DD IP Holder LLC v. Phill Aspden
Claim Number: FA1502001603215
Complainant is DD IP Holder LLC (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Phill Aspden (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dunkin.coffee> ('the Domain Name'), registered with Uniregistrar Corp.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 3, 2015; the Forum received payment on February 17, 2015.
On February 4, 2015, Uniregistrar Corp. confirmed by e-mail to the Forum that the <dunkin.coffee> domain name is registered with Uniregistrar Corp. and that Respondent is the current registrant of the name. Uniregistrar Corp. has verified that Respondent is bound by the Uniregistrar Corp. 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 18, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 10, 2015 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@dunkin.coffee. Also on February 18, 2015, 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.
A timely Response was received and determined to be complete on March 10, 2015.
A timely Additional Submission was received from Complainant on March 16, 2015.
On March 25, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant's contentions can be summarised as follows:
Complainant owns the distinctive and famous DUNKIN and DUNKIN DONUTS trademarks and their corresponding logos used since 1954 in relation to coffee shops and products. It is now one of the world's largest franchised chains of coffee and baked goods shops with 11,000 restaurants in 33 countries. As a result of Complainant's long usage and promotion of its marks they have become famous and widely recognised around the world. Complainant owns registered trademarks around the world, including DUNKIN in the U.S., first registered in 1981 for baked goods, and DUNKIN COFFEE registered in 2013 as a CTM device mark for its services.
The Domain Name is confusingly similar to the Complainant's registered trademarks which existed long prior to the registration of the Domain Name in 2015.
Use of the .coffee extension will make visitors think they are being linked to one of the Complainant's legitimate sites as coffee is one of the primary products sold by the Complainant.
The mere addition of a gTLD to a famous trade mark does not avoid confusing similarity.
Respondent's actions are not a bona fide offering of goods and services under the Policy. Where a domain is identical or confusingly similar to a well-known trademark yet it resolves to a meaningless static page panels have held that no legitimate interest exists on the part of a Respondent. The website attached to the Domain Name is a static page which has not changed in nine months and there have been no posts to the 'coffee dunkers blog'. The only live link on the site is to a Tumblr.com page which was also last updated nine months ago which merely shows a copy of the web site and the words 'That's about it for dunkinmycoffee. Try another search?'
Whilst the Respondent indicated it would transfer the Domain Name, the Respondent has gone silent and the dispute was not settled. However this shows that the Respondent has no intent to use the name for any bona fide purpose.
Respondent is not commonly known by the Domain Name. and does not own any trademark rights in the DUNKIN name. It is not making a legitimate non-commercial or fair use of the Domain Name. It is using the Domain Name to mislead and confuse customers who might think that the Complainant is not updating its web site properly or has gone out of business which is damaging to the Complainant's business.
Respondent registered the Domain Name in bad faith. Passive or non-use of a domain name can constitute bad faith.
Respondent does not conduct any legitimate activity under the Domain Name, but has clearly made an effort to give the impression that the domain is used for the generic meaning of the word 'dunking' or its slang equivalent 'dunkin'. But the site is so overwhelmingly contrived that it seems highly likely that the Respondent created and used the domain in an attempt to divert users and gain the attention of the Complainant with the intent of settling at a significant windfall.
Since the Respondent found out about this dispute it has modified its web site at the Domain name to add ineffective disclaimers. Changes after notice of the dispute are insufficient to cure a prior bad faith use of that name.
B. Respondent
Respondent's submissions can be summarised as follows:
The Respondent attempted to hand over the Domain Name for free after the shock of the enormity of the Complainant, the daunting contact by NAF and receipt of the quantity of documentation prepared by the Complainant's attorney. However after thorough review of the documentation the Respondent concludes that he has not done anything wrong. The Respondent looks to the panel to help resolve the matter without the need for contracts.
The Respondent registered the Domain Name ten and a half weeks after it was released for purchase and nearly two weeks after the 'sunrise period'. The Respondent assumed that the Domain Name was not wanted and, therefore, he was within his rights to register it freely and make use of it. The Respondent understood that anyone can register a domain. When he registered it the Respondent was not asked to produce evidence of any particular rights or needs which he felt he had over the Domain Name.
The Respondent decided to post an eccentric blog/twitter on the Domain Name but has failed to maintain it over the past ten months. This is not bad faith but demonstrates that he has other more important priorities to attend to in his day-to-day life. The Respondent has remedied this through use of a Twitter widget which allows for more regular updates. Not posting frequently is not bad faith.
The Respondent's blog does not represent malice, sabotage, or an activity designed to take or confuse the Complainant's customer base. At no point has the Respondent attempted to seek revenue from the site by advertising or onward sale of the Domain Name The site has not been used to set up a rival business to the Complainant, to interfere or try to manipulate any searchers who might have been looking for the Complainant, engaged in search optimisation activities to become more visible on search engines, to present the site as having a common source, affiliation or endorsement from any other brand or business or attempt to convey any message that any other business is succeeding or failing.
Being the owner of a registered trademark does not automatically entitle you to use of that mark as a domain name.
Respondent questions seriousness of claims of confusion given the size of the Complainant and points to the fact that the Respondent has put disclaimers on the site to address such concerns.
The Complainant would only accept a solution between the parties involving a contract, but the Respondent had not desired to sign anything with the Complainant. The settlement agreement that the Complainant wanted the Respondent to sign seemed an unfair proposition give the relative size of the Parties. As such the Respondent ignored further correspondence and submits to the NAF procedure. The disclaimer on the web site seeks to address the exact concerns set out in the Complaint.
The Domain Name is the Respondent’s property and it should not be taken arbitrarily from the Respondent under the Universal Declaration of Human Rights.
The Respondent should be able to use the Domain Name for non-commercial purposes
The Respondent has not been advised to get independent legal advice and documents served on him were incorrectly numbered and confusingly written in what the Respondent deems to be an intent to mislead.
C. Additional Submissions
Contents of the Complainant’s Additional Submissions can be summarised as follows:
Where the Respondent has consented to the transfer of a disputed domain panels typically this is given great deference and the Panel orders a transfer of the domain, sometimes in a summary opinion.
Respondent has in multiple ways signalled his express consent to transfer. The Complainant sought to memorialise the agreement in an attempt to prevent cyberflight. Respondent has consented to the transfer of the Domain Name and the Complainant urges the Panel to order the same.
The Respondent's use is not generic or fair. The Respondent has chosen Orange as a background colour for its site which is one of the two main colours of the Complainant's trade dress.
The word dunkin is not a proper word, does not appear in dictionaries and is not in common use. DUNKIN is a proprietary trade mark and the dunkin.coffee domain strongly implies a connection therewith.
Respondent's use is simply a form of parking the domain name. It does not establish a blog or fair use.
The disclaimers to which the Respondent points are too late and do not add legitimacy to his actions. Changes to a web site after notice of a domain name dispute do not provide a respondent with any rights or legitimate interests as they are made solely in response to action taken by a brand owner. Adding a Twitter feed and a disclaimer does not make confusion less likely given the nature of the Domain Name and the other features of the Respondent's web site.
The Respondent is using a privacy shield and did not associate his name with the Domain Name or web site attached to it precluding him from gaining rights.
Respondent's registration of the Domain Name was reckless and was done with full knowledge of the DUNKIN mark, it's strong and close association with coffee. Since the filing of the Complainant the site has been linked to video loops showing placing of things such as a pencil, a finger, a denuded grape stalk and a piece of chocolate into what appear to be a mug of coffee. These videos are amateurish, hastily created and contrived to give the impression that the Respondent is making fair use of the name. They must be viewed with suspicion.
Regardless of whether the Respondent's web site shows no commercial activity the Domain Name and web site are likely to be confused with the Complainant. Such confusion plus a contrived reason for use is bad faith. Comments on the site will inevitably make reference to the Complainant causing harm.
Use of a privacy service supports the conclusion that the name was registered and has been used in bad faith.
The reference to the Universal Declaration of Human Rights is grasping at straws.
Complainant owns the well-known DUNKIN and DUNKIN DONUTS trademarks and their corresponding logos used since 1954 in relation to coffee shops and products. It is now one of the world's largest franchised chains of coffee and baked goods shops with 11,000 restaurants in 33 countries. As a result of Complainant's long usage and promotion of its marks they have become famous and widely recognised around the world. Complainant owns registered trademarks around the world, including DUNKIN in the U.S. first registered in 1981 for baked goods, and DUNKIN COFFEE registered in 2013 as a CTM device mark for its services.
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.
The Domain Name consists of the elements 'dunkin' and 'coffee'. As such it is identical to the Complainant's DUNKIN COFFEE registered mark (which is registered as a CTM for the Complainant's services and which whilst a logo mark is essentially a mark consisting of words with no device). Whilst generic gTLDs such as “.com” are generally not taken into account for a determination under this limb of the Policy due to their neutral quality, those that reference goods or services offered under the mark at issue may be taken into account. (See DD IP Holder LLC v Manpreet Badhwar, FA 1562029 (Nat. Arb. Forum July 14, 2014).
Accordingly, the Panel holds that the Domain Name is identical for the purposes of the Policy with a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied and further comparison of the Domain Name with the Complainant’s trade marks is not necessary.
The Respondent does not deny the Complainant's rights in its DUNKIN trademarks, nor does he deny knowledge of those rights prior to registration. Indeed, he appears to admit that he knew about those rights, but assumed that the Domain Name was not wanted when it was not registered during the Sunrise period and, therefore, that he was within his rights to register it freely and make use of it. The Respondent states that he understands that anyone can register a domain and appears to have drawn strength from the fact that when he registered the Domain Name he was not asked to produce evidence of any particular rights or needs which he felt he had over the Domain Name. Accordingly the Respondent appears to admit knowledge of the Complainant’s rights all along.
Unfortunately, for the Respondent it is well established under the Policy that registrants cannot register domain names identical to famous trademarks in the full knowledge of the reputation of those marks and passively hold them for their own purposes. See Twentieth Century Fox Film Corp v Risser, FA 93761 (Nat. Arb. Forum, May 18, 2000) (The requirement to show bad faith under the Policy does not require that positive action be shown on the part of the respondent. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names). The Panel agrees with the Complainant that the evidence shows that, in fact, the page attached to the Domain Name was in reality little more than a page at which the Domain Name was parked and the Respondent knew that the Domain Name equated to a mark in which the Complainant had rights and users may have an expectation that material at that Domain Name was related to the Complainant. As the Disclaimers were added after the dispute arose, the Panel is entitled to consider the effect of the site before the Complaint was filed and before this additional material was added.
As such the Panel holds that the Domain Name was registered and used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dunkin.coffee> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: April 8, 2015
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