DD IP Holder LLC v. Madalene Rosas
Claim Number: FA2102001932592
Complainant is DD IP Holder LLC (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Madalene Rosas (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names here in question are <dunkinrunsonyou.me> and <dunkinrunsonyou.org>, both registered with Porkbun LLC.
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 February 18, 2021, and the Forum received payment on February 18, 2021.
On February 18, 2021, Porkbun LLC confirmed by e-mail to the Forum that the <dunkinrunsonyou.me> and <dunkinrunsonyou.org> domain names are registered with Porkbun LLC and that Respondent is the current registrant of the names. Porkbun LLC has verified that Respondent is bound by the Porkbun 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 February 22, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 15, 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@dunkinrunsonyou.me, postmaster@dunkinrunsonyou.org. Also, on February 22, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 22, 2021, 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 operates a nationwide chain of coffee and donut shops.
Complainant holds registrations for the service marks DUNKIN’ and AMERICA RUNS ON DUNKIN’, which are on file with the United States Patent and Trademark Office (“USPTO”) as (for DUNKIN) Registry No. 4,290,078, registered February 12, 2013, and (for AMERICA RUNS ON DUNKIN’) Registry No. 3,399,798, registered March 18, 2008, renewed as of March 20, 2018.
Respondent registered the domain names <dunkinrunsonyou.me> and <dunkinrunsonyou.org> on October 3, 2020.
The domain names are confusingly similar to Complainant’s DUNKIN’ and AMERICA RUNS ON DUNKIN’ marks.
The domain names mimic Complainant’s own official online guest survey website, which uses the address <www.DunkinRunsOnYou.com>.
Respondent has not been commonly known by either of the domain names.
Respondent is neither licensed nor otherwise authorized by Complainant to use the DUNKIN’ or AMERICA RUNS ON DUNKIN’ marks.
Respondent does not use the domain names for a bona fide offering of goods or services or for a legitimate noncommercial or fair use.
Respondent lacks both rights to and legitimate interests in each of the domain names.
Respondent uses the <dunkinrunsonyou.me> domain name to display advertisements which disrupt Complainant’s business and to gain financially from diverting Internet users away from Complainant’s official website.
The <dunkinrunsonyou.org> domain name hosts no advertisements, but links back to itself to increase the search engine ranking for the website, which likewise disrupts Complainant’s business by diverting Internet users away from Complainant’s official website.
Respondent is a serial cyber-squatter who has displayed a pattern of bad faith registration of domain names.
Respondent provided false or misleading WHOIS information when registering the domain names.
Respondent registered the domain names with knowledge of Complainant’s rights in the DUNKIN’ and AMERICA RUNS ON DUNKIN’ marks.
Respondent both registered and now uses 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 to or legitimate interests in respect of the domain name; and
iii. the domain name was registered and is being used 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 as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, 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). But see 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’ and AMERICA RUNS ON DUNKIN’ service marks sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the marks with a national trademark authority, the USPTO. See, for example, Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017):
Complainant has rights in its … service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that both of the domain names <dunkinrunsonyou.me> and <dunkinrunsonyou.org> are confusingly similar to Complainant’s DUNKIN’ mark. Each incorporates the DUNKIN’ mark in its entirety, with only the deletion of its apostrophe, as well as the addition of the phrase RUNS ON from Complainant’s AMERICA RUNS ON DUNKIN’ mark and the transposition of two of its terms, as well as deletion of the spaces between its terms and substitution of “you” for AMERICA, plus the addition of the generic Top Level Domains (“gTLD’s”), “.me” in one case and “.org” in the other. These alterations of the marks, made in forming the domain names, do not save them from the realm of confusing similarity under the standards of the Policy.
As a starting point, we attach no significance to Respondent’s deletion of the spaces between the terms of one of Complainant’s marks or of an apostrophe in framing the domain names because domain name syntax does not permit the use of blank spaces or punctuation. See, for example, Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Forum February 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.
Similarly, Respondent’s inclusion of a gTLD in the domain names is of no consequence to our analysis because every domain name requires a gTLD or other TLD. See, for example, Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
The remaining elements of the domain names are merely a transposition of the terms of one of Complainant’s marks with the substitution of “you” for AMERICA. These linguistic gymnastics do not, either alone or in combination with the other elements already discussed, suffice to avoid a finding of confusing similarity because they do not erase the dominant impression that the inclusion of DUNKIN[‘] creates. Any doubt that might have existed in this regard is removed by the undenied allegations of the Complaint that one of the domain names mimics Complainant’s own online guest survey website, which is found at <www.DunkinRunsOnYou.com>. See, for example, Bayerische Motoren Werke AG v. Registration Private, Domains By Proxy, LLC, D2017-0156 (WIPO March 21, 2017):
[T]he content at the corresponding website serves to affirm a finding of confusing similarity.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the contested domain names, 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 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)(i)-(iii), 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 the challenged domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the DUNKIN’ and AMERICA RUNS ON DUNKIN’ marks. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Madalene Rosas,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the domain names to host monetized advertisements or to give the false impression that it runs a blog about Complainant’s official guest survey website. Neither of these uses is 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 it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Fox News Network, LLC v. Reid, D2002-1085 (WIPO February 18, 2003) (finding that a UDRP respondent’s use of a disputed domain name to profit from advertising revenue was not a bona fide offering of goods or services). See also Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum August 21, 2017):
Respondent uses the domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is 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).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
The record demonstrates that Respondent uses the <dunkinrunsonyou.me> domain name to display pay-per-click advertisements the operation of which disrupts Complainant’s business by diverting Internet users away from Complainant’s official website while producing financial gain for Respondent. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, ZIH Corp. v. ou yang lin q, FA1761403 (Forum December 29, 2017) (finding bad faith registration and use of a domain name where a respondent used it to disrupt a UDRP complainant’s business by diverting Internet users from that Complainant’s website to that respondent’s resolving website, from the operation of which that respondent acquired financial profit). See also 3M Company v. Nguyen Hoang Son / Business and Marketing, FA1575815 (Forum September 18, 2014) (finding that a respondent’s use of a disputed domain name to host sponsored advertisements at a resolving website, through which that respondent presumably profited, indicated that that respondent registered and used the domain name in bad faith within the meaning of Policy ¶ 4(b)(iv)).
The evidence in the record also makes clear that, while Respondent’s <dunkinrunsonyou.org> domain name hosts no advertisements, it does link back to itself to increase its search engine ranking for the resolving website, which likewise disrupts Complainant’s business by diverting Internet users away from Complainant’s official website. Under Policy ¶ 4(b)(iii), this too stands as proof of Respondent’s bad faith in registering and using that domain name. See, for example, PopSockets LLC v. san mao, FA 1740903 (Forum August 27, 2017) (finding, under Policy ¶ 4(b)(iii), bad faith in the registration and use of a challenged domain name from disruption of a UDRP complainant’s business, notwithstanding that there was no evidence that a respondent profited directly from the diversion of Internet users to its resolving website).
Finally, under this head of the Policy, it is plain from the structure of the <dunkinrunsonyou.me> and <dunkinrunsonyou.org> domain names, and from the use made of them, that Respondent registered them while knowing of Complainant and its rights in the DUNKIN’ and AMERICA RUNS ON DUNKIN’ marks. This further illustrates Respondent’s bad faith in registering them. See, for example, United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (finding that a respondent had actual knowledge of a UDRP complainant’s rights in the USPS mark “given the widespread use of Complainant’s mark and the fact that Respondent registered four separate domain names all of which include Complainant’s USPS mark in its entirety”).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
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 <dunkinrunsonyou.me> and <dunkinrunsonyou.org> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 29, 2021
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