DD IP Holder LLC v. Maddisyn Fernandes / Fernandes Privacy Holdings
Claim Number: FA1709001748952
Complainant is DD IP Holder LLC (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Maddisyn Fernandes / Fernandes Privacy Holdings (“Respondent”), Bolivia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <dunkindonnuts.com>, <dunkindonutd.com>, and <dunkundonuts.com> registered with Internet Domain Service BS Corp, and <dunkindonute.com>, registered with TLD Registrar Solutions Ltd.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 14, 2017; the Forum received payment on September 14, 2017.
On September 19, 2017, Internet Domain Service BS Corp and TLD Registrar Solutions Ltd. confirmed by e-mail to the Forum that the <dunkindonnuts.com>, <dunkindonutd.com>, <dunkundonuts.com> and <dunkindonute.com> domain names are registered with Internet Domain Service BS Corp and TLD Registrar Solutions Ltd. and that Respondent is the current registrant of the names. Internet Domain Service BS Corp and TLD Registrar Solutions Ltd. have verified that Respondent is bound by the Internet Domain Service BS Corp and TLD Registrar Solutions Ltd. 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 September 26, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 16, 2017 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@dunkindonnuts.com, postmaster@dunkindonutd.com, postmaster@dunkundonuts.com, postmaster@dunkindonute.com. Also on September 26, 2017, 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 October 18, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant, operating under the DUNKIN’ DONUTS mark, sells coffee and baked goods from shops worldwide.
Complainant holds a registration for the DUNKIN’ DONUTS mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 748,901, registered April 30, 1963, and most recently renewed April 4, 2013.
Respondent registered the domain name <dunkindonnuts.com> on October 2, 2005, the domain name <dunkindonutd.com> on January 9, 2006, the domain name <dunkundonuts.com> on February 10, 2009, and the domain name <dunkindonute.com> on November 6, 2013.
All of the domain names are confusingly similar to Complainant’s DUNKIN’ DONUTS mark.
Respondent has not been commonly known by any of the domain names.
Respondent is not affiliated with Complainant in any capacity.
Complainant has not licensed or otherwise authorized Respondent to use the DUNKIN’ DONUTS mark.
Respondent is not making a bona fide offering of goods or services by means of, or a legitimate non-commercial or fair use of, any of the domain names.
The domain names resolve to websites that redirect users, through a technique known as fast flux DNS (“FFDNS”), to a rotating series of third-party websites, some of which attempt to install malware onto Internet users’ computers in order to facilitate “phishing,” “hacking” or other illicit activity.
Respondent does not have rights to or legitimate interests in any of the domain names.
Respondent is well-known cyber-squatter who has engaged in a pattern of bad faith registration of domain names infringing upon the trademarks of third-parties, as is evidenced by multiple UDRP decisions in which it was required to transfer domain names to complaining mark holders.
Respondent’s use of the domain names is an attempt to attract internet users to Respondent’s websites for its commercial gain, presumably from the receipt of click-through fees.
The domain names are instances of typo-squatting, which involves taking advantage of common typing errors made by Internet users in entering into their web browsers the names of enterprises with which they wish to do business.
Respondent knew of Complainant and its rights in the DUNKIN’ DONUTS mark when it registered the domain names.
Respondent registered and is using the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain names; and
(3) the same domain names were registered and are being used by Respondent in bad faith.
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:
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in the DUNKIN’ DONUTS service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Bolivia). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s challenged <dunkindonnuts.com>, <dunkindonutd.com>, <dunkundonuts.com> and <dunkindonute.com> domain names are each confusingly similar to Complainant’s DUNKIN’ DONUTS mark. The domain names incorporate the mark in its entirety, eliminating the apostrophe and the space between its terms, misspelling the terms “dunkin” and/or “donuts” and adding the generic Top Level Domain (“gTLD”) “.com”. These alterations of the mark, made in forming the domain names, does not save them from the realm of confusing similarity under the standards of the Policy. See Acme Lift Company, L.L.C. v. VistaPrint Technologies Ltd, FA 1607039 (Forum April11, 2015):
Where a respondent has created a domain name in an effort to visually deceive Internet users via a simple misspelling (and when such misspellings are visually similar to the mark), a finding of confusing similarity under Policy ¶ 4(a)(i) is appropriate.
See also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Forum April 9, 2007):
Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by any of the domain names
<dunkindonnuts.com>, <dunkindonutd.com>, <dunkundonuts.com> and dunkindonute.com>, that Respondent is not affiliated with Complainant in any capacity, and that Complainant has not licensed or otherwise authorized Respondent to use the DUNKIN’ DONUTS mark. Moreover, the pertinent
WHOIS information identifies the registrant of each of the domain names only as “Maddisyn Fernandes” of “Fernandes Privacy Holdings,” which does not resemble any of the domain names. On this record, we must conclude that Respondent has not been commonly known by any of the disputed domain names so as to have acquired rights to or legitimate interests in any of them within the ambit of Policy ¶ 4(c)(ii). See, for example, Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Forum Nov. 17, 2003), finding that, given the WHOIS contact information for a disputed domain name, a panel was justified in inferring that a respondent was not commonly known by that domain name in any derivation.
We next observe that Complainant asserts, without objection from Respondent, that each of the domain names <dunkindonnuts.com>, <dunkindonutd.com>, <dunkundonuts.com> and <dunkindonute.com> resolves to a website that redirects Internet users to a rotating series of third-party websites, some of which attempt to install malware onto their computers. In the circumstances described in the Complaint, we may comfortably presume that Respondent attempts to profit financially from this use of the domain names. This employment of the domain names is neither a bona fide offering of goods or services by means of the domain names under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of them under Policy ¶ 4(c)(iii) so as to confirm in Respondent rights to or legitimate interests in any of them as provided in those subsections of the Policy. See MoneyGram International, Inc. v. Domain Admin / Whois Privacy Corp., FA1698585 (Forum, November 28, 2016).
Where a domain name redirects Internet users to a rotating series of webpages, such use does not demonstrate rights or legitimate interests within the meaning of the Policy.
See also 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 that attempted 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).”
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
It is apparent from the uncontested Complaint that Respondent has been a party respondent in as many as seventeen (17) prior UDRP proceedings in each of which it was found that Respondent registered and used in bad faith domain names there determined to be confusingly similar to the marks of complaining mark holders and in which those domain names were transferred to such mark holders. In the circumstances presented in this proceeding, that collection of cases is, under Policy ¶ 4(b)(ii), adequate proof of Respondent’s bad faith in registering the domain names <dunkindonnuts.com>, <dunkindonutd.com>, <dunkundonuts.com> and <dunkindonute.com>. See The Toronto-Dominion Bank v. Ryan G Foo, FA1408001576648 (Forum January 12, 2015). To the same effect, see also N.H. Sweepstakes Comm’n v. We Web Well, Inc., FA 197499 (Forum November 3, 2003).
As to Complainant’s undenied assertion that Respondent uses the disputed <dunkindonnuts.com>, <dunkindonutd.com>, <dunkundonuts.com> and <dunkindonute.com> domain names to distribute malware to the computers of unsuspecting Internet users, under Policy ¶ 4(b)(iv) that too demonstrates Respondent’s bad faith in registering and using the domain names. See Google, Inc. v. Petrovich, FA 1339345 (Forum September 23, 2010).
It is also plain from the record that each of the <dunkindonnuts.com>, <dunkindonutd.com>, <dunkundonuts.com> and <dunkindonute.com> domain names is an instance of typo-squatting, which is the practice of creating domain names that are misspellings of the marks of others by incorporating in them common typing errors made by Internet users in entering into their web browsers the names of enterprises with which they wish to do business online.
Typo-squatting for illicit gain is a species of fraud that bespeaks bad faith in the registration and use of the domain names thus created. See Webster Financial Corporation and Webster Bank, National Association v. IS / ICS INC, FA 16070016833 (Forum August 11, 2016). See also Gap Inc. and its subsidiary, Old Navy (Apparel), LLC v. Jiri Capcuch, FA1405001562139 (Forum July 2, 2014): “Respondent’s typosquatting is, in itself, evidence of bad faith under Policy ¶ 4(a)(iii).”
Finally, under this head of the Policy, we are persuaded by the evidence that Respondent knew of Complainant and its rights in the DUNKIN’ DONUTS mark when Respondent registered the <dunkindonnuts.com>, <dunkindonutd.com>, <dunkundonuts.com> and <dunkindonute.com> domain names. This further shows Respondent’s bad faith in registering those domain names. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014). See also Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012). Further see Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum April 10, 2006).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <dunkindonnuts.com>, <dunkindonutd.com>, <dunkundonuts.com>, and <dunkindonute.com> domain names, and each of them, be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 23, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page