Hurts Donut Company, LLC and T&C Ventures, LLC v. Jeremy Tyler
Claim Number: FA2103001939480
Complainant is Hurts Donut Company, LLC and T&C Ventures, LLC (“Complainant”), represented by Sada Sheldon, Esq. and Carl Khalil, Esq., Virginia, USA. Respondent is Jeremy Tyler (“Respondent”), Wisconsin, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hurtsdonut.com>, registered with Dreamhost, 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.
Paddy Tam as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 29, 2021; the Forum received payment on March 29, 2021.
On March 30, 2021, Dreamhost, Llc; confirmed by e-mail to the Forum that the <hurtsdonut.com> domain name is registered with Dreamhost, Llc; and that Respondent is the current registrant of the name. Dreamhost, Llc; has verified that Respondent is bound by the Dreamhost, 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 6, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 26, 2021 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@hurtsdonut.com. Also on April 6, 2021, 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. On the same day, Respondent sent an email to the Forum.
A timely Response was received and determined to be complete on April 26, 2021.
On April 28, 2021, Complainant submitted a supplemental filing to the Forum.
On April 29, 2021, Respondent sent an email to Complainant’s Representative. On the same day, Respondent submitted a supplemental filing to the Forum.
On April 30, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paddy Tam 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 runs a bakery and donut shop. Complainant has rights in the HURTS DONUT mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. HURTS DONUT Reg. 4,780,774, registered Jul. 28, 2015; WANNA HURTS DONUT? Reg. 4,185,109, registered Apr. 18, 2017). Complainant also claims common law rights in the mark dating back to 2013, when it filed its business name with the Missouri Secretary of State. Respondent’s <hurtsdonut.com> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and adds the “.com” generic top-level domain (“gTLD”) to the end of the mark.
Respondent lacks rights and legitimate interests in the <hurtsdonut.com> domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead hosts competing pay-per-click links on the disputed domain name’s resolving website. Respondent offers the disputed domain name for sale for $9999.
Respondent registered and uses the <hurtsdonut.com> domain name in bad faith. Respondent offers the disputed domain name for sale on its resolving website. Respondent disrupts Complainant’s business for commercial gain by hosting competing pay-per-click links on the disputed domain name’s resolving website.
B. Respondent
Respondent claims it had never heard of Complainant’s business. Respondent further argues that the term “Hurts Donut” is a well-recognized game, and describes the game. Complainant provides links to websites mentioning or demonstrating the game. Respondent claims it registered the disputed domain name to create a viral video database of the “Hurts Donut” game. Respondent will sell the disputed domain name to Complainant for $5000.
C. Additional Submissions
Complainant Additional Submissions
Complainant provides an additional email from Apr. 6, 2021, in which Respondent reportedly states that it bought the disputed domain name years ago, has not used it, enjoys Complainant’s donuts, and intended to do a review website of Complainant’s donuts. Complainant argues this email directly contradicts Respondent’s claim in its response claiming it had no knowledge of Complainant’s business at the time of registration. Respondent’s reassertion of willingness to sell the disputed domain name for $5000 demonstrates that Respondent registered the disputed domain for this purpose.
Respondent Additional Submission
Respondent, in a follow up additional submission, reaffirms the arguments in its original response. Respondent clarifies that the email provided by Complainant in its additional correspondence did not specifically say Respondent had a specific purpose at the time Respondent purchased the disputed domain name, nor does it state Respondent knew of Complainant when it registered the disputed domain name.
1. Complainant has been using “Hurts Donuts” as its company name since September 3, 2013;
2. Complainant applied for its state name registration on September 3, 2013;
3. Complainant has registered at least 2 trademarks namely HURTS DONUT and WANNA HURTS DONUT on July 28, 2015 and April 18, 2017 respectively;
4. Respondent registered the disputed domain name on January 1, 2014;
5. The website resolved by the disputed domain name provided links to potential competitors of Complainant;
6. The disputed domain name is for sale;
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.
To satisfy the first element under Policy ¶ 4(a), a Complainant needs to prove its rights in a trademark and the domain name is identical and/or confusingly similar to the trademark.
Complainant claims rights in the HURTS DONUT mark through its registrations with the USPTO (e.g. HURTS DONUT Reg. 4,780,774, registered Jul. 28, 2015; WANNA HURTS DONUT? Reg. 4,185,109, registered Apr. 18, 2017). By virtue of its federal trademark registrations, Complainant has proved that it has rights in the mark under Policy ¶ 4(a). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Accordingly, the Panel accepts that the Complainant has the registered Trademark rights in the HURTS DONUT mark.
Complainant argues that Respondent’s <hurtsdonut.com> domain name is identical or confusingly similar to its HURTS DONUT mark. Under Policy ¶ 4(a)(i), adding the “.com” gTLD is generally insufficient in differentiating a disputed domain name from the mark it incorporates. See Abt Elecs., Inc. v. Ricks, FA 904239 (Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). The disputed domain name incorporates the HURTS DONUT mark in its entirety and adds the “.com” gTLD.
For the foregoing reasons, the Panel finds the Complainant has satisfied Policy ¶ 4(a)(i).
To satisfy the second element under Policy ¶ 4(a), the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the domain names, and the burden of prove then shifts to the 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 argues that Respondent does not use the <hurtsdonut.com> domain name for any bona fide offering or legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to resolve to a website with competing pay-per-click links is generally not considered a bona fide offering of goods or services, nor any legitimate noncommercial or fair use. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Complainant provides screenshots of the disputed domain name’s resolving website, which features parked pay-per-click links related to or competing with Complainant’s business.
In addition, Complainant argues that Respondent has offered the <hurtsdonut.com> domain name for sale to the public for $9999 on its resolving website. Under Policy ¶ 4(a)(ii), an offer to sell a disputed domain name may demonstrate a lack of rights and legitimate interests in a disputed domain name. See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). Complainant provides a screenshot of the disputed domain name’s resolving website, which features an advertisement to buy the website for $9999.
The Panel finds that the Complainant has established a prima facie case and the burden of proof shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c):
(i) before any notice to Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent has been commonly known by the domain name, even if [Respondent has] acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Despite Respondent repeatedly claimed that it had never heard of Complainant and Hurts Donut is a well-recognized game, Respondent admitted that “I enjoy their donuts and bought the domain when I was bored years ago. Was going to do a review page of their donuts. I have no interest in the domain but would like the $5k out of it I paid for it.” Also considering the disputed domain name has not been developed to any website with meaningful content related to the game or review page in the past 7 years and Respondent fails to meet any of the requirements set forth under Policy ¶ 4(c), the Panel is of the view that Respondent fails to show that it has rights or legitimate interests in the disputed domain name.
For the foregoing reasons, the Panel finds the Complainant has satisfied Policy ¶ 4(a)(ii).
To satisfy the third element under Policy ¶ 4(a), the Complainant must prove both the registration and use of the disputed domain name is in bad faith.
Under Policy ¶ 4(a)(iii), actual knowledge is generally sufficient to establish bad faith, and may be demonstrated by Respondent incorporating a well-known mark into its disputed domain name. 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).”). Having considered Respondent allegedly claims that it planned to make a review website of Complainant’s products and the disputed domain name was registered shortly after Complainant applied for its state name registration in 2013, the Panel here accepts that Respondent did have actual knowledge of Complainant’s mark. Therefore, the Panel finds that Respondent registered the disputed domain name with bad faith under Policy ¶ 4(a)(iii).
Complainant also argues that Respondent uses the disputed domain name in bad faith by offering it for sale. Under Policy ¶ 4(b)(i), offering a disputed domain name for sale to the public or to a respondent, along with an offer being made immediately after a domain name’s registration may demonstrate bad faith registration and/or use, if Respondent registered the disputed domain name with the intent of selling it. See RetailMeNot, Inc. v. Domain Admin / Private Registrations Aktien Gesellschaft, FA1506001625879 (Forum Aug. 6, 2015) (finding that the respondent had listed the disputed domain name for sale at Go Daddy’s auction website for $11,706, which thus indicated bad faith under Policy ¶ 4(b)(i)). Complainant provides a screenshot of the disputed domain name’s resolving website, with an advertisement showing the domain name listed for sale for $9999. Complainant further argues that Respondent uses the <hurtsdonut.com> domain name for bad faith disruption for commercial gain. Under Policy ¶¶ 4(b)(iii) and (iv), where a Respondent uses a disputed domain name to resolve to a website with parked, competing, pay-per-click links may demonstrate bad faith disruption for commercial gain. See For Your Ease Only, Inc v. Expired domain caught by auction winner.***Maybe for sale on Dynadot Marketplace*** c/o Dynadot, FA 1791755 (Forum July 16, 2018) (“[T]he evidence shows that Respondent previously used the domain names to resolve to websites which hosted links to Complainant’s competitors; this demonstrates bad faith under Policy ¶¶ 4(b)(iii) and (iv).”). Therefore, the Panel finds that Respondent uses the disputed domain name in bad faith under Policy ¶ 4(b)(i) and ¶ 4(b)(iv).
For the foregoing reasons, the Panel finds the 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 <hurtsdonut.com> domain name be TRANSFERRED from Respondent to Complainant.
Paddy Tam, Panelist
Dated: May 4, 2021
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