uses the domain to redirect users to a third-party website that attempts to distribute malware. Use of a disputed domain name in connection with the distribution of malicious software is not bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii). See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”). Complainant notes that Internet users who access the disputed domain are redirected to a website that invites them to download malware under false pretenses. Complainant provides a screenshot of this resolving webpage. Thus, the Panel find that Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant argues that Respondent registered and uses the <shopatdunkin.com> domain name in bad faith because Respondent offers the domain name for sale at a price that far exceeds out-of-pocket registration costs. Registration of a domain name with intent to sell it suggests bad faith under Policy ¶ 4(b)(i). See loanDepot.com, LLC v. Expired domain caught by auction winner.***Maybe for sale on Dynadot Marketplace*** c/o Dynadot, FA 1786281 (Forum June 8, 2018) (“Complainant shows that Respondent offers the disputed domain name for sale for $950, no doubt above its out-of-pocket costs. The Panel finds that this constitutes bad faith under Policy ¶4(b)(i). ”). Complainant provides a screenshot of a website listing the disputed domain name for sale for $999 USD. Thus, the Panel agrees with Complainant and finds bad faith under Policy ¶ 4(b)(i).
Additionally, Complainant claims that Respondent has engaged in a long-standing pattern of bad faith domain name registration. A history of adverse UDRP decisions shows a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See Maurice Sporting Goods, Inc. v. Xiaodong Peng, FA1506001625928 (Forum Aug. 1, 2015) (finding that the respondent had engaged in bad faith pursuant to Policy ¶ 4(b)(ii) where the respondent had been unsuccessful in three previous UDRP cases). Here, Complainant notes that well over 100 UDRP cases have been successfully brought against Respondent and Complainant provides a sampling of these decisions. The Panel therefore finds bad faith registration and use pursuant to Policy ¶ 4(b)(ii).
Further, Complainant argues that Respondent registered and uses the <shopatdunkin.com> domain name in bad faith because Respondent uses the disputed domain name to aid in the distribution of malware. Use of a disputed domain name in connection with the distribution of malicious software supports a finding of bad faith under Policy ¶ 4(a)(iii). See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Forum June 9, 2015) (“In addition, Respondent’s undenied use of the websites resolving from the contested domain names to distribute malware and other malicious downloads further illustrates its bad faith in the registration and use of those domain names.”). As previously noted, Complainant provides a screenshot of the malware installer page resolving at the disputed domain. Therefore, the Panel finds bad faith registration and use under Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the DUNKIN’ trademark. Use of a famous trademark in a domain name may evidence actual knowledge of a Complainant’s rights in the trademark, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See 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).”). In this case, the Complainant argues that Respondent was on actual notice of Complainant’s rights in the DUNKIN’ trademark due to its global fame and Complainant’s extensive use of the trademark long before Respondent’s domain name registration. The Panel agrees that actual knowledge is apparent, and finds that Respondent registered and uses the disputed domain name in bad faith under 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 <shopatdunkin.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: September 21, 2020
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