DD IP Holder LLC v. Rehman Khan
Claim Number: FA1903001836222
Complainant is DD IP Holder LLC (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Rehman Khan (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <dunkindonuts-com.online> and <dunkindonuts-newyear.com>, registered with Namesilo, Llc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 27, 2019; the Forum received payment on April 3, 2019.
On March 28, 2019 and April 3, 2019, Namesilo, Llc confirmed by e-mail to the Forum that the <dunkindonuts-com.online> and <dunkindonuts-newyear.com> domain names are registered with Namesilo, Llc and that Respondent is the current registrant of the names. Namesilo, Llc has verified that Respondent is bound by the Namesilo, 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 April 9, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 29, 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@dunkindonuts-com.online and postmaster@dunkindonuts-newyear.com. Also on April 9, 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 30, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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 names be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <dunkindonuts-com.online> and <dunkindonuts-newyear.com> domain names are confusingly similar to Complainant’s DUNKIN’ DONUTS mark.
2. Respondent does not have any rights or legitimate interests in the <dunkindonuts-com.online> and <dunkindonuts-newyear.com> domain names.
3. Respondent registered and uses the <dunkindonuts-com.online> and <dunkindonuts-newyear.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is one of the world’s largest chains of coffee and baked goods franchises. Complainant holds a registration for the DUNKIN’ DONUTS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 748,901, registered Apr. 30, 1963).
Respondent registered the <dunkindonuts-com.online> and <dunkindonuts-newyear.com> domain names on January 7, 2019 and January 8, 2019, respectively. Respondent uses the disputed domain names in connection with a fake survey website used to distribute malware, to phish for Internet users’ Facebook login credentials, and to gain “Likes” on its own Facebook page.
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 Panel finds that Complainant has established rights in the DUNKIN’ DONUTS mark for the purposes of Policy ¶ 4(a)(i) through its registration with the USPTO (e.g. Reg. No. 748,901, registered Apr. 30, 1963). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”).
Respondent’s <dunkindonuts-com.online> and <dunkindonuts-newyear.com> domain names use Complainant’s mark and simply add a hyphen, the letters “com” or “newyear,” and a gTLD. The addition of generic terms and a gTLD fail to distinguish a domain name from a mark for the purposes of 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.”). Likewise, the addition or removal of punctuation and spaces between terms is irrelevant in Policy ¶ 4(a)(i) analysis. See Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”). The Panel therefore finds that Respondent’s <dunkindonuts-com.online> and <dunkindonuts-newyear.com> domain names are confusingly similar to Complainant’s DUNKIN’ DONUTS mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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”).
Complainant contends that Respondent has no rights or legitimate interests in the <dunkindonuts-com.online> and <dunkindonuts-newyear.com> domain names, as Respondent is not commonly known by the disputed domain names. Complainant has not authorized, licensed, or otherwise permitted Respondent to use the DUNKIN’ DONUTS mark. The WHOIS identifies “Rehman Khan” as the registrant for both domain names. Thus, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same); see also Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”).
Complainant argues that Respondent uses the disputed domain names in connection with a fake survey website used to distribute malware, phish for Internet users’ Facebook login credentials, and to gain “Likes” on its own Facebook page. Using a domain name in connection with a survey site, a phishing site, and/or to distribute malware can evince a failure to use a domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Homer TLC, Inc. v. Wang, FA 1336037 (Forum Aug. 23, 2010) (holding that, where a disputed domain name purports to offer Internet users a gift card as compensation for filling out surveys, the respondent’s use of the disputed domain name amounts to neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Wells Fargo & Co. v. WhoisGuard, FA 1103650 (Forum Dec. 13, 2007) (“There is no dispute that respondent previously used the disputed domain name to obtain personal and financial information from Internet customers of complainant. This fraudulent use [is] known as ‘phishing’”); see also Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017) (“Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii).”). Complainant provides various screenshots of the resolving webpages associated with the disputed domain names, which show an initial threat detected, followed by a survey related to the DUNKIN’ DONUTS mark, and a Facebook “Share” or “Like” button, followed by a Facebook login page. The Panel therefore finds that Respondent’s use of the disputed domain names fails to confer rights and legitimate interests in the domain names under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent is likely obtaining commercial gain from its use of the disputed domain names as a survey site by either harvesting users’ Facebook login credentials or by gaining “Likes” on its own Facebook page. Using a confusingly similar domain name to commercially benefit through a survey site and/or phishing scheme can evince bad faith under Policy ¶ 4(b)(iv). See Capital One Financial Corp. v. Mai Erne / Hara Partners, FA1505001617710 (Forum June 12, 2015) (“Here, the Panel agrees that Internet users’ completion of the fields included on the resolving site in question is equivalent to a survey, and conjures a similar presumed reward/payoff in the minds of misled Internet users and therefore is an indication of Policy ¶ 4(b)(iv) bad faith.”); see also Wells Fargo & Co. v. Maniac State, FA 608239 (Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers). Accordingly, the Panel agrees that Respondent attempts to commercially benefit off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Complainant shows that Respondent likely uses the domain names to distribute malware. Using a domain name to install malware onto an Internet users’ computer evinces 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)”). Accordingly, the Panel finds that Respondent’s use of the disputed domain names in connection with malware constitutes bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the DUNKIN’ DONUTS mark at the time of registering the <dunkindonuts-com.online> and <dunkindonuts-newyear.com> domain names. Complainant contends that Respondent’s knowledge can be inferred given Complainant’s longstanding and extensive use of the mark in commerce. The Panel agrees and finds that Respondent had actual knowledge of Complainant’s mark, demonstrating bad faith registration under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”).
The Panel finds that Complainant has satisfied 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 <dunkindonuts-com.online> and <dunkindonuts-newyear.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 1, 2019
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