DD IP Holder LLC v. Milen Radumilo
Claim Number: FA2103001935541
Complainant is DD IP Holder LLC (“Complainant”), represented by Steven M. Levy of FairWinds Partners LLC, District of Columbia, USA. Respondent is Milen Radumilo (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <dunkindoughnuts.us> and <dunkin-donut.us>, registered with CommuniGal Communication Ltd..
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 5, 2021; the Forum received payment on March 5, 2021.
On March 7, 2021, CommuniGal Communication Ltd. confirmed by e-mail to the Forum that the <dunkindoughnuts.us> and <dunkin-donut.us> domain names are registered with CommuniGal Communication Ltd. and that Respondent is the current registrant of the names. CommuniGal Communication Ltd. has verified that Respondent is bound by the CommuniGal Communication Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce usTLD Dispute Resolution Policy (the “Policy”).
On March 8, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 29, 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@dunkindoughnuts.us, postmaster@dunkin-donut.us. Also on March 8, 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 April 2, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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. Complainant is well-known with the operation of coffee shops and sale of coffee beans, ground coffee, and related products in the United States. Complainant has rights in the DUNKIN’ and DUNKIN’ DONUTS’ mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1159,354, registered June 30, 1981 and Reg. No. 748,901, registered April 30, 1963).
2. Respondent’s <DunkinDoughnuts.us> and <Dunkin-Donut.us>[i] domain names are confusingly similar to Complainant’s marks as they each incorporate one of Complainant’s marks in their entirety and merely attach the ccTLD “.us”.
3. Respondent lack rights or legitimate interests in the <dunkindoughnuts.us> and <dunkin-donut.us> domain names. Respondent is not commonly known by the domain names nor has Respondent been authorized by Complainant to use the DUNKIN’ or DUNKIN’ DONUTS marks.
4. Respondent has not used the domain names in connection with a bona fide offering of goods or services or legitimate non-commercial or fair use as Respondent uses the domain names to host advertisements and content from businesses unrelated to the Complainant.
5. Additionally, Respondent uses the domain names to attract internet users to a site that may host malware.
6. Respondent registered and uses the domain names in bad faith. Respondent uses the domain names to divert traffic from the Complainant for commercial gain.
7. Additionally, Respondent has shown a pattern of bad faith registration in previous proceedings.
8. Finally, Respondent registered the domain names domain name with actual knowledge of Complainant’s rights in the DUNKIN’ and DUNKIN’ DONUTS marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the DUNKIN’ and DUNKIN’ DONUTS marks. Respondent’s domain name is confusingly similar to Complainant’s DUNKIN’ and DUNKIN’ DONUTS marks. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <dunkindoughnuts.us> and <dunkin-donut.us> domain names and that Respondent registered and uses the domain names 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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 and inferences set forth 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) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 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’ and DUNKIN’ DONUTS marks through Complainant’s registration of the marks with the USPTO (e.g. Reg. No. 1159,354, registered June 30, 1981 and Reg. No. 748,901, registered April 30, 1963). Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). 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).”). Therefore, Complainant has demonstrated rights in the DUNKIN’ and DUNKIN’ DONUTS mark per Policy ¶ 4(a)(i).
Complainant argues Respondent’s <dunkindoughnuts.us> and <dunkin-donut.us> domain names are confusingly similar to Complainant’s marks as they both incorporate each mark in its entirety and merely add ccTLD “.us”. The addition of a ccTLD fails to sufficiently distinguish a domain name from a mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain names] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain names and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Therefore, the Panel holds that the <dunkindoughnuts.us> and <dunkin-donut.us> domain names are confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <dunkindoughnuts.us> and <dunkin-donut.us> domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends Respondent lacks rights or legitimate interests in the <dunkindoughnuts.us> and <dunkin-donut.us> domain names as Respondent is not commonly known by the domain names nor has Complainant authorized or licensed to Respondent any rights in the DUNKIN’ or DUNKIN’ DONUTS marks. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(iii). See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Forum June 9, 2015) (concluding that the respondent was not commonly known by the domain names under Policy ¶ 4(c)(ii), based on the pertinent WHOIS information). Additionally, lack of authorization to use Complainant’s marks can prove that the Respondent is not commonly known by the <dunkindoughnuts.us> and <dunkin-donut.us> domain names. See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain names where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). Here, the WHOIS information for the <dunkindoughnuts.us> and <dunkin-donut.us> domain names provided by the registrar lists the registrant as “Milen Radumilo” Additionally, there is no evidence to suggest that Respondent was authorized to use the DUNKIN’ or DUNKIN’ DONUTS marks and Complainant contends, without contradiction, that Respondent was never given any permission or authorization regarding the use of their mark. Therefore, the Panel holds Respondent is not commonly known by the <dunkindoughnuts.us> and <dunkin-donut.us> domain names per Policy ¶ 4(c)(iii).
Complainant argues that Respondent fails to use the <dunkindoughnuts.us> and <dunkin-donut.us> domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the domain names to divert internet traffic away from the Complainant’s website to a site that contains advertising link unrelated to the Complainant’s business. A respondent using a confusingly similar domain name to divert internet traffic and distribute unrelated advertising links may not be making a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) or (iv). See Hewlett-Packard Co. v. Collazo, FA 144628 (Forum Mar. 5, 2003) (holding that the respondent’s use of the <hpcanada.com> domain name to post links to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name). The evidence shows that the <dunkindoughnuts.us> and <dunkin-donut.us> domain names resolve to websites that host a variety of advertisements, none of which are related to the Complainant’s business. Therefore, Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) or (iv).
Complainant argues that Respondent fails to use the <dunkindoughnuts.us> and <dunkin-donut.us> domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent used the disputed domain names to distribute malware to unsuspecting internet users. Using confusingly similar domain names to distribute malware may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) or (iv). See Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶4(c)(iii).”). Here, Complainant contends that the <dunkindoughnuts.us> and <dunkin-donut.us> domain names resolved into websites that would bombard the user with virus warning and requests to update operating systems on their computers. If clicked on, Complainant contends, users may be exposed to malware. Therefore, the Panel may find Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) or (iv).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues Respondent registered the <dunkindoughnuts.us> and <dunkin-donut.us> domain names in bad faith as Respondent uses the domain names to divert internet traffic to Respondent’s website, for commercial gain. Using a domain name incorporating the mark of another to divert traffic to a website for commercial gain may be bad faith per Policy ¶ 4(b)(iii). See MySpace, Inc. v. Myspace Bot, FA 672161 (Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme). See also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain). The record supports Complainant’s argument that Respondent uses the <dunkindoughnuts.us> and <dunkin-donut.us> domain names to divert internet traffic to Respondent’s websites so Respondent could profit based on “click-through” revenue fees. Therefore, the Panel holds that Respondent registered and uses the <dunkindoughnuts.us> and <dunkin-donut.us> domain names in bad faith per Policy ¶ 4(b)(iii).
Complainant argues Respondent registered the <dunkindoughnuts.us> and <dunkin-donut.us> domain names in bad faith as Respondent has participated in a pattern of bad faith registrations and repeatedly registered confusingly similar domain names for personal gain. Complainant has provided evidence that Respondent has had roughly 170 cases in the past regarding similar issues. Respondent’s registration of a large number of confusingly similar domain names for personal gain amounts to bad faith per Policy ¶ 4(b)(ii). See Greektown Casino, LLC v. Daniel Kirchhof c/o Unister GmbH, FA1308001513182 (Forum Sept. 17, 2013) (“The Panel finds that Respondent’s implication in a pattern of bad faith use and registration serves as evidence of Policy ¶ 4(b)(ii) bad faith use and registration in the instant proceeding as well.”). See also Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations). Therefore, the Panel holds that Respondent registered and uses the <dunkindoughnuts.us> and <dunkin-donut.us> domain names in bad faith per Policy ¶ 4(b)(ii).
Complainant also contends Respondent registered and uses the <dunkindoughnuts.us> and <dunkin-donut.us> domain names with actual knowledge of the DUNKIN’ and DUNKIN’ DONUTS marks due to the prominence of the marks. Respondent’s complete incorporation of the Complainant’s marks into the <dunkindoughnuts.us> and <dunkin-donut.us> domain names demonstrates actual knowledge of Complainant’s rights to the marks per Policy ¶ 4(a)(iii). See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that the respondent had actual and constructive knowledge of the complainant’s EXXON mark given the worldwide prominence of the mark and thus the respondent registered the domain names in bad faith). See also Nw. Airlines, Inc. v. Koch, FA 95688 (Forum Oct. 27, 2000) (“[T]he selection of a domain name [<northwest-airlines.com>] which entirely incorporates the name of the world’s fourth largest airline could not have been done in good faith”). Complainant argues that the similarity between the <dunkindoughnuts.us> and <dunkin-donut.us> domain names and Complainant’s own prominent marks indicates that Respondent had actual knowledge of Complainant’s marks. The Panel agrees and holds that Respondent registered and uses the <dunkindoughnuts.us> and <dunkin-donut.us> domain names in bad faith per Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dunkindoughnuts.us> and <dunkin-donut.us> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 12, 2021
[i] The <dunkindoughnuts.us> and <dunkin-donut.us> domain names were registered on February 11, 2021.
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