DD IP Holder LLC v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA2010001917909
Complainant is DD IP Holder LLC (“Complainant”), represented by Steven M. Levy, District of Columbia, USA. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dunkindouts.com>, registered with Media Elite Holdings Limited.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 22, 2020; the Forum received payment on October 22, 2020.
On October 22, 2020, Media Elite Holdings Limited confirmed by e-mail to the Forum that the <dunkindouts.com> domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the name. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 October 23, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 12, 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@dunkindouts.com. Also on October 23, 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 November 18, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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
Complainant is the owner of the distinctive and famous DUNKIN’ DONUTS trademark and is one of the world’s largest franchised chains of coffee and baked goods shops. Complainant has rights in the DUNKIN’ DONUTS mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 0748901, registered April 30, 1963). Respondent’s <dunkindouts.com> is identical or confusingly similar to Complainant’s DUNKIN’ DONUTS mark as it omits the letter “n” in the word “Donuts” and adds the “.com” gTLD.
Respondent lacks rights or legitimate interests in the <dunkindouts.com> domain name. Respondent is not commonly known by the disputed domain name nor has Respondent been authorized by Complainant to use the DUNKIN’ DONUTS mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as the disputed domain name previously resolved to a pay-per-click webpage displaying links which diverted visitors to other websites not associated with Complainant. Furthermore, the disputed domain name currently does not resolve to any website content.
Respondent registered and uses the <dunkindouts.com> domain name in bad faith. Respondent previously used the disputed domain name to resolve to a website hosting pay-per-click links while the current resolving website has no substantive content. Furthermore, Respondent engaged in typosquatting as Respondent omits the second letter “n” from the word “Donuts” in the <dunkindouts.com> domain name. Lastly, Respondent had actual knowledge of Complainant’s rights to the DUNKIN’ DONUTS mark based on the famous nature of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of the distinctive and famous DUNKIN’ DONUTS trademark and is one of the world’s largest franchised chains of coffee and baked goods shops. Complainant has rights in the DUNKIN’ DONUTS mark through Complainant’s registration of the mark with the USPTO (e.g. Reg. No. 0748901, registered April 30, 1963). Respondent’s <dunkindouts.com> is confusingly similar to Complainant’s DUNKIN’ DONUTS mark as it omits the letter “n” in the word “Donuts” and adds the “.com” gTLD.
Respondent registered the <dunkindouts.com> domain name on July 9, 2006.
Respondent lacks rights or legitimate interests in the <dunkindouts.com> domain name. The disputed domain name previously resolved to a pay-per-click webpage displaying links which diverted visitors to other websites not associated with Complainant. Currently, the disputed domain name does not resolve to any website content.
Respondent registered and uses the <dunkindouts.com> domain name 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:
(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”).
Complainant has rights in the DUNKIN’ DONUTS mark through registration of the mark with the USPTO (e.g. Reg. No. 0748901, registered April 30, 1963). 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).”).
Respondent’s <dunkindouts.com> is confusingly similar to Complainant’s DUNKIN’ DONUTS mark as it omits the second letter “n” in the word “Donuts” and adds the “.com” gTLD.
Respondent lacks rights or legitimate interests in the <dunkindouts.com> domain name as Respondent is not commonly known by the disputed domain name nor has Complainant authorized or licensed to Respondent any rights in the DUNKIN’ DONUTS mark. When a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); see also Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant of <dunkindouts.com> as “Domain Administrator / Fundacion Privacy Services LTD.” Therefore, Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Respondent previously failed to use the <dunkindouts.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii) as the disputed domain name previously resolved to a pay-per-click webpage displaying links which diverted visitors to other websites not associated with Complainant. See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”).
Respondent currently fails to use the <dunkindouts.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the disputed domain name does not now resolve to any website content. Failure to make active use of a disputed domain name is not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum Aug. 3, 2017).
Respondent registered and uses the <dunkindouts.com> domain name in bad faith as Respondent previously used the disputed domain name to resolve to a website hosting pay-per-click links while the current resolving website has no substantive content. Using a confusingly similar domain name to host pay-per-click hyperlinks or failing to make use of the domain name demonstrates bad faith per Policy ¶4(b)(iv). See Tumblr, Inc. v. Ailing Liu, FA1402001543807 (Forum Mar. 24, 2014) (“Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links and advertisements unrelated to complainant’s business and respondent is likely collecting fees.”)).
Respondent also engaged in typosquatting as Respondent omits the second letter “n” from the word “Donuts” in the <dunkindouts.com> domain name. Use of a domain name to engage in typosquatting is evidence of bad faith under Policy ¶ 4(a)(iii). See Homer TLC, Inc., FA 1623825 (Forum July 20, 2015) (“Typosquatting is independent evidence of bad faith in the registration and use of a domain name.”).
Finally, Respondent registered and uses the <dunkindouts.com> domain name with actual knowledge of Complainant’s rights in the DUNKIN’ DONUTS mark. Therefore, Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii). See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that the respondent had actual knowledge of the complainant’s EXXON mark given the worldwide prominence of the mark and thus the respondent registered the domain name in bad faith).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dunkindouts.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
November 30, 2020
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